Lakshmi Gold Khazaanaa ..vs.. B.Kishore Jain
S. Appeal Nos.416 to 418 of 2008
The use of the respondent’s trademark by the appellant after prefixing two words before the trademark cannot award any distinctiveness and phonetic similarity exists and amounts to passing off over the goodwill of the respondent.
Honourable R.SUBBIAH, J.
- All the Appeals are preferred, challenging the legality of a common order dated 30.06.2008 passed by a learned single Judge of this Court in Original Application Nos.447 to 449 of 2008 respectively in C.S.No.417 of 2008, whereby the applications filed by the plaintiff were allowed.
- The plaintiff filed the said suit for permanent injunction, damages and also for a preliminary decree. Pending suit, the plaintiff filed O.A.Nos.447 to 449 of 2008 for interim injunction, restraining the defendant and his men from in any manner infringing their registered trade mark KHAZANA under No.544884 in Class 14 by use of Lakshmi Gold KHAZAANAA as a trade mark and/or as part of trade name/trading style or by use of any other trade mark/trade name containing the word KHAZANA or any word similar thereto or in any other manner whatsoever; for interim injunction restraining the defendant and his men from in any manner infringing their domain name www.khazanajewellery.com by use of identical and deceptively similar domain name www.lgkhazaanaa.com or any other domain name containing the word KHAZAANAA or any word similar thereto; and also passing off or enabling others to pass off the defendant’s goods, business, services, jewellery etc., by use of trade mark and/or trade name/ trading style LAKSHMI GOLD KHAZAANAA and domain name www.lgkhazaanaa.com which is deceptively similar to plaintiff’s well established trade mark/trade name KHAZANA Jewellery and domain name www.khazana jewellery.com or in any manner whatsoever.
- All the applications came to be filed under the following facts and circumstances;
The plaintiff/respondent herein is carrying on business of manufacturing and selling jewellery, made of gold, silver and other precious stones. The respondent was carrying on the business under the name M/s.Khazana Jewellery from 14.04.1989. The respondent was having branches in Tamil Nadu, Andhra Pradesh and Kerala. The respondent is the registered proprietor of the trade mark KHAZANA in class 14 under No.544884 dated 7th April 1991. The respondent’s trade mark has acquired tremendous reputation and goodwill in the jewellery market. The said trade mark is not only forms a predominant feature of their corporate name, but also forms a predominant feature of their domain name www.khazanajewellery.com. The respondent had spent huge amount for advertisement in newspapers, magazines and also in television channels. The respondent has also put up several hoarding, signboards and banners across the City of Chennai with the trademark and domain name. The respondent has sold jewellery worth several crores of rupees and the sales turnover has been increasing year by year. The customers of the respondent also spread the reputation by word of mouth to their friends, relatives and acquaintance across the country bringing in new clientele.
4. While so, the respondent came to know that the defendant/appellant herein has started a jewellery business in Bangalore under the name of ‘Lakshmi Gold Khazaanaa’. Since the adoption of the same name by the defendant for the same product, amounted to infringement of the proprietary rights of the plaintiff over their registered trade mark, namely, KHAZANA, the appellant has filed the applications for the reliefs mentioned supra.
5. In the said applications, the appellant had filed a counter and contended that the word KHAZANA is derived from Sanskrit and Urdu origin. KHAZANA means ‘Treasury’ and nobody can claim any exclusive right in the trademark. Hence, the alleged registration certificate issued by the Government of India under the Trade Marks Act does not give any trademark or right in the trade name KHAZANA to the respondent. The various receipts and invoices produced by the respondent reveal that they are different in angle, having different design and emblem. Not even a single customer will get confusion or get deceived by the mere word KHAZANA and even though the customers in Bangalore will be able to choose between the two shops with two different names and not even a single complaint in this regard has been lodged. The defendant’s business has a distinctive trade name and even Lakshmi Gold Khazaana has definite different style of letters in mark with specific design in the letters L G K in the emblem and there is no scope for any confusion in the minds of the customers. There is absolutely no similarity and scope of any trade name to be deceptively similar to the trade name of the respondent. The respondent has no prima facie case and is not entitled any relief sought for.
6. The learned single Judge, after duly hearing the parties, negatived the case of the appellant/defendant and granted interim injunction in favour of the plaintiff. Aggrieved over the same, the present appeals are brought forth by the defendant.
