Delhi District Court
Shri Virinder Chawla vs Ms. Chawla Band on 30 January, 2010
IN THE COURT OF SHRI HARISH DUDANI,
ADDITIONAL DISTRICT JUDGE-15 (CENTRAL) : DELHI
Suit No.201/08/06
Shri Virinder Chawla,
Sole Proprietor,
M/s Chawla Band,
WZ-5, Titarpur,
New Delhi -110027 ............Plaintiff
Versus
Ms. Chawla Band,
11/138, Sangeeta Road,
Shahganj,
Agra (U.P.)
Through its sole proprietor Shri Prem Nath ..........Defendant
Date of Institution : 06.07.2006
Date of Decision : 30.01.2010
JUDGEMENT
1. This is a suit for permanent injunction, passing off, rendition of accounts and for cost of the suit filed by the plaintiff.
2. The plaintiff has filed the abovenoted suit stating therein that the plaintiff is engaged in the business of providing services of band, musical instruments for entertainment and cultural activities since the year 1973 through his predecessor/father Late Shri H. S. Chawla under the name/trade mark/service mark M/s CHAWLA BAND. The said trade mark/service mark was adopted by Shri H. S. Chawla from his surname.
Suit No. 201/08 - Virender Chawla Vs. Chawla Band 1 The trade mark/service mark CHAWLA BAND was continuously used by father of the plaintiff till the time of his death and immediately after his death the plaintiff inherited the said business left by his father and continued to use the said trade mark/service mark CHAWLA BAND and the plaintiff has been using the same till date without any interruption or objection from any quarter. The plaintiff claims to be the proprietor of the aforesaid trade mark/service mark because of prior and senior adoption coupled with extensive user and extensive advertisement. Due to long, continuous, extensive and exclusive user on the part of the plaintiff for the last more than33 years, service mark CHAWLA BAND has earned a unique goodwill and reputation amongst public at large and the same is exclusively associated with the name of the plaintiff. The plaintiff is regularly spending huge amount on advertisement and publicity of his business through different medias of advertisement. The application of the plaintiff for registration of aforesaid trade mark/service mark is pending registration under no. 01149039 and under no. 01312708 in class 15 and 41 respectively and the registration certificates are expected shortly. The use of the trade mark CHAWLA BAND or any similar or deceptively similar trade mark/service mark without the consent and permission of the plaintiff shall cause confusion and deception amongst the trade and public and shall amount to unfair trade practice.
Suit No. 201/08 - Virender Chawla Vs. Chawla Band 2
3. It is stated in the plaint that defendant claims himself to be manufacturer and merchant of musical instruments including mechanical instruments, electronic instruments and other purpose of sound and providing services thereof and has obtained registration as well in respect of the said trade mark CHAWLA BAND in class 15 under no. 1106729 claiming use since 01.01.2000. The plaintiff has already filed rectification proceedings before the appropriate authority for cancellation/rectification/removal of aforesaid registered trade mark CHAWALA BAND in favour of the defendant. The defendant has also filed opposition under no. 203051 to the application filed by the plaintiff under no. 1312708 in class 41. The defendant has fraudulently obtained registration certificate in respect of trade mark CHAWALA BAND in class 15 although defendant was fully aware of prior adoption, prior and exclusive use coupled with registration of trade mark CHAWLA BAND with the name of the plaintiff. The defendant has never been using the trade mark CHAWALA BAND since the date of 01.01.2000 as claimed in the application for registration and the defendant has only recently started using the trade mark/service mark/trade name CHAWALA BAND. Defendant has been using the trade mark CHAWLA BAND exclusively belonging to the plaintiff and the defendant has not been using his registered trade mark. The illegal use of trade mark/service mark CHAWALA BAND on the part of defendant is likely to cause confusion and deception amongst the public at large and shall force them to believe as if the defendant is sister Suit No. 201/08 - Virender Chawla Vs. Chawla Band 3 concern of the plaintiff. The defendant has malafidely adopted the trade mark/service mark CHAWALA BAND and started their illegal activity within the territorial jurisdiction of Agra and the defendant has recently even encroached upon the business place of