Orissa High Court

Kd Gold And Diamonds Private vs M/S.Khimji & Sons on 11 December, 2023

Author: B.P. Routray

Bench: B.P. Routray

Signature Not Verified
Digitally Signed
Signed by: CHITTA RANJAN BISWAL
Reason: Authentication
Location: Orissa High Court, Cuttack
Date: 11-Dec-2023 14:36:52



                                       IN THE HIGH COURT OF ORISSA AT CUTTACK

                                                          FAO No.105 of 2023

                              (From the order dated 20th January, 2023 passed by the learned District
                              Judge, Khurda at Bhubaneswar in I.A. No.01 of 2021 arising out of
                              C.S. No.02 of 2021)


                               KD Gold         and   Diamonds       Private
                               Limited                                        ....               Appellant


                                                                          -versus-


                               M/s.Khimji & Sons                              ....              Respondent


                              Advocate(s) appeared in this case:-

                                          For Appellant          : Mr. Prafulla Kumar Rath,
                                                                   Senior Advocate

                                          For Respondent         : Mr. Gautam Mukherjee,
                                                                   Senior Advocate


                                             CORAM: JUSTICE B.P. ROUTRAY
                                                            JUDGMENT

th 11 December, 2023

B.P. Routray, J.

1. Present appeal is directed against grant of temporary injunction by the learned District Judge, Khurda at Bhubaneswar in I.A. No.01 of 2021 (arising out of C.S. No.02 of 2021). In the impugned order, the Appellant-Defendant has been restrained from using the mark "KHIMJI JEWELS" or "KHIMJI" pending disposal of the suit.

Signed by: CHITTA RANJAN BISWAL

Location: Orissa High Court, Cuttack Date: 11-Dec-2023 14:36:52

2. The Respondent is the Plaintiff. The suit was filed praying for a decree of permanent injunction against the Defendant from using the Trademark "KHIMJI JEWELS" or "KHIMJI" in any manner whatsoever, along with ancillary and consequential reliefs.

3. Plaintiff's case is that, it is a partnership firm registered under the Indian Partnership Act, 1932 having its registered Office at Ambica House, Lewis Road, Bhubaneswar with Registration No.235 of 1999. The Defendant-Company was incorporated under the Companies Act, 2013 on 10.02.2020 having its registered Office at Baripada. The Plaintiff having jewellery business registered its Trademark "KHIMJI" / "KHIMJI & SONS JEWELLERS" along with all kinds of logo of "KHIMJI" on 09.07.1999 vide Trademark No.864806 in Class 14 for jewellery items. The Trademark Certificate is valid till the year 2029. During passage of time, great reputation and good will have been acquired to the artistic design, colour scheme and the brand name "KHIMJI". But the Defendant started its business in 2020 with the mark "KHIMJI JEWELS" which is deceptive and confusing to the Plaintiff's logo and brand in appearance. Further, the Defendant had applied for registration of the Trademark "KHIMJI JEWELS" which is pending consideration before the competent authority under the Trademarks Act and the Plaintiff has also submitted his objection to the same. And prior to that, the application of the Defendant for registration of the mark "KHIMJI DAYABHAI & Co." under Class 14 for precious metals and jewellery was refused by the examiner for registration of Trademarks, Kolkata vide order dated 27.12.2018 due to

Signed by: CHITTA RANJAN BISWAL

Location: Orissa High Court, Cuttack Date: 11-Dec-2023 14:36:52

deceptive similarity to the Plaintiff's Trademark. In spite of this, the Defendant is using the mark "KHIMJI JEWELS" in transacting his business activities riding upon the good will and brand established by the Plaintiff and running his shops of jewellery at Baripada, Balasore and Bhadrak. Plaintiff thus alleges that the Defendant is intentionally infringing his Trademark to gain from the good will earned by the Plaintiff leading to loss of profit and disrepute to the Plaintiff.

4. Defendant's case is that it had the partnership firm since 01.04.1992 in the name and style of "KHIMJI DAYABHAI AND BROTHERS" and running its jewellery business. Both parties are cousins and belong to one family. On 05.08.1999, the partnership firm was dissolved with condition that all the partners can use the word "KHIMJI" with addition and deletion and accordingly two branches of the family started their own business. On 15.08.1999, the Defendant group continued their jewellery business in the name and style of "M/S. KHIMJI DAYABHAI CO." and the Plaintiff group started business in the name and style of "KHIMJI & SONS". According to the Trade Name User Agreement arrived between the parties on 28.06.2005, it was decided that neither parties would have any objection for using of the name "M/S. KHIMJI DAYABHAI & BROTHERS" among themselves with proper prefix and suffix as long as it creates separate identity without any financial damage or harm to other party. Therefore, as per the Dissolution Agreement dated 05.08.1999 and Name User Agreement dated 28.06.2005, the Plaintiff is not entitled for any equitable relief and the business entity of the Defendant has registered its company in the name and style of

