Madras High Court
(Ora/89 To 96/2020/Tm/Chn) vs Deepali Company Private Limited on 18 June, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
2025:MHC:1399
(T)OP(TM)Nos.376 to 383 of 2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Orders Reserved on 24.04.2025
Orders Pronounced on 18.06.2025
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
(T)OP(TM)Nos.376 to 383 of 2023
& (TM)A.No.15 of 2025
(ORA/89 to 96/2020/TM/CHN)
In all the eight petitions:
C.Krishniah Chetty & Sons Private Limited,
Corporate Office: The Touchstone,
3-3/1 Main Guard Cross Road, Bengaluru – 560001. ... Petitioner
-vs-
1. Deepali Company Private Limited,
35, Commercial Street, Bengaluru – 560001.
2. The Registrar of Trade Marks,
IP Building,
Chennai 600 032. ... Respondents
Prayer in (T)OP(TM)No.376 of 2023: Transferred Original Petition (Trade
Marks) is filed under Section 47 & 57 of the Trade Marks Act, 1999 to
examine the records of the said registered trade mark no.3743497 in class
1/51
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
14 registered in favour of the 1st respondent and further direct the 2nd
respondent to rectify the said trade mark no.3743497 in class 14 in the
Register of Trade Marks by expunging all the entries in the Register of
Trade Marks relating to the said trade mark no.3743497 in class 14 and
direct the 1st respondent to pay the costs of the present proceedings.
Prayer in (T)OP(TM)No.377 of 2023: Transferred Original Petition (Trade
Marks) is filed under Section 47 & 57 of the Trade Marks Act, 1999 to
examine the records of the said registered trade mark no.3743498 in class
35 registered in favour of the 1st respondent and further direct the 2nd
respondent to rectify the said trade mark no.3743498 in class 35 in the
Register of Trade Marks by expunging all the entries in the Register of
Trade Marks relating to the said trade mark no.3743498 in class 35 and
direct the 1st respondent to pay the costs of the present proceedings.
Prayer in (T)OP(TM)No.378 of 2023: Transferred Original Petition (Trade
Marks) is filed under Section 47 & 57 of the Trade Marks Act, 1999 to
examine the records of the said registered trade mark no.3743506 in class
35 registered in favour of the 1st respondent and further direct the 2nd
respondent to rectify the said trade mark no.3743506 in class 35 in the
Register of Trade Marks by expunging all the entries in the Register of
Trade Marks relating to the said trade mark no.3743506 in class 35 and
direct the 1st respondent to pay the costs of the present proceedings.
2/51
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
Prayer in (T)OP(TM)No.379 of 2023: Transferred Original Petition (Trade
Marks) is filed under Section 47 & 57 of the Trade Marks Act, 1999 to
examine the records of the said registered trade mark no.2936330 in class
42 registered in favour of the 1st respondent and further direct the 2nd
respondent to rectify the said trade mark no.2936330 in class 42 in the
Register of Trade Marks by expunging all the entries in the Register of
Trade Marks relating to the said trade mark no.2936330 in class 42 and
direct the 1st respondent to pay the costs of the present proceedings.
Prayer in (T)OP(TM)No.380 of 2023: Transferred Original Petition (Trade
Marks) is filed under Section 47 & 57 of the Trade Marks Act, 1999 to
examine the records of the said registered trade mark no.3743507 in class
36 registered in favour of the 1st respondent and further direct the 2nd
respondent to rectify the said trade mark no.3743507 in class 36 in the
Register of Trade Marks by expunging all the entries in the Register of
Trade Marks relating to the said trade mark no.3743507 in class 36 and
direct the 1st respondent to pay the costs of the present proceedings.
Prayer in (T)OP(TM)No.381 of 2023: Transferred Original Petition (Trade
Marks) is filed under Section 47 & 57 of the Trade Marks Act, 1999 to
examine the records of the said registered trade mark no.3743504 in class
42 registered in favour of the 1st respondent and further direct the 2nd
respondent to rectify the said trade mark no.3743504 in class 42 in the
3/51
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
Register of Trade Marks by expunging all the entries in the Register of
Trade Marks relating to the said trade mark no.3743504 in class 42 and
direct the 1st respondent to pay the costs of the present proceedings.
Prayer in (T)OP(TM)No.382 of 2023: Transferred Original Petition (Trade
Marks) is filed under Section 47 & 57 of the Trade Marks Act, 1999 to
examine the records of the said registered trade mark no.3743500 in class
42 registered in favour of the 1st respondent and further direct the 2nd
respondent to rectify the said trade mark no.3743500 in class 42 in the
Register of Trade Marks by expunging all the entries in the Register of
Trade Marks relating to the said trade mark no.3743500 in class 42 and
direct the 1st respondent to pay the costs of the present proceedings.
Prayer in (T)OP(TM)No.383 of 2023: Transferred Original Petition (Trade
Marks) is filed under Section 47 & 57 of the Trade Marks Act, 1999 to
examine the records of the said registered trade mark no.3743505 in class
14 registered in favour of the 1st respondent and further direct the 2nd
respondent to rectify the said trade mark no.3743505 in class 14 in the
Register of Trade Marks by expunging all the entries in the Register of
Trade Marks relating to the said trade mark no.3743505 in class 14 and
direct the 1st respondent to pay the costs of the present proceedings.
In all the eight petitions
For Petitioner : Mr.Mandeep S.Kalra
4/51
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
Mr.Sivaraman Vaidyanathan
Mr.Adithya D.Athreya
for M/s.A.V.Nathan Associates
For R1 : Mr.Jayant Mehta, Senior Counsel
for Mr.Arun C.Mohan
Ms.Krutika Raghavan
Ms.Sameeksha
Mr.S.Karthik
For R2 : Mr.A.R.Sakthivel, SPC
COMMON ORDER
Background
One Cotha Krishniah Chetty established jewellery business in the
year 1869. Since then, such business has been carried on continuously until
date. It is common ground between the contesting parties that the jewellery
business established by Cotha Krishniah Chetty was being carried on by a
partnership firm under the name and style of C.Krishniah Chetty & Sons. It
is also the admitted position that both Mr.C.V.Hayagriv and his immediate
family and Mr.C.V.Narayan and his immediate family had a stake in the
said partnership firm. By deed of dissolution dated 28 th April 1980, which
was executed by and between all parties having a stake in the partnership
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
firm and C.Krishniah Chetty & Sons Private Limited, which is the petitioner
herein, the entire business of the partnership was to be taken over as a going
concern by the petitioner herein along with all the assets and liabilities
indicated in Annexure-A to the deed of dissolution. The deed of dissolution
also provided for payment of amounts standing to the account of the parties
of the first to ninth parts and the party of the eleventh part therein by the
petitioner herein to the said parties on terms and conditions to be mutually
agreed upon.