plaintiff i.e. Delhi. The plaintiff came across business activities of defendant on 07.06.2006 and plaintiff came to know that defendant has rendered his band playing services at Chhatarpur Mandir, Delhi. The plaintiff has estimation that the defendant must have earned about Rs.5.00 lacs by now because of his illegal activities run under the trade mark/service mark CHAWLA BAND. It is stated that cause of action for filing the present suit arose within the territorial jurisdiction of this Court as the band playing business/services under the infringing trade mark/service mark are continuously being run by the defendant within the territorial jurisdiction of this Court. It is prayed that a decree for permanent injunction be passed thereby restraining the defendant, their proprietors/partners and all other persons acting on their behalf from using the trade mark CHAWALA/CHAWLA BAND or any other similar/deceptively similar trade mark which may amount to passing off their services as that of the plaintiff and for order of destruction of all blocks, dies, labels, cartons, stationery, stickers, advertisement material, sign-boards, neon- signs/lights etc. bearing the complained off trade mark CHAWALA/CHAWLA BAND. It is also prayed that an order for rendition of account of the profits illegally earned by the defendant by illegal use of the trade mark/trade Suit No. 201/08 - Virender Chawla Vs. Chawla Band 4 name/service mark CHAWALA/CHAWLA BAND be passed alongwith the cost of the suit.
4. The defendant has filed written statement and has contested the suit. In the written statement, the defendant has taken objections that this Court has no territorial jurisdiction to entertain and adjudicate upon the present suit as the defendant is not carrying on any business activity within the territorial jurisdiction of this Court and no cause of action has arisen within the territorial jurisdiction of this Court as the defendant is actually and voluntarily carrying on business and personally works for gain in Agra within the State of Uttar Pradesh. The services of the defendant are not available within the jurisdiction of this Court. The defendant is not carrying on any advertising or marketing activities within the jurisdiction of this Court. It is denied that the plaintiff is engaged in providing services relating to band, musical instruments for entertainment and cultural activities since the year 1973 through his predecessor/father Late Shri H. S. Chawla under the name/trade mark/service mark M/s CHAWLA BAND. It is denied that the said trade mark/service mark was adopted by Shri H. S. Chawla, as alleged. It is also denied that business of plaintiff was started by his father in the year 1973. It is stated that the word CHAWLA as well as BAND are common surname and English word respectively and the plaintiff cannot claim any monopoly on any of the two words or any combination thereof. It is also denied that alleged trade mark/service Suit No. 201/08 - Virender Chawla Vs. Chawla Band 5 mark CHAWLA BAND was continuously used by the father of the plaintiff till the time of his death or thereafter the plaintiff continued to use the aforesaid trade mark/service mark without interruption and objection. It is also denied that the plaintiff is the proprietor of the alleged trade mark/service mark because of prior and senior adoption coupled with extensive user and extensive advertisement. It is stated that it is the defendant who is the prior and senior adopter of the trade mark CHAWALA BAND and the defendant has also invested hugely in marketing and advertising his trade mark and his trade mark is even now registered under the statute. It is denied that alleged mark CHAWLA BAND has earned a unique goodwill and reputation among the public at large and that the such trade mark/service mark is exclusively associated with the name of the plaintiff alone. It is stated that the plaintiff cannot claim monopoly to the use of a common surname CHAWLA, the common English name BAND and their combination i.e. to say CHAWLA BAND. It is denied that the defendant has fraudulently got registration certificate in respect of trade mark CHAWALA BAND in class 15. The registration of the mark of the defendant is valid and is subsisting and there is no concealment on the part of the defendant in obtaining the said registration. It is stated that the plaintiff is the subsequent, and not prior adopter of the trade mark CHAWLA BAND. It is denied that use of the trade mark/service mark CHAWALA BAND on the part