7. Advancing the arguments on behalf of the appellant, the learned counsel would submit that the word KHAZANA is a general name and nobody can claim exclusive right. In this regard, he invited the attention of this Court to the advertisement made by the respondent in Yellow Pages of the Telephone Directory and demonstrated that what was registered by the respondent is only a particular style, with the letters of particular design and, as such, he cannot claim any proprietary right over the word KHAZANA. Learned counsel further submitted that the appellant is using the word KHAZAANAA differently along with their business name Lakshmi Gold. Therefore, the business name of the appellant, namely, KHAZAANAA and the business name of the respondent, namely, KHAZANA cannot be held to be deceptively similar. Moreover, it is the only name of their jewellery business and they are selling the goods by affixing the name of KHAZAANA and are neither producing nor manufacturing the goods in the name of KHAZANA. But they are only selling the jewels by having the name of the shop Lakshmi Gold Khazaana. Further, under Section 9(a) of the Trade Marks Act, if the trade mark is devoid of any distinctive character and not capable of distinguishing the goods or service of one person from those of another person, then registration can be refused. When that being so, it has to be construed, what was registered by the respondent is only a particular pattern of using the word KHAZANA and not exclusive right over the word KHAZANA, which is a general name. Thus, the learned counsel contended that the respondent has not made out any prima facie case, warranting the Court to grant interim injunction in favour of the respondent. Under such circumstances, the order of interim injunction granted by the learned single Judge has got to be set aside. In support of his contentions, he has also placed reliance upon judgments reported in A.G.S.L.Assurance Co., ..vs.. N.A.Insurance co. (AIR 1939 Madras 555), Victory Transport Co.Pvt.Ltd., ..vs.. District Judge, Ghaziabad (AIR 1981 Allahabad 421) and Essco Sanitations ..vs.. Mascot Industries (AIR 1982 Delhi 308).
8. Per contra, the learned counsel for the respondent/ plaintiff contended that the respondent has been doing the business right from 1989 under the name of KHAZANA and they are the prior user of the said word. The respondent is the registered proprietor of the trademark KHAZANA vide class 14 under No.544884 dated 07.04.1991. By using the word KHAZANA from 1989, they had acquiesced in the use of the registered trade mark, viz., KHAZANA. Under such circumstances, the contention of the appellant that the word KHAZANA is only a general name, has no merit.
9. In this regard, the learned counsel for the respondent relied upon a judgment of this court reported in B.Kishore Jain .v.s.. Navaratna Khazana Jewellers, rep.by its partner Mr.Naresh Jain, Kakinada ((2007) 4 MLJ 1022). The respondent has spent crores of rupees in advertisement for their business. Hence, the usage of the word KHAZANA in whatever manner by the appellant, definitely would cause prejudice to the business of the respondent and therefore, the impugned order has got to be sustained.
10. This Court has paid anxious consideration on the submissions made by the learned counsel on either side.
11. On a perusal of the materials placed before us, it could be seen that the respondent has been doing the business under the name of KHAZANA for the past 20 years. They have also spent huge amount in advertising the name of KHAZANA in various medias, whereas the appellant is carrying on the business under the name of Lakshmi Gold KHAZAANA only from September, 2007. Hence, it is no doubt; the prior user is the respondent/plaintiff. Though a submission made by the learned counsel for the appellant that the word KHAZANA is only a general name and it would not create any confusion in the minds of the customers and the respondent cannot claim any proprietary right over the trade name KHAZANA, this Court cannot ignore the fact that the respondent has been using the word KHAZANA for the past 20 years. By the long usage, they have acquiesced in the trade name KHAZANA.
12. Further, it is not difficult to infer from the facts and circumstances of the case that due to the long usage of the name KHAZANA and on account of the publicity made by the respondent through various medias under their registered trade name, definitely they would have created an impression in the minds of the customers about their business. Under such circumstances, the contention put forwarded by the learned counsel for the appellant that what was registered by the respondent is only a particular pattern of designing of letters, cannot be accepted. Therefore, we are not inclined to accept the submission made by the learned counsel for the appellant, quoting Section 9(a) of the Trade Marks act. Yet another submission made by the learned counsel for the appellant that they have been using the word KHAZAANAA prefixing the name Lakshmi Gold, there cannot be any phonetic similarity in between the two words, cannot also be accepted since whether the customers can distinct the similarity found in these two words cannot be looked into or considered at this stage. Though the decisions relied upon by the appellant in support of his argument that the trade name of the respondent is only a mere descriptive word of common use and it would not mislead the customers by reason of similarity of the two trade names, we are of the opinion that the arguments advanced by the learned counsel for the appellant based on the decisions could be gone into only after the evidence is adduced. So far as these applications are concerned, we are of the considered opinion that the totality of the evidence placed by the respondent/plaintiff before the Court prima facie makes out a case, supporting the plea of the plaintiff that the appellant/defendant is deceptively passing off goods-namely jewelleries or attempting or likely to attempt to pass off such goods as similar to that of plaintiffs/respondents registered trade mark, which actions or state of affairs if allowed to continue at this stage, will tantamount to an action for infringement of Trade Mark, especially in the circumstance, when not only the respondent has already acquired the proprietary rights by long usage of the word KHAZANA, but also when the balance of convenience is in favour of the respondent in obtaining injunction pending suit. Under such circumstances, the appeals have got to be dismissed since they do not carry any merit.
Accordingly, all the appeals are dismissed. No costs. Connected M.Ps.are closed.