2. The list of shareholders of the petitioner, as on 31st March 2018,
has been placed on record. This document discloses that members of both
the Hayagriv family and the Narayan family are shareholders of the
petitioner. The petitioner asserts that 50% of the shareholding is held by the
Hayagrivs and the balance 50% by the Narayans. Notwithstanding the equal
shareholding of the two families, it is stated that six directors are from the
Hayagriv group and only two from the Narayan group.
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
3. The contesting parties also agree that disputes arose between the
Hayagrivs and the Narayans and that efforts were made to resolve the same.
Towards this end, it is stated that a document styled as 'Binding Family
Settlement' was executed on 9th January 2014 (“Settlement Agreement”) by
and between parties described as parties of the first to fifth part. The parties
of the first part were described therein as the CVH group and the parties of
the second part were described as the CGN group. The CVH group is the
Hayagriv group and the CGN group is the Narayan group. The petitioner
herein was the party of the third part and was described therein as CKC. The
1st respondent herein was the party of the fifth part and was described
therein as CKC Deepali. A corporate entity under the name and style of
C.Krishniah Chetty Jewellers Private Limited was the party of the fourth
part therein, and was described therein as CKC Jewellers.
4. The
Settlement Agreement provided for the demerger of the store and business
operated under the name 'TouchStone' by CKC by transfer into CKC
Jewellers. Likewise, it provided for the demerger of the store and business
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
operated under the name 'TouchStone South' by CKC by transfer into CKC
Deepali. In both cases, as consideration for the demerger, the transferee
concern was required to issue equity shares to the shareholders of CKC.
CKC was also required to assign all intellectual property rights to CKC
Deepali and CKC Jewellers. If the scheme of demerger did not come into
effect by 31st December 2014 or such extended period not later than 28th
February 2015, the parties were required to implement the commercial and
economic substance of the settlement by transferring 'TouchStone' and
'TouchStone South' to CKC Jewellers and CKC Deepali, respectively, by
way of a slump sale at book value (the alternative structure). The alternative
structure was required to be implemented on or before 31st March 2015.
Neither the demerger nor slump sale took place pursuant to the Settlement
Agreement.
5. Meanwhile, the 1st respondent applied for the registration of trade
marks containing the words 'C.Krishniah Chetty' and variants thereof.
According to the petitioner, in respect of all applications that were opposed
by the petitioner, the application was either rejected or abandoned. The
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
petitioner says that eight applications were not opposed on account of
inadvertent oversight and such applications were allowed by the Registrar
of Trade Marks. The said eight applications form the subject of these
petitions for rectification under Sections 47 and 57 of the Trade Marks Act,
1999 (the TM Act). When these petitions were filed before the erstwhile
Intellectual Property Appellate Board (the IPAB), the petitioner applied for
interim relief in respect of the impugned registrations. By order dated 19th
January 2021, the IPAB granted an interim stay of the impugned
registrations. This order was challenged in W.P.No.2646 of 2021 before the
High Court of Karnataka. The writ petition was dismissed by order dated
20th April 2023 and the special leave petition against the same was
dismissed as withdrawn even before it was numbered.
6. Mrs.C.Valli Narayan, a member of the Narayan group, filed
C.P.No.54 of 2014 before the Company Law Board, Chennai Bench,
seeking relief in respect of alleged oppression and mismanagement in
respect of the affairs of the petitioner. The relief claimed therein was
modified later by including the implementation of the above mentioned
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
Settlement Agreement. By order dated 24th January 2019, the National
Company Law Tribunal, Bengaluru Bench (the NCLT), which was formed
after the dissolution of the Company Law Board as its successor, rejected
the petition. The petitioner carried the matter in appeal before the National
Company Law Appellate Tribunal, New Delhi (the NCLAT), and the appeal
is pending. The order impugned therein has not been stayed as on date. By
invoking the arbitration clause in the Settlement Agreement, an application
under Section 9 of the Arbitration and Conciliation Act, 1996 (the
Arbitration Act) was also filed by Mr.C. Ganesh Narayan before the
Additional City Civil and Sessions Judge, Bengaluru. By order dated 5 th
January 2019, the said application was rejected under Order VII Rule 11 of
the Code of Civil Procedure, 1908 (the CPC). The said order was not
appealed against and remains binding as on date.
7. A separate petition was filed by Dr. C. Vinod Hayagriv and five
others before the NCLT (C.P. No.04/BB/2020) against the petitioner, C.
Ganesh Narayan and nine others alleging oppression and mismanagement in
the affairs of the petitioner by the Narayans and seeking inter alia a
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
direction for the sale of the shareholding of the Narayan group in the
petitioner to the Hayagriv group and to restrain the Narayan group from
carrying on competing business. By order dated 12th July 2021, the Narayan
group was directed to maintain status quo and the said order was extended
until further orders by orders dated 07th August 2021 and 27th August 2021.
A subsequent order dated 08th February 2023 of the NCLT in the
interlocutory applications in the above mentioned petition was challenged in
W.P.No.5326 of 2023 before the High Court of Karnataka. This writ
petition was disposed of by order dated 28th March 2023 by directing the
NCLT to dispose of the pending interlocutory applications expeditiously.
Pursuant thereto, by order dated 24th August 2023, the interlocutory
applications of the Hayagriv group in C.P. No.04/BB/2020 were allowed by
restraining the Narayan group from inter alia carrying on competing
business.
8. A suit seeking relief in respect of alleged infringement of trade
marks and passing off was filed by the petitioner against the Narayan group
before the Commercial Court, Bengaluru, in COS No.306 of 2020. The
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
plaint was rejected, by order dated 17th February 2022, on the ground that
the suit is barred under Section 430 of the Companies Act, 2013 (the CA
2013). An appeal was filed against the said order in Commercial Appeal
No.161 of 2023 before the High Court of Karnataka along with an
application to condone delay. By judgment dated 2nd June 2025, the
application to condone delay was rejected and, consequently, the appeal did
not survive. Because this judgment was pronounced after orders were
reserved in these matters, a copy of the judgment was submitted by learned
counsel for the 1st respondent after mentioning the matter.