of the defendant has caused or is likely to cause confusion Suit No. 201/08 - Virender Chawla Vs. Chawla Band 6 amongst the public at large and it shall force them into a belief as if the defendant is a sister concern of the plaintiff. It is stated that the defendant's predecessor-in-title insofar as his registered trade mark CHAWALA BAND is concerned, was late Shri Ram Kishan Chawla who was the sole proprietor of CHAWALA BAND which was adopted by him in the year 1969. Shri Ram Kishan Chawla died on 20.02.1986 and after him, his son Shri Manmohan Chawla has been carrying on the business/providing services under the trade mark/name CHAWALA BAND upto 28.12.1999. Subsequent thereto, by an Assignment Deed dated 29.12.1999, the predecessor-in-title Shri Manmohan Chawala assigned the said trade mark/name CHAWALA BAND to defendant and the defendant is the registered proprietor of the trade mark/name CHAWALA BAND under no. 1106729 in class 15 from 24.05.2002 and his registration is valid and subsisting in law. The alphabet 'A' has been added to the word CHAWALA after the alphabet 'W' occurring therein to make the mark innovative and unique and thus the defendant is now absolute owner of the registered trade mark CHAWALA BAND. The defendant renders excellent quality of services and has earned great reputation in the market and in fact his mark has become household name. The publicity material would clearly show that the defendant prominently mentions that he is CHAWALA BAND of Agra and as per his own admission, the plaintiff is only based in Delhi and, thus, no case of passing off is made out and the suit is liable to be Suit No. 201/08 - Virender Chawla Vs. Chawla Band 7 dismissed.
5. The plaintiff has filed replication to the written statement of defendant. In the replication, the plaintiff has reiterated the contents of plaint and has controverted the allegations of the defendant as alleged in the written statement. It is denied that the defendant is the prior user of the trade mark. It is also denied that trade mark/name CHAWALA BAND has acquired any distinctiveness in respect of the goods and services and that the said trade mark is associated with the defendant.
6. From the pleadings of the parties, following issues were framed by my ld. Predecessor on 22.12.2007:-
1. Whether the plaintiff is the proprietor of trademark/service mark Chawla Band and, if so, to what effect?
2. Whether the defendant is passing of aforesaid trade mark "Chawla Band" as pleaded by the plaintiff?
3. What is the effect of the defendant having a registered trademark under the name and style of "Chawala Band" for which cancellation proceedings have been taken up by the plaintiff.
4. Relief.
Suit No. 201/08 - Virender Chawla Vs. Chawla Band 8
7. To prove his case, the plaintiff examined himself as PW-1 and PE was closed on 23.09.2008.
8. In order to prove its defence, defendant examined Shri Prem Nath, Sole Proprietor of M/s CHAWALA BAND, 11/138, Sangeeta Road, Shahganj, U.P. as DW-1, Shri Onkar Singh/DW-2 and Shri Ram Chand Goswami/DW-3 in order to prove that Deed of Assignment dated 29.12.1999 executed between Shri Manmohan Chawla and Shri Prem Nath was executed in their presence and Shri Manmohan Chawla as DW-4. DE was closed on 16.12.2009.
9. I have heard the ld. Counsel for parties and carefully perused the record. My findings on the specific issues are as under :-
10. Issue Nos. 1 & 2Since both these issues involve common discussion of facts and law, hence, for the sake of brevity both these issues are being taken up together.
The case of the plaintiff is that Shri H.S. Chawla, father of the plaintiff has been carrying on the business under the trade mark/service mark CHAWLA BAND since the year 1973 and after his death the plaintiff continued to carry on the said business under the said trade mark and the plaintiff came to know that defendant has been carrying business under the trade mark CHAWALA BAND and is registered in Suit No. 201/08 - Virender Chawla Vs. Chawla Band 9 class 15 under no. 1106729 claiming user since 01.01.2000 and the plaintiff has filed rectification proceedings in respect of the registration of said trade mark and the plaintiff has also filed application for registration of his trade mark under no. 01149039 and 01312708 in class 15 and 41 respectively and the defendant has also filed his opposition. The contention of the plaintiff is that he is the proprietor, prior user and adopter of the trade mark CHAWLA BAND and it exclusively belongs to plaintiff.
