M/S Jayna Engineering Works vs Ashwani Sharma & Anr.
2009 Latest Caselaw 4594 Del

       *           IN THE HIGH COURT OF DELHI AT NEW DELHI

                                              Date of Reserve: October 22, 2009
                                              Date of Order: November 11, 2009

+ IA No.3522/08 & IA No. 5331/2008 in CS(OS) No.511/2008

       %                                                           11.11.2009
           M/S. JAYNA ENGINEERING WORKS ..... Plaintiff
                      Through: Mr.Suwarn Rajan, Adv.

                        versus

           ASHWANI SHARMA & ANOTHER            ..... Defendants
                    Through:      Mr. Shailen Bhatia with
                    Ms. Zeba Tarannum Khan,
                    Mr. Amit Jain & Ms. Vandana Nathan, Advs.

           JUSTICE SHIV NARAYAN DHINGRA

1.         Whether reporters of local papers may be allowed to see the
           judgment?

2.         To be referred to the reporter or not?

3.         Whether judgment should be reported in Digest?

           ORDER

1. By this application, the plaintiff has sought an injunction

against the defendants so as to prevent the defendants from using mark

"JYOTI" or "JYOTI LABEL‟ or any other trade mark/label identical with or

deceptively similar to plaintiff‟s trade mark "JAYNA" or "JAYNA LABEL" or

wrapper or packaging.

2. The plaintiff had contended that it adopted trade mark

"JAYNA" as a word mark and a label (JAYNA LABEL) in respect of its auto

parts, diesel oil engine parts and parts used in generators, electric motors

etc. It is stated that "JAYNA LABEL" represented word mark "JAYNA"

written in a stylish and artistic manner inside a rectangle with red

background surrounded by yellow and red border line. The placement and

adjustment of letters of mark "JAYNA" inside the rectangle coupled with

colour combination, make up, etc. formed an artistic work and this artistic

work was a creation of the plaintiff and the label and the mark

represented plaintiff‟s trade name „JAYNA Engineering Works‟. The

plaintiff enjoyed tremendous goodwill and reputation in the business of

auto parts, diesel engine parts and plaintiff is referred in business circle as

„JAYNA House‟. The plaintiff applied for registration of his trade mark

under Trade Mark Act, 1999 and "JAYNA" trade mark was registered vide

trade mark no.597017 in Clause 12 since 1993. The plaintiff has given

registration number of "JAYNA LABEL" also but not given the date of

registration. It is contended by plaintiff that the defendants‟ word mark

"JYOTI" was so written in the label that it became deceptively similar to

trademark of plaintiff.. It is pleaded that plaintiff has no reservation or

objection as far as word „JYOTI" was concerned per se but plaintiff was

aggrieved by user of a label depicted word "JYOTI" within a rectangle,

making it deceptively similar to the label of plaintiff.

3. It is submitted that writing and lettering style of word "JYOTI"

was identical to the writing and lettering style of the plaintiff‟s trade mark

„JAYNA" especially size and other features and placement and adjustment

of letters of word "JYOTI" made it look like similar to the trade mark of

plaintiff namely „JAYNA" and "JAYNA LABEL". It is alleged that the

defendant has substantially copied the well known trade mark of the

plaintiff. It is however admitted by the plaintiff that after it served notice

upon the plaintiff to seize and desist the use of trade mark, defendant

informed the plaintiff that they were registered proprietor of trade mark

„JYOTI" and the "JYOTI LABEL". The plaintiff claimed that the defendants

obtained impugned registration by misrepresentation, concealing and by

playing underhand tactics with the Registrar of Trade Mark. Thus, the

impugned registration of defendant was void ab initio. The defendants

were not the proprietor of the impugned mark or label and had no right to

adopt the same.

4. The plaintiff‟s contention is that the resemblance of plaintiff‟s

trade mark with that of defendants‟ trade mark was so close that this was

disseminating confusion and deception in the market with the result that

spurious goods of the defendants were

selling in the market as genuine goods of the plaintiff. The defendants‟

business was similar to that of the plaintiff and similarity of the

defendants‟ trade mark and label with that of the plaintiff was causing

great loss to the plaintiff and the plaintiff was suffering in terms of

goodwill, reputation and propriety rights. The cause of action is stated to

have arisen in favour of the plaintiff in second week of September, 2007

when the plaintiff learnt about the defendants‟ adoption of trade mark

"JYOTI LABEL‟.