Counsel and their Contentions:
9. After opting out of adducing oral evidence by choosing to rely
solely on documents, oral arguments on behalf of the petitioner were
advanced by Mr.Mandeep S.Kalra, learned counsel, and on behalf of the 1st
respondent by Mr.Jayant Mehta, learned senior counsel. The 2nd respondent
was represented by Mr.A.R.Sakthivel, learned SPC. The petitioner and the
1st respondent also filed written submissions.
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
10. The first contention of Mr.Mandeep S.Kalra was that the 1st
respondent is not entitled to rely upon the Settlement Agreement in view of
the said agreement not being implemented either by way of a demerger or
slump sale. In this connection, he emphasized that the demerger option was
required to be implemented on a date not later than 28 th February 2015. As
regards the alternative method of slump sale, he submitted that the
Settlement Agreement provided that it should be implemented fully on or
before 31st March 2015. In view of the lapse of the deadline for
implementation under the Settlement Agreement, learned counsel contended
that the Settlement Agreement is no longer capable of implementation, and
cannot be relied on. As a consequence, he further submitted that only the
petitioner is entitled to carry on business by using the trade mark
C.Krishniah Chetty or its variants.
11. The second contention of learned counsel was that the 1 st
respondent is not entitled to rely on the Settlement Agreement on account
of the consistent view expressed by more than one adjudicatory forum to the
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
effect that the Settlement Agreement had not come into effect. In support of
this contention, learned counsel relied upon the order of the City Civil
Court, Bengaluru, rejecting the application under Section 9 of the
Arbitration Act by taking recourse to Order VII Rule 11 of CPC. He also
relied upon the final order of the NCLT dismissing C.P.No.54 of 2014.
12. His third contention was that all trade mark applications of the 1 st
respondent that were opposed by the petitioner were either rejected or
treated as abandoned by the Registrar of Trademarks. As regards the eight
applications forming the subject of these petitions, he submitted that the
applications were allowed because the petitioner inadvertently failed to
notice these applications and, therefore, could not oppose the same. He also
pointed out, in this regard, that the interim order dated 27th April 2018 of
the NCLT in C.P.No.54 of 2018 was not disclosed while prosecuting trade
mark application no.3743497, including while submitting reply dated
04.06.2018.
13. The next contention of learned counsel was that the entire
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
business of the partnership firm, C.Krishniah Chetty and Co., was taken
over by the petitioner under a deed of dissolution, and that the assets
transferred under the deed of dissolution included all trade marks.
Consequently, learned counsel submitted that only the petitioner is entitled
to use these trade marks and that no other entity may do so unless licensed
by the petitioner. By referring to the impugned marks, learned counsel
submitted that the impugned marks are nearly identical to the petitioner's
trade marks. In support of this contention, learned counsel referred to the 28
registered trade marks of the petitioner, which cover both word and device
marks, and compared the same with the impugned marks. He also pointed
out that trade mark no.2936330 and trade mark no.2936331 are for nearly
identical marks. On account of opposition, trade mark no.2936331 was
rejected as abandoned, whereas the application for registration of trade mark
no.2936330 was allowed on account of the petitioner's inability to object
due to lack of knowledge.
14. By referring to the interim order of status quo and the subsequent
order allowing I.A.Nos.4-7 of 2021 in C.P.No.4/BB/2021, learned counsel
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
submitted that the NCLT restrained the 1st respondent from carrying on
competing business pending disposal of the petition. He also referred to the
interim order of the IPAB granting an interim stay of the impugned
registrations. According to learned counsel, these orders fortify the case for
rectification.
15. The last submission of learned counsel was that the registration of
deceptively similar trade marks by the 1st respondent is likely to cause
deception or confusion among the public and that the entries relating thereto
were made without sufficient cause. He further submitted that the
continuation of these marks on the register causes grave harm and prejudice
to the petitioner, including financial losses. He also submitted that the
applications for registration were filed on “proposed to be used” basis, but
no business was carried on until 2021. Consequently, he submitted that such
applications were made without the bona fide intention of using the
impugned marks, and that the marks were not used even when these
petitions were filed in 2020. Hence, he contended that these entries are
liable to be expunged from the Register of Trademarks.
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
16. In support of his contentions, learned counsel referred to and
relied upon the following judgments:
(i) Veena Singh (dead) through legal representatives v. The District
Registrar/Additional Collector and others, MANU/SC/0615/2022;
(ii) M/s. Hira Mistan v. Rustom Jamshedji Noble & others, 1999 SCC
OnLine Bom 604;
(iii) Krishnappa, since dead, represented by his legal representatives
and others v. Smt.Ashwathamma, 2022 SCC OnLine Kar 1817;
(iv) American Home Products Corporation v. MAC Laboratories
Private Limited and another, (1986) 1 SCC 465;
(v) Smt.Anupam Khemka v. M/s.Shreesidhi Creations Private
Limited, 2011 SCC OnLine IPAB 40; and
(vi) M/s.Haldiram (India) Pvt. Limited and others v. The Registrar of
Trademarks and others, 2013 SCC OnLine IPAB 61.
17. Mr.Jayant Mehta, learned senior counsel, responded to these
contentions. At the outset, two preliminary objections were raised. The first
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
objection was that these petitions were not filed pursuant to valid
authorisation by way of a board resolution. After also pointing out that an
interim order was issued restraining the board of directors of the petitioner
from taking decisions, it was contended that the resolution passed by
circulation is not valid. The second preliminary objection was that the
alleged violation of Section 166 of the CA 2013 cannot be agitated in these
proceedings and that Section 430 thereof bars the jurisdiction of civil courts
in respect of matters that the NCLT is authorised to determine.
18. The next submission was that both the Hayagrivs and Narayans
are descendants of the founder, Cotha Krishniah Chetty, and are,
consequently, entitled to use the trade mark C.Krishniah Chetty and variants
thereof. He relied on Section 35 of the TM Act, in this regard, to contend
that the first respondent is entitled to use the name of its predecessor in
business. He also pointed out that the suit for alleged infringement of trade
mark was dismissed.
19. As regards the Settlement Agreement, learned senior counsel
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
submitted that it was duly signed by all parties thereto. In specific, he
pointed out that both the petitioner and the 1st respondent are parties thereto.