11. Section 34 of the Trade Marks Act,1999 reads as under :-
"34. Saving for vested rights.- Nothing in this Act shall entitle the proprietor or an registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior -
(a) to the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his; or
(b) to the date of registration of the first-
mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his;
whichever is the earlier, and the Registrar shall not refuse (on such use being proved), to register the Suit No. 201/08 - Virender Chawla Vs. Chawla Band 10 second mentioned trade mark by reason only of the registration of the first mentioned trade mark.
12. Section 35 of Trade Mark Act, 1999 provides that priority of use prevails as compared to registration and it lays down that ordinarily it is the prior user of the trade mark who is the owner of trade mark.
13. In Century Traders Vs. Rohan Lal Duggar & Co. & Others 1978 Delhi 250, reference was made to Consolidated Foods Corporation vs. Brandon and Co. Private Ltd., AIR 1965 Bom 35 wherein it was observed :-
"12. A trader acquires a right of property, in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market. Registration under the statute does not confer any new right to the mark claimed or any greater rights than what already existed at common law and at equity without registration. It does, however, facilitate a remedy which may be enforced and obtained throughout the State and it established the record of facts affecting the Suit No. 201/08 - Virender Chawla Vs. Chawla Band 11 right to the mark. Registration itself does not create a trade mark. The trade mark exists independently of the registration which merely affords further protection under the Statute. Common law rights are left wholly unaffected. Priority in adoption and use of a trade mark is superior to priority in registration. ........................................................................
14. Thus, the law is pretty well settled that in order to succeed at this stage the appellant had to establish user of the aforesaid mark prior in point of time than the impugned user by the respondents. The registration of the said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action for passing off and the mere presence of the mark in the register maintained by the trade mark registry did not prove its user by the persons in whose names the mark was registered and was irrelevant for the purposes of deciding the application for interim injunction unless evidence had been led or was available of user of the registered trademarks.
14. In N. R. Dongre & others. vs. Whirlpool Corporation and others, AIR 1995 Delhi 300, it was held that :
"29. Thus the right created by Section 28(1) Suit No. 201/08 - Virender Chawla Vs. Chawla Band 12 of the Act in favour of a registered proprietor of a trade mark is not an absolute right and is subservient to other provisions of the Act namely Sections 27(2), 33 etc. Neither Section 28 nor any other provision of the Act bars an action for passing off by an anterior user of a trade mark against a registered user of the same. In other words registration of a trade mark does not provide a defence to the proceedings for passing off as under
Section 27(2) of the act a prior user of trade mark can maintain an action for passing off against any subsequent user of an identical trade mark including a registered user thereof. Again this right is not affected by Section 31 of the Act, under which the only presumption that follows from registration of a mark is its prima facie evidentiary value about its validity and nothing more. This presumption is not an unrebuttable one and can be displaced. Besides Section 31 is not immune to the over-riding effect of Section 27 (2)."
"The rights of action under Section 27(2) are not affected by Section 28(3) and Section 30 (1)(d). Therefore, registration of a trade mark under the Act would be irrelevant in an action for passing off. Registration of a trade mark Suit No. 201/08 - Virender Chawla Vs. Chawla Band 13 in fact does not confer any new right on the proprietor thereof than what already existed at common law without registration of the mark. The right of good will and reputation in a trade mark was recognized at common law even before it was subject of statutory law.
Prior to codification of trade mark law there was no provision in India for registration of a trade mark. The right in a trade mark was acquired only by use thereof. This right has not been affected by the Act and is preserved and recognized by Sections 27(2) and 33."