Signed by: CHITTA RANJAN BISWAL

Location: Orissa High Court, Cuttack Date: 11-Dec-2023 14:36:52

"KHIMJI JEWELLERS PRIVATE LIMITED" under the Companies Act, 2013 in the year 2020. Therefore, the Defendant cannot be restrained from using the logo and mark "KHIMJI JEWELS" since it derives the right to use from the time of his forefathers, supported by the Dissolution Agreement as well as Name User Agreement.

5. In view of the rival pleadings, it is now to be examined if the Plaintiff has made out a case for temporary injunction against the Defendant under Order 39 Rule 1 & 2, C.P.C.

6. The admitted case of both parties is that, they all belong to one family having the common ancestor namely Dayabhai Ramjibhai Nandha. He had four sons, namely, Chaturbhuj Dayabhai Nandha, Pragji Dayabhai Nandha, Khimji Dayabhai Nandha and Harilal Dayabhai Nandha. The Plaintiff's business entity is presently run by the sons/grandsons of Khimji Dayabhai Nandha and the Defendant's entity is running by the sons/grandsons of Chaturbhuj Dayabhai Nandha. The family had jewellery business since 1936 in the name and style "KHIMJI DAYABHAI AND BROTHERS" and on 01.04.1992, the partnership firm was registered having partners, namely, Kantilal Chaturbhuj Nandha, Chimanlal Pragji Nandha, Dhirajlal Pragji Nandha, Girish Chandra Pragji Nandha, Dinesh Chandra Pragji Nandha, Binod Roy Khimji Nandha, Chandulal Harilal Nandha and Jitendra Harilal Nandha to deal with jewellery business. On 05.08.1999, the partnership firm "KHIMJI DAYABHAI AND BROTHERS" was dissolved by an Agreement of Dissolution of partnership by all the members wherein it is agreed that the partners are

Signed by: CHITTA RANJAN BISWAL

Location: Orissa High Court, Cuttack Date: 11-Dec-2023 14:36:52

free to do same kind of business anywhere using the word "KHIMJI DAYABHAI" with addition or deletion of some words, but no partner can use the name "KHIMJI DAYABHAI AND BROTHERS" or "KD" logo. It is also admitted that the father of the present proprietors of Plaintiff's unit and the father of the proprietors of Defendant's unit were parties to said Dissolution of Partnership Agreement dated 05.08.1999. Further, another Name User Agreement was executed on 28.06.2005 between the partners of both parties with such terms and conditions including that any of the parties can use "KHIMJI DAYABHAI AND BROTHERS" with proper prefix or suffix.

7. It is not in dispute that the Plaintiff has its jewellery business in the Trademark "KHIMJI" / "KHIMJI & SONS" since 1999. They registered their trademark along with the logo on 09.07.1999 and by passage of time the brand name as well as logo earned reputation and goodwill in the market. The Defendant formed the partnership firm on 15.08.1999 in the name and style of "M/S.KHIMJI DAYABHAI CO." and dealt with jewellery business. On 10.02.2020 they converted "M/S. KHIMJI DAYABHAI CO." to a company as "M/S. KHIMJI JEWELLERS PRIVATE LIMITED" and applied for trademark "KHIMJI JEWELLS" on 03.07.2020.

It also remains undisputed that the Defendant's application for trademark "KHIMJI DAYABHAI & CO." was refused by the examiner of Trademarks, Kolkata on 27.12.2018.

8. It is submitted by the Defendant (present Appellant) before this Court that the order of temporary injunction being granted contrary to

Signed by: CHITTA RANJAN BISWAL

Location: Orissa High Court, Cuttack Date: 11-Dec-2023 14:36:52

the family settlement arrived in the Dissolution of Partnership Agreement dated 05.08.1999 and the Trade Name User Agreement dated 28.06.2005, is not sustainable in the eye of law. It is further submitted on behalf of the Defendant that the parties having history of joint family business in jewellery in the brand name "KHIMJI DAYABHAI AND BROTHERS" and there having prior use of the word "KHIMJI" by the Defendant, no case is made out in favour of the Plaintiff (present Respondent) for equitable relief and the Defendant gets protection under Section 34 of the Trade Marks Act, 1999.

9. Section 29 of the Trade Marks Act prohibits use of identical or similar or deceptively similar Trademark, where there is likelihood of confusion. In Laxmikant vs. Chetanbhai Sah, (2002) 3 SCC 65, the Hon'ble Supreme Court held:

"10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit anyone to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury."