By relying on clause 1(k), he pointed out that the Settlement Agreement
recognises that intellectual property rights are co-owned. By referring to
clause 3(d), he pointed out that the Agreement does not provide for any
restriction on carrying on competing business. By referring to the minutes of
board meetings held on 09 January 2014 and 25th February 2014, learned
senior counsel submitted that the petitioner is bound by the Settlement
Agreement and was required to take all measures necessary for the
performance of obligations undertaken thereunder. As a corollary, he
contended that it is not open to the petitioner to resile from the
understanding reached and recorded in the Settlement Agreement. Hence, he
contended that these petitions are an abuse of process.
20. As regards the dismissal of C.P.No.54 of 2014, learned senior
counsel submitted that an appeal has been filed before the NCLAT.
Consequently, he contended that the request for implementation of the
Settlement Agreement is pending consideration by the NCLAT. By further
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
submitting that the 1st respondent is entitled to use the impugned marks in
relation to its jewellery business, learned senior counsel submitted that the
petitioner has failed to make out a case for rectification in relation to the
impugned marks.
21. By referring to the permission granted to the petitioner's affiliates,
including C.Krishniah Chetty Jewellers Private Limited (CKC Jewellers), to
use trade marks with the words C.Krishniah Chetty or its variants, he
submitted that the petitioner and the Hayagriv group acted on the Settlement
Agreement and benefitted from the same. Consequently, he contended that
the petitioner is not entitled to the relief claimed on grounds of estoppel and
acquiescence.
22. After further submitting that the impugned marks are in use and
that the entries remain validly on the register, he submitted that no case is
made out for rectification either under Sections 47 or 57 of the TM Act.
23. In support of these contentions, learned senior counsel referred to
and relied upon the following judgments:
(i) Hari Shankar Singhania and others v. Gaur Hari Singhania and
others, (2006) 4 SCC 679;
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
(ii) Shri Ram Education Trust v. SRF Foundation and another, 2016
SCC OnLine Del 472, particularly paragraphs 14 to 17 thereof.
(iii) Krishna Sweets Private Limited v. M.Murali, 2017 SCC OnLine
Mad 4405, particularly paragraphs 41 to 43 thereof.
24. Mr.Mandeep S.Kalra made submissions in rejoinder. In response
to the contention that the petitioner was required to take necessary measures
to fulfil obligations under the Settlement Agreement, he contended that such
obligations were intended to be performed in a specific sequence. By
relying on clause 1(h) thereof, he pointed out that this is the only time-
bound obligation and was required to be fulfilled by the Narayan group by
transferring their shares in the petitioner to the Hayagriv group. In this
connection, he also relied upon paragraph 9 of the order of the NCLT in
C.P.No.54 of 2018 recognising clause 1(h) as being a condition precedent.
The minutes of the board meeting held on 25th February 2014 were relied on
in this regard.
25. After emphasising that the obligation to assign the intellectual
property rights is conditional upon the fulfillment of the obligation under
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
clause 1(h), he reiterated that 31st March 2015 was the long stop date even
for implementing the alternative structure under the Settlement Agreement.
Upon expiry of such date, he contended that it is no longer possible to
implement the Settlement Agreement. As a consequence, he contended that
only the petitioner, which is the owner of the intellectual property rights
under the deed of dissolution, is entitled to use the trade mark 'C.Krishniah
Chetty' and variants thereof.
26. By relying on clause 7 of the Settlement Agreement, he pointed
out that it prohibits parties from using the marks and from carrying on
independent business. By referring to the 1st respondent's reply to the
examination report of the Registrar of Trade Marks, learned counsel
submitted that the 1st respondent relied primarily on the Settlement
Agreement and not on lineage or heritage as justification for adopting and
using the impugned marks. Although the reply dated 04th June 2018 was
subsequent to the order dated 27th April 2018 of the NCLT restraining the 1st
respondent from carrying on competing business, he contended that there
was suppression of material facts while submitting such reply.
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
27. By referring to the interim order dated 19 th January 2021 of the
erstwhile IPAB, learned counsel submitted that such order was granted on
the basis that the Settlement Agreement was not acted upon. He also
pointed out that the writ petition challenging the order was rejected and the
SLP against the order dismissing the writ petition was thereafter dismissed
as withdrawn. As regards use of similar marks by CKC Jewellers, he
distinguished the same on the ground that it was with the consent of the
petitioner under the Agreement for Joint Ownership of Trademarks dated 2 nd
July 2019 (the Joint Trademarks Proprietorship Agreement). He also
contended that all the parties thereto are entities in which both the Hayagriv
group and the Narayan group have a stake as shareholders.
Discussion, Analysis and Conclusion:
28. The first issue that warrants a brief consideration is with regard to
the maintainability of the petition. The 1st respondent challenged the
maintainability on the ground that the petition was not instituted pursuant to
a valid board resolution. A petition for rectification either under Sections 47
or 57 of the TM Act may be instituted by any person aggrieved. The record
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
shows that the petitioner and the 1st respondent are entities engaged in
identical jewellery businesses. The case of the petitioner is that the
impugned marks are deceptively similar to those adopted and used by the
petitioner. This contention is not denied by the 1st respondent. Instead, the
1st respondent justified such use on the ground that the 1st respondent is an
entity controlled by descendants of Cotha Krishniah Chetty. On that basis, it
is stated that the 1st respondent is entitled to use the impugned marks. In
these facts and circumstances, the petitioner clearly qualifies as a person
aggrieved for purposes of Sections 47 and 57. Especially for purposes of
Section 57, the Supreme Court held in Hardie Trading Ltd. & another v.
Addisons Paint & Chemicals Ltd., (2003) 11 SCC 92, that the expression
'person aggrieved' should receive a wide construction. The only aspect that
remains to be considered, in this regard, is whether requisite corporate
actions were taken in relation to the institution of the petition.
29. The case of the petitioner is that both the Hayagriv group and the
Narayan group have equal shareholding in the petitioner. The NCLAT had
recorded an undertaking by the petitioner not to hold any board meetings.
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
In view thereof, it was not possible to hold a board meeting. The petitioner
has, in those circumstances, submitted a resolution passed by circulation
and authorising the institution of the petition. In my view, the order
recording the undertaking not to hold board meetings is intended to prevent
the transaction of business by the board of directors, whether by way of
board meetings or by passing resolutions by circulation. Therefore, the
resolution passed by circulation was in contravention of the undertaking
before the NCLAT and cannot be accepted.