15. In Bimal Govindji Shah vs. Panna Lal Chandu Lal, 1997 PTC (17) it was held that :
9."..............................Thus a conjoint reading of the aforesaid provisions persuaded me to conclude on a reading of the aforesaid provisions conjointly the natural deduction is that the right conferred by Section 28(1) of the Act in favour of a registered proprietor of a trade mark is not an absolute right but is subject to the other provisions of the Act namely -Section 27(2) and 33. It is also to be noted that neither Section 28 nor any other provision of the Act prohibits an action for passing off by an anterior user of a trade mark against a registered user of the same.
Suit No. 201/08 - Virender Chawla Vs. Chawla Band 14 In other words registration of a trade mark does not provide a defence to the proceedings for passing off as provided for under Section 27(2) of the Act. A prior user of a trade mark is entitled to maintain an action against a subsequent user of identical trade mark including registered user thereof.
16. As per aforesaid judgements, it is well settled that registration is irrelevant in case of passing off and a prior user of trade mark is entitled to maintain an action against the subsequent user of identical trade mark including registered user thereof.
17. The contention of ld. Counsel for defendant is that the defendant has acquired the business from Shri Manmohan Chawla and the said business was started by Late Shri Ram Kishan Chawla in the year 1969 under the trade mark CHAWALA BAND and assignment deed in respect of aforesaid business was executed in favour of the defendant on 29.12.1999 and the defendant has been doing his business under the said trade mark and the trade mark of the defendant is registered under no. 1106729 in Class 15 from 24.05.2002 and the trade mark of defendant i.e. CHAWALA BAND is innovative and distinctive and the trade mark in favour of the defendant was registered by the Trade Mark Registry after following the due procedure and registration in favour of the defendant was recorded as there Suit No. 201/08 - Virender Chawla Vs. Chawla Band 15 was no opposition to the same and defendant has been enjoying his trade mark peacefully and the defendant is doing his business in Agra while the plaintiff claims to be doing its business in Delhi only and the trade mark of the plaintiff is not such that it is well known or would have acquired distinctive character.
18. The plaintiff has pleaded that they have been doing the business under the trade mark M/s CHAWLA BAND since the year 1973 and the defendant has pleaded that he has acquired the business from its erstwhile owner on 29.12.1999 although the erstwhile owner was doing the business in the name of CHAWALA BAND in the year 1969 and the trade mark of defendant was registered on 24.05.2002 but the defendant has not placed any document on record to prove that the aforesaid trade mark was being used by predecessor-in-interest of the defendant since the year 1969. The plaintiff has relied on various documents including a certificate issued by Manager, Punjab National Bank, Rajauri Garden dated 18.09.1994 Ex.PW1/2 (collectively) in order to prove that trade mark of the plaintiff i.e. CHAWLA BAND was in existence in the year 1994 also.
19. The plea as raised by the defendant is that he is the honest concurrent user of his trade mark. Ld. Counsel for defendant has relied on decision of our own Hon'ble High Court in Goenka Institute of Education & Research vs. Anjani Kumar Goenka & Anr., 2009(40) PTC 393 (Del) Suit No. 201/08 - Virender Chawla Vs. Chawla Band 16 (DB) in which our Hon'ble High Court held that :
"11. Section 12 of the Trade Mark Act, 1999 (equivalent of Section 13 of the Trade Merchandise Marks Act, 1957) contains the subject matter of honest concurrent use. The same reads as under :-
12.Registration in the case of honest concurrent use, etc. - In the case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trade marks which are identical or similar (whether any such trademark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.
12. There are two parts of the doctrine of honest concurrent use. First part is that the adoption must be honest and the second part is that there is concurrent user of the trade mark with another trade mark. There is however a third salient feature on the applicability of this doctrine and which is that conditions and limitations can be imposed by the Registrar of Trade Marks while allowing registration of one or more trade mark which are identical or similar Suit No. 201/08 - Virender Chawla Vs. Chawla Band 17 in case there is found a case of honest concurrent user. This third part will also, as will be seen be an important aspect while issuing directions for disposing off the appeal."
