(2023)12 OHC CK 0037
FAO No.105 of 2023
Decided on: 11-12-2023
Abstract:
In this case the plaintiff and the defendant was cousins, belong from one family having the common ancestor namely Dayabhai Ramjibhai Nanda. He had four sons, namely, Chaturbhuj, pragji, Khimji and Harilal. The plaintiff’s whole business run by the son/grandson of Chatubhuj Dayabhai Nandha. This family had jewellery business since 1936. And the name of this jewellery business was ‘Khimji Dayabhai and Brothers, and this partnership firm was registered having the name of, Kantilal Chaturbhuj Nandha, Chimanlal Pragji Nandha, Dhiraj Pragji Nandha, Girish Chandra Pragji Nandha, Dinesh Chandra Pragji Nandha, Binod Roy Khinji Nandha, Chandulal Harilal Nandha and Jitendar Harilal Nandha for dealing with jewellery business. In the year of 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 all the member of this firm is free to do the same kind of business in anywhere using the word ‘Khimji Dayabhai’ with some addition or deletion of some words, but no member is allowed to use the same name ‘Khimji Dayabhai and Brothers’ or the ‘KD’ logo. Further there is another agreement on 2005 between the partners of plaintiff and defendant side with some terms and condition that any of the parties can use ‘Khimji Dayabhai and Brothers’ with proper prefix and suffix.
Introduction:
This case is about a dispute between a partnership firm. The plaintiff runs a jewellery business under the trademark’Khimji’/’Khimji and sons jewellers’, and the defendant runs a business in the name of ‘Khimji Dayabhai and co.’, now in the year of 2020 he want to convert it into ‘Khimji jewellers private limited’ which is considered as similar one. The
plaintiff accused the defendant that the trademark of this two business somehow similar for that the consumers may confuse about this, and also they infringe the right of trademark and harm the plaintiff’s reputation and goodwill. In this the defendant said that the family settlement agreement and trade name user agreement permit the use of the term ‘Khimji’ with other modification.
Facts of the case:
The plaintiff has registered his trademark in the name of ‘Khimji’/’Khimji and sons jewellers’, including all things which is valid till 2029. Plaintiff business grows gradually with time which gained a great reputation and goodwill. The defendant has renamed his business in 2020. He uses the trademark of ‘Khimji jewels’, which is similar to the plaintiff’s trademark. The defendant applied for trademark registration, but its pending under the compenent authority of trademark act. So the plaintiff file a suit of a decree of permanent injunction against the defendant for using this similar trademark.
Plaintiff’s argument:
There are some issue which is given by the plaintiff, those are-
- The trademark of defendant is similar to the plaintiff’s trademark which is confusing for the consumer, for this reason plaintiff can face losses.
- Defendant infringe the agreement which is happened between the members of this partnership firm that every member can use the term ‘Khimji’ with proper modification but the defendant violates it and make confusion between two business.
Defendant’s argument:
Arguments raised by defendant-
- Defendant argues that in their partnership agreement its clearly said that any member can use term ‘Khimji’ with some modification or some addition or deletion of words.
- Defendant asserts that their use of ‘Khimji’ is based on prior use in the family business and that the trademark law protects such use under section 34 of the Trademark Act.
The essence of the dispute is that whether the use of words ‘Khimji’ or ‘Khimji Jewelles’ by the defendant would be deceptively similar to the mark ‘Khimji’/ ‘Khimji and sons jewellers’?
Legal provisions:
Trademark Act: Section 34
This section talks about the use of the first-mentioned trademark in relation to those goods or services by the proprietor or a predecessor in title of his; or
to the date of registration of the first-mentioned trademark in respect of those goods or services in the name of the proprietor of a predecessor in title of his;
which is the earlier, and the register shall not refuse to register the second mentioned trademark by reason only of the registration of the first-mentioned trademark.
Trademark Act: Section 29
This section talks about if any person uses a trademark which is same or similar to the registered trademark for selling goods and services that the trademark is registered for, if it make any kind of confusion that’s and infringement.
Trademark Act: Section 2(h)
A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.
The upper legal provision is related to this case.
Courts decision:
In above all the court made a decision that, in this case the decision comes in plaintiff’s favour and therefore loss of reputation and goodwill is well presumed towards injury. The plaintiff has made a case in their favour for injunction since it is seen that defendant has violate his trademark.
In the result the appeal is dismissed and the impugned order is confirmed. However it clear that the impugned order of injunction would not in the use of their trademark named ‘M/s. Khimji Dayabhai CO.’ And they can continue their business in previous name.
The term ‘Khimji jewel’ is too similar to ‘Khimji and Sons Jewellers’ so it can be make so much trouble for the plantiff, it can cause many loses and many more. The defendant can modify it in the terms of trademark.
Case laws:
Laxmikant V. Patel vs. Chetanbhai Shah 2002–
In this case the appellant, operating a colour lab under the name ‘Muktajivan’, filed a passing off suit against the respondents, who adopted the same name for their studio. The District and High courts initially dismissed the case, citing geographic distance between the business and the fact that the respondent’s business had started before the suit. However, the Supreme Court ruled in favor of the appellant, emphasizing that even innocent use of a confusingly similar name could cause harm. The court highlighted the appellant’s established goodwill and reputation in the name ‘Muktajivan’, stating that passing off is based on the like hood of
consumer confusion and potential damage, not actual harm. The court granted and injunction, protecting the appellant business intrests.
Parle Products Pvt. Ltd. Vs. JP & Co. 2003–
The Supreme Court ruled in favor of parle products, which had filed a suit for trademark infringement and passing off against JP & Co. for using ‘PARLE’ on their products. Parle argued that the defendant’s use of a similar mark could confuse consumers, given the established reputation of its ‘Parle’ brand in the market. The court held that the defendant use was likely mislead consumers, thus granting an injunction to prevent further use of the name ‘PARLE’. The case reinforced the protection of established trademark and the prevention of consumer confusion.
Starbucks Corporation vs. Sardarbuksh Coffee & Co. 2012–
Starbucks filed a lawsuit against Sardarbuksh Coffee, an Indian coffee chain, for using a name and logo that were confusingly similar to Starbucks. The plaintiff argued that the defendant’s brand, which used a similar name and a logo resembling Starbucks’ design, could mislead consumers into thinking the two businesses were associated. The case involved trademark infringement and passing off, with Starbucks seeking an injunction to prevent further use of the name “Sardarbuksh.” The court ruled in favor of Starbucks, emphasizing the likelihood of consumer confusion due to the similarity in branding, and granted an injunction to protect its trademark rights.
Defects of law:
There are many defects of law, those are-
i. The law does not clearly address how family business practices and informal agreements affect the trademark ownership and rights.
ii. The law does not clearly define what constitutes a sufficient modification of a mark to avoid confusion.
iii. Trademark law struggles with providing consumer confusion, especially in cases where similarity is subjective or the parties have a shared history.
iv. Lack of clarity on how family agreements impact trademark rights when conflicts arise between members.
v.
Conclusion:
At the end, this case highlights the key points of trademark in business. Trademark is very important for a business which is the main thing of a business, if any person by known or un knownly same or similarly started a business trademark it will may face many problems. There is many section in trademark cases also there is an named Trademark Act, 1999.
we highlighted some cases in related to trademark which is essentially very important. Also there is some defects of law which we explain accordingly.
NAME- MONISHA KHATUN
BA.LLB. 2ND YEAR
UNIVERSITY OF CALCUTTA
LJD LAW COLLEGE