30. Nonetheless, in a situation where it is not possible to hold either a
board meeting or a shareholders' meeting on account of the disputes
between two groups of shareholders with equal shareholding, these petitions
would be maintainable as derivative actions by shareholders from one of the
groups provided such petitions are for the furtherance of the interest of the
company. These petitions may not satisfy procedural requirements of
derivative petitions inasmuch as the Hayagriv group shareholders have not
indicated, in the cause title, that these petitions are derivative actions on
behalf of the company. In substance, however, such requirements are met
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
because these petitions are filed for the company through a group holding
50% of the shares in the petitioner for rectification of entries relating to
registrations obtained by the holder of the remaining 50%. Since these
petitions are purportedly directed at protecting the proprietary interest of the
company vis-a-vis the impugned trade marks, I am inclined to reject this
preliminary objection.
31. Another preliminary objection was raised on the ground that only
the NCLT should consider the violation of Section 166 of the CA 2013.
This objection is ex facie untenable. The power of rectification is vested
expressly only on the Registrar of Trade Marks and the High Court under
Sections 47 and 57 of the TM Act. Merely because an allegation of breach
of Section 166 is made, it cannot be said that this Court cannot consider and
adjudicate petitions for rectification. Having rejected these preliminary
objections, I proceed with the petition on merits.
32. I first consider the request for rectification on the basis of Section
47 of the TM Act. The petitioner focused on clause (a) of sub-section (1)
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
thereof, which reads as under:
“47. Removal from register and imposition of
limitations on ground of non-use
(1) A registered trade mark may be taken off the register
in respect of the goods or services in respect of which it is
registered on application made in the prescribed manner
to the Registrar or the High Court by any person
aggrieved on the ground either -
(a) that the trade mark was registered without any
bona fide intention on the part of the applicant for
registration that it should be used in relation to those
goods or services by him or, in a case to which the
provisions of section 46 apply, by the company concerned
or the registered user, as the case may be, and that there
has, in fact, been no bona fide use of the trade mark in
relation to those goods or services by any proprietor
thereof for the time being up to a date three months
before the date of the application” (emphasis added)
The language of the above clause reveals that a person who applies for
rectification should establish that the registered proprietor did not have the
bona fide intention to use the relevant trade marks at the time of application
for registration and that the said marks were not bona fide used in relation to
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
the relevant goods or services up to a date three months before the date of
the application for rectification.
33. The applications for registration of the impugned marks were
filed in February 2018 on “proposed to be used” basis, and the petitions for
rectification were filed before the IPAB in September 2020. Therefore, the
relevant period to verify bona fide intention and bona fide use is the period
from February 2018 and up to about June 2020. During this period, the
petitioner filed I.A.No.54 of 2018 in C.P.No.54 of 2018 on the basis that the
1st respondent was putting up construction to carry on competing jewellery
business under the name C.Krishniah Chetty or its variants and obtained an
interim order on 27.04.2018. In these proceedings, by relying on GST
filings and financial statements to show that business was not carried on
until 2021, the petitioner asserts non-use for purposes of Section 47(1)(a) of
the TM Act. The petitioner cannot be permitted to approbate and reprobate
on this issue. By taking into account the threshold under Section 47(1)(a)
and the evidence on record, I conclude that neither lack of bona fide
intention nor lack of bona fide use was established. I turn next to the
challenge under Section 57 of the TM Act.
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
34. Section 11 of the TM Act sets out relative grounds on which the
Registrar of Trade Marks may decline registration if an application relates
to a trade mark that is deceptively similar to a mark already on the register
in respect of identical or similar goods or services or where the earlier mark
is a well-known trade mark irrespective of such similarity of goods or
services. The defence of the registered proprietor of the impugned marks in
these cases is not that the impugned marks are not deceptively similar. The
justification is that the 1st respondent is entitled to adopt and use the
impugned marks by virtue of being an entity controlled by the descendants
of Cotha Krishniah Chetty. Therefore, the focal point of this adjudication is
on the entitlement, if any, of the 1st respondent.
35. Strong reliance was placed by the 1st respondent on the Settlement
Agreement. The Settlement Agreement was included in volume-I of the
documents filed by the 1st respondent. On examining the document, I find
that it has been executed by five groups of parties described as party of the
first part to party of the fifth part. The party of the first part is described
therein as the CVH group, led by Mr.C.Vinod Hayagriv. The party of the
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
second part is described therein as the CGN group led by Mr.C.Ganesh
Narayan. The party of the third part is the petitioner herein and the party of
the fifth part is the 1st respondent herein. The party of the fourth part,
C.Krishniah Chetty Jewellers Private Limited (CKC Jewellers) is said to be
an entity controlled by the Hayagriv group with about 80% shareholding.
36. Some of the relevant recitals and clauses of the Settlement
Agreement are set out below:
“1. C.Krishniah Chetty and Sons was established
as a family-run retail gem & jewellery business in the
year 1869 by Cotha Krishniah Chetty (“Founder”) and is
now a household name in the retail jewellery trade known
for quality and integrity.
2. The CVH Group and the CGN Group own 100%
of the paid up share capital of CKC and CKC Jewellers
and are all descendants of the Founder, or spouses of the
descendants of the Founder. The CKC Group is
essentially a family run business that operates its stores
under the brand name of C.Krishniah Chetty & Sons.
3. Significant differences have arisen between the
CVH Group and the CGN Group relating to the business
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
and operations of the CKC Group (as defined in Recital
7) and the entitlement of the CVH Group and the CGN
Group relating to the business and operations of the CKC
Group and no compromise or settlement has been
reached between the CVH Group and the CGN Group till
date.
4. The Parties have therefore agreed to split the
business of the CKC Group in the manner provided for in
this Family Settlement.
1. Family Split and Demerger: In order to ensure
that family differences amongst the CVH Group and the
CGN Group does not affect the future of the business and
interests of the CKC Group, the Parties have agreed as
follows:
(a) CKC shall demerge the business of the store
being operated at The Touchstone, Main Guard Cross
Road, Bangalore-560001 (“TouchStone”) into CKC
Jewellers. As consideration for the demerger, CKC
Jewellers shall issue equity shares to the shareholders of
CKC.
(b) CKC shall demerge the business of the store
being operated at The Touchstone-South, 517/41, 46th
Cross, 5th Block, Jayanagar, Bangalore-560041
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
(“TouchStone South”) into CKC Deepali. As
consideration for the demerger, CKC Deepali shall issue
equity shares of CKC Deepali to the shareholders of
CKC.