20. The contention of ld. Counsel for defendant is that the defendant has been doing his business in Agra (UP) and the business of the plaintiff is confined to Delhi and moreover there was honest intention on the part of the defendant and that is the reason he got his trade mark registered after following the due procedure and even defendant had issued appropriate caution notice against user of his trade mark and the defendant has not committed any activity prejudicial to the business interest of the plaintiff. The contention of the ld. Counsel for defendant is that the business of the plaintiff was not such that the trade mark as claimed by the plaintiff would have acquired distinctive character so that people would have known the plaintiff by trade mark of the plaintiff in any part of the country that it is the CHAWLA BAND of Delhi.
21. The plaintiff appeared in witness box as PW-1 and he adduced evidence by way of affidavit Ex.PA. In para 16 of the plaint, the plaintiff has stated that the defendant has recently encroached upon business place of the plaintiff i.e. at Delhi. Hence, by mentioning so in para 16 of the plaint, the plaintiff has claimed his business place as Delhi. However, in para 6 of the affidavit Ex.PA, the plaintiff has Suit No. 201/08 - Virender Chawla Vs. Chawla Band 18 mentioned that business activities of the plaintiff are being carried out not only at Delhi but in all the nearby and adjoining cities, districts and states including the States of Haryana, Punjab, Uttar Pradesh and Uttaranchal. However, in cross-examination, PW-1 stated that he has not filed any document to show that he has ever done business in Punjab and Uttaranchal. PW-1 stated that he does not have any office outside Delhi. The plaintiff has not adduced any evidence in order to prove that he was carrying on business in any other part of the country except Delhi. The plaintiff has not filed any publicity material which was publicized/circulated by the plaintiff outside Delhi in order to prove that the plaintiff was advertising his activities outside Delhi also in order to prove that the trade mark of the plaintiff was being publicized /propagated in other parts of the country. The defendant has claimed that he has been confining his activities to Agra and in para 18 of the affidavit Ex.DW1/A, the defendant has mentioned that the publicity material would clearly show that the defendant prominently mentions that it is the CHAWALA BAND of Agra and no case of passing off is made out. In order to prove that the defendant committed business activities in Delhi also, the plaintiff has relied upon one bill Ex.PW1/D1 which the plaintiff claims to have been issued by the representative of the defendant. The plaintiff has relied on Ex.PW1/D1 as the bill of the defendant and one of the note in the said document i.e. Ex.PW1/D1 is that "They have no other branch" which means that even if it is taken that Ex.PW1/D1 Suit No. 201/08 - Virender Chawla Vs. Chawla Band 19 has been issued by the defendant, the defendant is not claiming himself as any branch or office of the CHAWLA BAND of Delhi (plaintiff) or that they are carrying on any business activity of CHAWLA BAND of Delhi (plaintiff). The plaintiff has not adduced any evidence to show that they have done business in Agra under the trade mark CHAWLA BAND and that there was confusion in the mind of people that the defendant is carrying on the business in the city of Agra being in any manner associated with CHAWLA BAND of Delhi (plaintiff). In view of the evidence adduced on record, it cannot be said that the trade mark of the plaintiff had acquired such distinctive character in the entire country that the moment somebody talks of CHAWLA BAND, then it is the band of the plaintiff which will come in the mind of the public and no other band. It is also to be noted that the trade mark of the defendant is registered vide no. 1106729 dated 24.05.2002 and the certificate to this effect is Ex.DW1/3.