5. Though the plaintiff and defendants both belong to Punjab

and have their business premises in Ludhiana, plaintiff is having its works

at focal point in Ludhiana and defendants are having their work in Indira

Nagar, Abdullah Pur, Ludhiana, but the plaintiff has filed the suit in Delhi

and submitted that this Court has territorial jurisdiction because

defendants were committing the acts of selling, marketing and soliciting

trade within the jurisdiction of this Court and the defendants also had filed

trade mark application in the office of Registrar Trade Mark, New Delhi.

The defendants also obtained registration of Trade Mark on All India basis

including for Delhi. The plaintiff in the plaint made a prayer seeking an

injunction against the defendants from using trade mark "JYOTI" or "JYOTI

LABEL" alleging infringement or violation by way of passing of the

plaintiff‟s copyright involved in the trade mark/label. A prayer is also

made that the defendants be restrained from disposing of or selling its

assets including its manufacturing unit and premises situated in Indira

Nagar, Abdullah Pur, Ludhiana during the course of proceedings as it

would affect the plaintiff‟s ability to recover costs and profits of the

accounts.

6. In the WS defendants had taken a stand that defendants

were an old established firm engaged in business of manufacturing and

marketing of parts and fittings of Mopeds, Scooters, Motorcycles and

Three Wheelers. "JYOTI" was a part of name of the defendants‟ firm

namely „Jyoti Automobiles‟ (Jyoti being name of the wife of defendant

no.1). The defendants have been openly and exclusively using trademark

"JYOTI" for their products for last 27 years. The defendants gave details of

sales figures of the parts using trade mark "JYOTI" from 1981-82 till 2007-

2008 showing that the sales of defendants‟ product progressively

increased from few thousand in the first year to more than 50 lacs in the

years 2007-2008. It is also stated that the defendants were prior user of

„JYOTI" and the suit has been filed by the plaintiff only to harass the

defendants. It is also stated there was no similarity in trademarks "JYOTI"

and "JAYNA". Defendants have registration of its trademark „JYOTI" vide

registration no.886044 in Clause 12 and date of registration was 10 th

November, 1999. It is stated that the documents filed by the plaintiff

shows that the plaintiff had registration of word mark „JAYNA" since

13.5.1993 which was irrelevant for present proceedings. The registration

of label "Jayna" of plaintiff was in Clause 7 and date of registration was 9th

October, 2003, much later to the registration of the defendants label and

this registration of plaintiff was for Clause 7 whereas defendants‟

registration was for Clause 12. It is submitted that suit was barred by

virtue of Section 28 sub-Section 3 of Trade Mark Act 1999 as the

defendants were registered proprietor and had a right to use the trade

mark even if it was similar or identical to that of the plaintiff.

7. The defendants averred that no claim of passing off was

made out against the defendants as the plaintiff had no reputation in the

market nor the defendants had ever tried to pass off their goods as those

of the plaintiff. The defendants had another firm namely M/s Raman

Industries and trade mark "JYOTI" was also being used by M/s. Raman

Industries since 1985-86. The copies of sale invoices of Raman Industries

have been filed in respect of this. It is further submitted that the

defendants had been inserting advertisements in various magazines and

this was within the knowledge of the plaintiff. The suit of the plaintiff was

thus barred by acquiescence. The advertisement of parties had appeared

in the same magazines in the year 1997, 98 and 99. The publication of

trade mark was also done inviting objections in view of the registration of

defendant‟s trade mark. The plaintiff failed to file objections and now

cannot be heard to oppose the trade mark of defendants.

8. Regarding placement of word „JYOTI" in a square, it is stated

that the style of writing word in trapezium/rhombus was a common style

being used in several industries. To name a few, examples of Topaz,

Whimco, MB, SAI, IHI, BMP were given. It is submitted that

trapezium/rhombus was a geometric figure in public domain and cannot

be a monopoly of the plaintiff. Thus, the claim of the plaintiff of creating

an artistic feature by placing word "JAYNA" in a trapezium was patently

false.

9. The plaintiff has deliberately feigned ignorance about

business activities of the defendants. In one of the magazines where

plaintiff‟s advertisement appeared, the defendants‟ trade mark was

represented on the cover page of the magazine. The feigning of ignorance

by the plaintiff was thus deliberate.