The number of shares of CKC Jewellers and CKC
Deepali to be issued to the shareholders of CKC shall be
set forth in the petition of Demerger. To facilitate the
Demerger, CKC shall update the financial statements as
of September 30, 2013.
(k) CKC shall assign all Intellectual Property
Rights to each of CKC Deepali and CKC Jewellers such
that each of them have full rights to use, sub-license,
assign and further develop the same. CKC Deepali and
CKC Jewellers respectively shall have full ownership
over all such developments made by them.
(m) Should the Scheme of Demerger not come into
effect for any reason whatsoever by 31 December 2014 or
such extended period as may be determined by the Expert
which shall not be a date later than 28 February 2015,
the Parties shall implement the commercial and economic
substance of this Family Settlement by transferring the
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
two undertakings, viz. TouchStone and TouchStone South,
to CKC Jewellers and CKC Deepali respectively by way
of a slump sale at book values (as adjusted by the
Adjustment Amount) and provide that the sale
consideration would be deferred and paid over at a
mutually agreed time period and such that the repayments
by both CKC Jewellers and CKC Deepali would repay the
amounts to CKC over the same period and at the same
time (the “Alternate Structure”). It is agreed that the
provisions of all steps to be taken pre and post the
Demerger, including the closure of HS, shall mutatis
mutandis apply to the Alternate Structure. The manner of
implementing the Alternate Structure including the time
period for payment of amounts to CKC shall be
determined by CHV and CGN, failing which by the Expert
in consultation with such consultants as the Expert deems
appropriate. The implementation of the Alternate
Structure (other than the deferred payments to CKC)
shall be completed on or before 31 March 2015.
3. (d) Non-Compete: Subject to sub-clause (e)
below, there shall be no non-compete obligations of any
nature whatsoever on any of the members of the CVH
Group and the CGN Group. Each of the members of the
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
CVH Group and the CGN Group shall be free to carry on
any business and in any form whatsoever.
(g) Marks and Entity Names: CKC shall assign the
trademarks “C.Krishniah Chetty & Sons” and
“C.Krishniah Chetty” (collectively the “Assigned
Marks”) jointly to CKC jewellers and CKC Deepali as
part of the Demerger such that neither of CKC Jewellers
and CKC Deepali would be entitled to make use of such
marks on an “as is, where is” basis but would be
permitted to use only variants of such trademarks. For
this purpose a variant means a mark that has the whole or
a portion of C.Krishniah Chetty & Sons or C.Krishniah
Chetty and has a prefix or suffix attached to the same.
Accordingly, CKC Jewellers shall use the two variants,
C.Krishniah Chetty Jewellers and Cotha Krishniah Chetty
(Collectively the “CVH Variants”) while CKC Deepali
shall use the two variants C Krishniah Chetty & Co and C
Krishniah Chetty Corp (collectively the “CGN
Variants”). CKC shall enter into identical agreements
with CKC Jewellers and CKC Deepali, if required, to
support CKC Jeweller's application for the trademarks in
the CVH Variants and CKC Deepali's application for the
trademarks in the CGN Variants. Further, each of CKC
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
Deepali and CKC Jewellers shall be free to create further
sub-variants of the CVH Variants and the CGN Variants
without the requirement of consent or approval of any of
CGN Group and CVH Group. Any further variant must
have the above CVH Variants and the CGN Variants in
full and any prefix or suffix to the same. Each of CKC
Deepali and CKC Jewellers shall be free to seek
registration of such further variants under the law
relating to trademarks. Each Group shall also be free to
promote such number of companies and entities as may
be deemed appropriate carrying such names.
8. (l) Arbitration: Disputes, if any, that pertain or
related to this Family Settlement that cannot be resolved
shall be referred to arbitration by a sole arbitrator
appointed by the Parties. The seat of arbitration shall be
Bangalore. The language of arbitration shall be English.
Arbitration shall be conducted in accordance with
Arbitration and Conciliation Act, 1996 (or any successor
legislation) and the rules made thereunder.”
37. On closely examining the Settlement Agreement, it is clear that all
parties concerned have signed the same. It is also recorded therein that
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
necessary corporate actions were taken by the corporate entities before
executing the Settlement Agreement. The admitted and undisputed position
is that the parties concerned did not implement either a scheme of demerger
or slump sale within the time limit specified in that regard in clause 1(m) of
the Settlement Agreement or even thereafter. The Settlement Agreement
stipulates that the time is of the essence. As is evident from the dispute
resolution clause, parties agreed to resolve disputes through arbitration.
Except by way of an application for interim relief under Section 9 of the
Arbitration Act, it does not appear that the arbitration clause was invoked by
issuing a notice under Section 21 thereof. Any definitive interpretation of
the terms of the Settlement Agreement should be undertaken by either a
duly constituted arbitral tribunal or a civil court. For purposes of
adjudicating these petitions, it is unnecessary to interpret whether time is of
the essence, as stipulated in the Settlement Agreement, or whether the terms
thereof may still be implemented notwithstanding the lapse of such time
limit. The material question for purposes of these petitions is whether the 1 st
respondent is entitled to adopt and use the impugned marks notwithstanding
the non-implementation of the Settlement Agreement.
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
38. While the 1st respondent asserted that the jewellery business was
established in the year 1869 by Cotha Krishniah Chetty as a family-run
retail gem & jewellery business, the petitioner refuted the assertion insofar
as the claim that the business continues to be family-run is concerned.
According to the petitioner, the business was run by the descendants of
Cotha Krishniah Chetty through a partnership firm. By relying heavily on
the deed of dissolution of such partnership firm, the petitioner contended
that it acquired the assets and liabilities, including the intellectual property
rights of the partnership firm. As a consequence, it is asserted by the
petitioner that the 1st respondent is not entitled to adopt or use deceptively
similar marks.
39. Neither the petitioner nor the 1st respondent denies that Cotha
Krishniah Chetty founded the jewellery business. It is also the admitted
position that both the members of the Hayagriv group and the Narayan
group are descendants of Cotha Krishniah Chetty. The deed of dissolution
dated 28th April 1980 has been placed on record. There are eleven parties
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
thereto described as parties of the first to eleventh part. The deed of
dissolution refers to an instrument of partnership dated 03rd January 1980.