10. In the given facts of the case at hand, as stated above, though there is history of joint family business in jewellery by the parties, but the admitted fact remains that the Plaintiff is having their independent

Signed by: CHITTA RANJAN BISWAL

Location: Orissa High Court, Cuttack Date: 11-Dec-2023 14:36:52

business in the brand name "KHIMJI" / "KHIMJI & SONS JEWELLERS" since 1999 and they have registered the trademark on 09.07.1999, whereas the Defendant had their independent business in the brand name "KHIMJI DAYABHAI CO.". The Defendant now in the year 2020 has converted "KHIMJI DAYABHAI CO." to a company incorporated as "KHIMJI JEWELLERS PRIVATE LIMITED".

11. It is the submission of the Appellant that as they have history of prior use of the word "KHIMJI", no equitable right accrues in favour of the Plaintiff for exclusive use of the word "KHIMJI". But the submission is not found convincing in view of the fact that the Plaintiff has registered the trade mark since 9th July 1999 and continuing his business as such. It is not that the Defendants were using the word "KHIMJI" exclusively, but their business is in the name and mark of "KHIMJI DAYABHAI CO." Therefore no right of prior use for the word/mark "KHIMJI" alone accrues in favour of the Defendants.

12. So in view of the admitted continuation of business by the Plaintiff using the mark "KHIMJI" / "KHIMJI & SONS JEWELLERS" since 1999, the prima facie case is established in their favour.

13. So far as the balance of convenience is concerned, it is important to note here that the Defendant had their business in the name and style "KHIMJI DAYABHAI CO." They never had used the word "KHIMJI" independently for their business. Though in the

Signed by: CHITTA RANJAN BISWAL

Location: Orissa High Court, Cuttack Date: 11-Dec-2023 14:36:52

Partnership Dissolution Deed dated 5th August 1999 it was agreed that everyone is free to do jewellery business using the word "KHIMJI DAYABHAI" by deleting or adding some of the words, but the fact remains that the Defendant continued their business as "KHIMJI DAYABHAI CO." and even after the Trade Name User Agreement dated 28th June 2005 they continued so without using the word "KHIMJI" independently. On the other hand, the Plaintiff is having their business as "KHIMJI" / "KHIMJI & SONS" since 1999. Therefore, such use of words "KHIMJI JEWELLS" by the Defendants only in the year 2020 would certainly create inconvenience to Plaintiff's business. It is true that a business or service associated with a person acquires certain reputation and goodwill in course of time. Therefore the mark "KHIMJI"/ "KHIMJI & SONS" has become the property of the Plaintiff, which they have been using since 1999, and the use of mark "KHIMJI JEWELLS" by the Defendants would definitely cause inconvenience to the Plaintiff.

14. The essence of dispute is that, whether the use of words "KHIMJI" or "KHIMJI JEWLLS" by the Defendant would be deceptively similar to the mark "KHIMJI" / "KHIMJI & SONS JEWELLERS" ? It needs to be understood here that use of deceptively similar mark may not be identical and as per its definition contained in Section 2 (h) of the Trade Marks Act, 1999, would be a mark if it nearly reassembles that other mark as to be likely to deceive or cause confusion. In the instant case, the mark "KHIMJI JEWELLS" with its get up would certainly fail the test and can be termed in its appearance to create confusion among the purchasers.

Signed by: CHITTA RANJAN BISWAL

Location: Orissa High Court, Cuttack Date: 11-Dec-2023 14:36:52

15. It is well settled that in a suit of present nature for action for infringement, when a prima facie case is made out and balance of convenience is found in favour of the Plaintiffs, it may not be necessary to show more than loss of goodwill and reputation to fulfill the condition of irreparable injury. In fact, if the first two pre-requisites are fulfilled in trade mark actions, irreparable loss can be presumed to have taken place [see para 122, Ramdev Food Products (P) Ltd. vs. Arvindbhai Rambhai Patel and others, (2006) 8 SCC 726 ].

16. In view of the discussions made above, prima facie case and balance of convenience is established in favour of the plaintiff and therefore loss of goodwill and reputation is well presumed towards irreparable injury. Thus the Plaintiff has made out a case in their favour for injunction since it is established that the Defendant has infringed his trade mark. In the result, the appeal is dismissed and the impugned order is confirmed. However, it is made clear that the impugned order of injunction would not debar the Defendant from using their mark "M/s. KHIMJI DAYABHAI CO." as per their earlier business continued.

(B.P. Routray) Judge

C.R.Biswal, Secy.