10. It is also submitted that this Court has no territorial

jurisdiction. Both the parties were from Ludhiana. The defendants had

sold its goods in Andhra Pradesh, Karnataka, Tamil Nadu, Kerala,

Pondicherry, Uttar Pradesh, Rajasthan, Assam, West Bengal, Maharashtra,

Gujarat, Orissa, Bihar, Jharkhand, MP, Goa etc. but no sales have been

made by the defendants in Delhi. Thus, no suit for passing off was

maintainable. The defendants prayed for dismissal of the suit along with

exemplary costs.

11. A perusal of documents filed by the plaintiff would show that

the two trademarks one being used by the plaintiff and the other being

used by the defendants, were altogether different. "JAYNA" and "JYOTI"

are two different words. Merely because plaintiff is using word "JAYNA"

there can be no restriction on others on using word mark starting with "J"

unless the word mark so closely resembled with "JAYNA" that there could

be a phonetical or visual confusion since the word was deceptively similar

to "JAYNA". It is plaintiff‟s own case that he had no objection at use of

word "JYOTI". The trade mark certificate filed by the plaintiff shows that

the plaintiff got word "JAYNA" simplicitor registered as its trademark in

1993. The registration of word "JAYNA" in double Trapezium is dated 9th

December, 2003 and it is for goods in Clause 7. Whereas registration of

the defendants‟ mark "JYOTI" in a trapezium is older than that of the

plaintiff. The defendants got trade mark "JYOTI" in double Trapezium

registered on 10th November, 1999. Thus, the registration of "JYOTI" in

double Trapezium by the defendants is much older than the registration of

"JAYNA" in double Trapezium by the plaintiff. However, the invoices and

other documents placed by the plaintiff on record would show that the

plaintiff has been using word "JAYNA" in double Trapezium in its

advertisement and invoices since 80s. The invoices and other material of

defendants filed on record shows that the defendants have been also

using "JYOTI" in a trapezium from 90s.

12. The question arises whether the use of trapezium by

defendants for writing word "JYOTI" in it violates the rights of the plaintiff.

13. Trapezium is a geometrical figure known to the mankind from

time immemorial and it is not an invention made by the plaintiff. People

have been writing words in various kinds of geometrical figures. Thus,

combination of trapezium and the words in it is also not an innovation

which can be claimed by anybody. You may write words in a circle, you

may write words in a rectangle or square that does not make words in a

square and words in a circle an invention of somebody or work of art. The

defendants placed on record several labels and advertisements to show

the use of trapezium for writing words in ascending and descending

heights, was a common way of using/writing words in a trapezium. The

claim of the plaintiff that it was a unique creation of the plaintiff therefore

is belied from the documents placed on record by the defendants. To

quote a few examples VIRA, TOPAZ, WHIMCO, IHI, BMP, MB, all trademarks

have been written in a trapezium.

14. This Court in Aviat Chemicals Pvt. Ltd. & Anr. vs. Intas

Pharmaceuticals Ltd. 2001 PTC 601 had observed that whether a

feature was in public domain or generic is a question of fact and if it was

shown by the defendant from examples that a lot many industrial players

were in use of generic word, mark or prefix than it cannot be considered

as a proprietorship of the plaintiff. In Aviat Chemicals Ltd.(Supra), the

dispute was about use of word LIPI as a prefix.

15. The Division Bench in SBL Ltd. vs. Himalaya Drug Co. AIR

1998 Delhi 126 had similarly come to conclusion that LIV was a generic

term and public juris and nobody can claim an exclusive right to it to

constitute a trade mark.

16. I consider that trapezium, a geometrical figure, cannot be

considered a proprietorship of plaintiff or any other person. It is a public

juris geometrical figure and anybody can use a trapezium as a part of its

trade mark or style. No case can be made out against the person if he

uses his own trade mark within the trapezium because the plaintiff also

uses his word mark „JAYNA" within the trapezium.

17. I therefore find no force in this application. The application is

hereby dismissed.

IA No.5331/08

This application has become infructuous in view of the

dismissal of the application IA no. 3522/08.

November 11, 2009                            SHIV NARAYAN DHINGRA J.
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