The recitals of the deed of dissolution, in relevant part, are set out below:
“WHEREAS the Parties of the First to Tenth parts
along with the one of Smt. A.S.Sathyavathi in her capacity
as the Trustee of Sanmathi Trust were carrying on a
business in Partnership under the name and style of
M/s.C.Krishniah Chetty & Sons, as evidenced by an
instrument of Partnership dated 3-1-1980.
AND WHEREAS the parties of the First to the
Tenth Parts along with the said Smt.Sathyavathi being
desirous of dissolving the said partnership have dissolved
the said partnership with effect from 1-4-1980.”
40. The above recitals indicate that the business was carried on by the
parties of the first to tenth parts along with Smt. A.S.Sathyavathi under the
name and style of M/s. C.Krishniah Chetty & Sons. The recitals further
disclose that the instrument of partnership dated 03rd January 1980
evidences the conduct of business by the partnership firm, thereby
indicating that the terms of partnership were reduced into writing only on
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
03rd January 1980 although the business may have been carried on for a
longer period. The material clauses of the deed of dissolution are as under:
“1. The Firm “C.Krishniah Chetty & Sons”
constituted under the Instrument of Partnership dated
3-1-1980 has been dissolved effective from 1-4-1980.
2. The terms of this Deed of Dissolution will be
operative from 1-4-1980.
3. The assets and liabilities of the business
including Trade Marks and Patents etc., for the purpose
of dissolution have been valued as per details to be found
in Annexure 'A' to this Document.
4. It is agreed that the party of the Tenth Part
namely M/s. C.Krishniah Chetty & Sons Pvt. Ltd., on
dissolution will take over the entire business of the
Partnership as a going concern with all its assets and
liabilities as indicated in Annexure 'A' and is authorised
to run the said business.”
As is noticeable, clause 4 provides for C.Krishniah Chetty & Sons Private
Limited, the petitioner herein, to take over the entire business of the
partnership as a going concern along with the assets and liabilities indicated
in Annexure-A. Unfortunately, Annexure-A of the deed of dissolution has
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
not been placed on record by the parties. Therefore, it is not possible to
conclude as to which trade marks of the partnership firm, C.Krishniah
Chetty & Sons, were taken over by the petitioner.
41. The shareholding pattern of the petitioner has been placed on
record and discloses that both the Hayagriv group and the Narayan group
hold roughly equal number of shares in the company. As regards the
management of the company, it appears that six out of eight directors are
from the Hayagriv group and only two directors are from the Narayan
group. Thus, at the board level, it appears that the Hayagriv group is in
control. Upon being questioned with regard to payment of dividend to
shareholders, it is stated that dividends were paid only up to the financial
year 2012-2013. It was further stated that salaries to directors were paid up
to the financial year 2018-2019 but not thereafter.
42. The documentary evidence placed on record by the parties leads
to the conclusion that the jewellery business was founded by Cotha
Krishniah Chetty and that such business was operated subsequently by his
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
descendants through a partnership firm. The petitioner appears to have
succeeded to the business of the partnership firm, C.Krishniah Chetty &
Sons. The deed of partnership dated 03rd January 1980 (the 1980 Partnership
Deed), which is referred to in the deed of dissolution, has also been placed
on record. The 1980 Partnership Deed discloses that there were eleven
partners, including the petitioner herein. The partnership deed specified that
the management of the partnership shall vest with Shri.C.V.Hayagriv and
Shri.C.V.Narayan, who were described as managing partners. The relevant
clause is as under:
“d) The management of the Partnership shall vest
with the Party of the First Part and the Party of the
Second Part, i.e., Sri C.V.Hayagriv and Sri. C.V.Narayan,
who shall devote their whole time, energy and attention in
their individual capacity for the day-to-day working of the
Firm. The Managing Partners shall be paid remuneration
at the rate of Rs.3,000/- each per mensem which shall be
deemed to be their remuneration for their skill and
services rendered by them to the Firm from time to time in
their Individual Capacity and not as part of Divisible
Profits of the Firm. The remuneration paid shall be a
charge on the Firm.”
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
43. The 1980 Partnership Deed refers to an earlier instrument of
partnership dated 2nd October 1978 for a firm called M/s C.Krishniah Chetty
& Sons (the 1978 Partnership Deed). This document reveals that there were
10 partners. It also discloses the principal roles of Mr.C.V.Haygriv and Mr.
C.V.Narayan in the firm. Clause (k) is as under:
“k) Sri C.V.Hayagriv and Sri C.V.Narayan are authorised
to borrow such sum or sums of money jointly as required,
for the purpose of carrying on business of the firm under
their Joint Signatures”
The conclusion that follows upon scrutiny of these documents is that the
jewellery business of Cotha Krishniah Chetty was continued by his
descendants, including members of the Hayagriv and Narayan groups, and
that Shri. C.V.Hayagriv and Shri. C.V.Narayan were the central figures
managing the business. Such business was intended to be carried on jointly
by the Hayagriv and Narayan families through the vehicle of the petitioner
company. Once disputes arose between the Hayagriv group and the Narayan
group, parties decided to resolve the disputes by effecting a divorce
entailing the transfer of the business of the petitioner to entities controlled
by the Hayagriv group and Narayan group, respectively. The terms of
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
divorce could not be implemented as envisaged in the Settlement
Agreement. The Settlement Agreement was executed on 09th January 2014
and about 11 years have elapsed.
44. The question that arises, therefore, is whether the Narayan group
should be restrained from using marks deceptively similar to those used by
the petitioner. The petitioner has placed on record details of registrations
obtained under multiple classes in relation to its jewellery business. As the
prior user and registrant, the petitioner seeks to rectify the register in
relation to the eight impugned marks of the 1st respondent. Under Section 35
of the TM Act, a registered proprietor or registered user is not entitled to
interfere with the bona fide use by a person of his own name or of any
predecessor in business. The said provision is as under:
“35. Saving for use of name, address or
description of goods or services.—Nothing in this Act
shall entitle the proprietor or a registered user of a
registered trade mark to interfere with any bona fide use
by a person of his own name or that of his place of
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
business, or of the name, or of the name of the place of
business, of any of his predecessors in business, or the
use by any person of any bona fide description of the
character or quality of his goods or services. ”
From the facts narrated above, it is clear that C.Krishniah Chetty, including
its variants, was the name in which the jewellery business was carried on by
the predecessors of the 1st respondent. Even de hors the Settlement
Agreement, in the absence of any express agreement to the contrary and
none has been pointed out by the petitioner, the 1st respondent would be
entitled to use the name C.Krishniah Chetty in relation to its jewellery
business.
45. Another significant aspect was brought to my notice. The 1st
respondent contended that companies controlled by the petitioner were
permitted to use the trade mark C.Krishniah Chetty and its variants. The
response of the petitioner is that this was pursuant to the Joint Trademarks
Proprietorship Agreement, and that both the Hayagriv group and the
Narayan group are shareholders in these entities. On examining the Joint
Proprietorship Agreement, the parties thereto are the petitioner herein, CKC
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
Jewellers and C.Krishniah Chetty and Sons Manufacturers Private Limited
(CKC Manufacturers). This agreement is subsequent to the Settlement
Agreement. The first material aspect is the title, which uses the words “Joint
Ownership of Trademarks” and clause 1, and the latter is set out below:
“1.Ownership Interests:
The parties to this agreement are the joint and equal
Proprietors and Owners of all legal rights in the Schedule
A Trademarks.”
Clause 1 above unequivocally records that all three parties are joint and
equal proprietors of the trade marks. In these petitions, the constant refrain
of the petitioner is that only the petitioner is entitled to use the trade mark
C.Krishniah Chetty and its variants because it took over the business of the
partnership firm, C.Krishniah Chetty & Sons. If that were the case, no other
entity at all or, at a minimum, no other entity incorporated or established
after the deed of dissolution dated 28th April 1980 should have the right to
use deceptively similar marks. As per the master data from the records of
the Ministry of Corporate Affairs, CKC Jewellers was incorporated on 27 th
March 1991 and CKC Manufacturers on 11th March 2010 (pages 703-704 of
petitioner's volume 3). On perusal of Schedule A of the Joint Trademarks
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
Proprietorship Agreement, it is noticeable that it includes the trade mark
C.Krishniah Chetty Group of Jewellers in relation to several classes.
46. After recording in the recitals that all the parties are engaged in
the gems and jewellery business, clause 3 of the Joint Trademarks
Proprietorship Agreement records as under:
“ 3. Rights to Use:
Each Party shall have the right to use the Schedule A
Trademarks as the proprietor thereof in relation to the
goods and services in respect of which they are used and
applied for registration. Furthermore, no party shall have
the right to use the Schedule A Trademarks except in
relation to an article or service with which all the parties
are connected in the course of trade.
If clauses 1 and 3 are considered conjointly, it is evident that as joint owners
all three parties to the Joint Trademarks Proprietorship Agreement are
entitled to use the trade marks described in Schedule A thereto. This
effectively belies the contention of the petitioner that use by other entities is
under licence from the petitioner. The other contention of the petitioner that
the Narayan group has shareholding in all three parties to this Joint
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
Trademarks Proprietorship Agreement also does not carry the petitioner far
because it is not denied that the Hayagriv group has controlling interest in
these entities. In addition, the 1st respondent has placed on record details of
registrations obtained or applied for in the names of CKC Jewellers and
CKC Manufacturers in relation to trade marks containing the words
C.Krishniah Chetty and variants thereof. When all these facts and
circumstances are considered holistically, the petitioner is not entitled to
seek the expunging of the impugned trade marks under Section 57 of the
TM Act. There is, however, the aspect of public interest that warrants
consideration in an action for rectification.
47. Deceptively similar entries are not permitted to be made in the
Register of Trade Marks not only to protect the proprietary interest of the
earlier user and registered proprietor, but also to protect public interest so as
to avert the likelihood of confusion or deception among the relevant section
of the public, which purchases goods bearing the impugned mark or avails
of services provided under the impugned mark. In the case at hand, both the
petitioner and the 1st respondent carry on identical jewellery business.
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
Therefore, it is likely and even probable that consumers would enter shops
run by the 1st respondent under the mistaken belief that such shop is being
operated by the petitioner if the 1st respondent uses deceptively similar
marks. Therefore, from a public interest stand point, differentiation between
the 1st respondent's stores and the petitioner's stores may be necessary.
48. The power under Section 57 of the TM Act is wide and - as is
evident from the text of sub-section (2) thereof, which uses the phrase “may
make such order for the making, expunging or varying the entry as it may
deem fit” - embraces expunging/removal, modification, addition, deletion
and the like. In the Settlement Agreement, parties had provided for the
Hayagriv group to use C.Krishniah Chetty Jewellers and Cotha Krishniah
Chetty, which were described as CVH variants therein, and the 1st
respondent, CKC Deepali, was permitted to use the variants C.Krishniah
Chetty and Co. and C.Krishniah Chetty Corp, which were collectively
described as the CGN variants. As recognised earlier, the terms of the
Settlement Agreement were not implemented for reasons not fully disclosed
or, in any event, germane for the adjudication of these petitions. Therefore,
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
the specific variants agreed to be adopted and used by the two groups
therein are not binding on the parties at this juncture.
49. By taking into account the public interest requirement to
differentiate the marks, it would be just and necessary that the word
'Narayan' be added in parenthesis as part of each mark impugned therein.
Subject to such addition, in the overall facts and circumstances outlined
above, no case is made out to expunge the marks from the register.
50. Therefore, all these petitions are disposed of on the following
terms:
(i) The request of the petitioner to expunge the impugned marks is
declined. The Registrar of Trademarks is, however, directed to rectify the
entry relating to each trade mark in such manner as to include the word
'Narayan' in parenthesis as part of each mark.
(ii) For the above purpose, the 1st respondent is directed to file
necessary amendment applications incorporating the word 'Narayan' in
parenthesis as mentioned above.
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
(iii) Upon receipt of such applications, which shall be filed not later
than thirty days from the date of receipt of a copy of this order, the
amendments shall be made in the Register of Trade Marks within thirty (30)
days from the receipt thereof. If such applications are not received within
the specified time, the Registrar of Trade Marks shall proceed to comply
with the above direction.
(iv). Consequently, connected miscellaneous petition stands closed.
(v) There shall be no order as to costs.
18.06.2025
Index : Yes / No
Internet : Yes / No
Neutral Citation: Yes / No
kj
To
The Registrar of Trade Marks,
IP Building,
Chennai 600 032.
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
(T)OP(TM)Nos.376 to 383 of 2023
SENTHILKUMAR RAMAMOORTHY,J
kj
Pre-delivery order in
(T)OP(TM)Nos.376 to 383 of 2023
(ORA/89 to 96/2020/TM/CHN
18.06.2025
https://www.mhc.tn.gov.in/judis ( Uploaded on: 18/06/2025 07:52:51 pm )