22. The defendant has relied upon one caution notice which was published by the defendant in the newspaper Amar Ujala dated 08.05.2005 and the same is Ex.DW1/1. In order to prove that by doing this act, the defendant advertised his trade mark in Delhi, ld. counsel for plaintiff put question to DW1 in the cross-examination to the effect that said paper Amar Ujala is also circulated in Delhi and on that account public in Delhi would also come to know about the trade mark of the defendant . If this contention of the plaintiff is furthered then if the said newspaper Amar Ujala circulated in Suit No. 201/08 - Virender Chawla Vs. Chawla Band 20 Delhi in which caution notice of the defendant was published, in that case it was open for the plaintiff to have filed appropriate suit immediately when they came to know about the existence of trade mark of defendant by way of said publication in the year 2005. However, the plaintiff did not resort to the said action and the plaintiff has filed the present suit in July, 2006. The plaintiff has not examined any other witness in order to prove that on seeing the advertisement of defendant he was misled in believing that the defendant is carrying on the business under the trade mark which belongs to the plaintiff. In view of aforesaid discussion, the defendant is entitled to the benefit of doctrine of honest concurrent user for use of the trade mark CHAWALA BAND.
23. The contention of ld. counsel for defendant is that the plaintiff is claiming himself to be the proprietor of trade mark CHAWLA BAND and CHAWLA is a common surname and being a common surname, the plaintiff cannot claim his proprietorship over the said trade mark. Ld. counsel for plaintiff has contended that even the defendant has also registered his trade mark in the name of the same community i.e CHWALA and even if the defendant states that they have added one alphabet 'A' by making it CHAWLA but it is still pronounced as CHAWLA only and it conveys that it is a surname only. In Goenka Institute of Education & Research (supra), our Hon'ble High Court observed as :
Suit No. 201/08 - Virender Chawla Vs. Chawla Band 21 "22. Lack of distinctiveness of a common surname 'Goenka' and the issues of publici juris. The learned counsel for the appellant has placed strong reliance on the provision of Section 9 of the repealed Trade and Merchandise Marks Act, 1957 and more particularly sub-section1(d) and sub-
section2 and also the provisions of Section9 of the new Trademarks Act, 1999 to contend that a common surname such as 'Goenka' is devoid of distinctive character and to achieve distinctiveness in such a common surname,should not be easily accepted, he has relied upon in this regard, on the commentary of Law of Trade Marks and passing off by P. Narayanan,Sixth Edition (2004) and para 8.20 thereof which reads as under :-
"8.20 Surnames are commonly used as trade marks. Although it is not specifically mentioned in the definition of mark, the word name would include surname and personal name.
A mere surname of an individual, though it may be adapted to distinguish or capable of distinguishing the goods or services of all persons,taken collectively, who bear the surname from those of other persons bearing a different surname, is not adapted to distinguish or capable of distinguishing the goods or services of one person from those of another having the same surname. Every trader has a right to trade in his own name and ought not Suit No. 201/08 - Virender Chawla Vs. Chawla Band 22 to be hampered in its use. One has therefore to consider the interests of other persons having the same surname who might at any time carry on trade in the same goods or services. A surname therefore is considered prima facie not adapted to distinguish nor capable of distinguishing. For the same reason a personal name or the name of a caste, sect or tribe is also considered having the same built-in disability. Common abbreviations of surname, or personal name is to be considered on the same footing as a surname or a personal name.
(ii) The counsel for the appellant also relied upon the following passage in the Law of Trade Marks and Passing off by Dr. S. Venkateshwaran (Fourth Edition (1999 Reprint) for the same purpose :
"Surname according to ordinary signification.--The word "according to ordinary signification" qualify the words surname, personal names, etc. A word which according to its ordinary signification is a surname, is excluded under clause (d). "The right to the surname that a man uses", said Neville,J., "is shared with every other person who has the same name, and, consequently, he has got about as much monopoly in it as he has in the air that he breathes; he has to share it in common with all this fellow-citizens."
Suit No. 201/08 - Virender Chawla Vs. Chawla Band 23
24. In Goenka Institute of Education & Research (supra), our Hon'ble High Court referred to decisions in Mahendra and Mahendra Paper Mills Ltd. vs. Mahindra and Mahindra Limited, 2002 (2) SCC 147, Montari Overseas Ltd. vs. Montari Industries, 1996 PTC (16) 142 (Del), Dr. Reddy's Laboratories Ltd. vs. Reddy Pharmaceuticals Ltd., 2004 (29) PTC 435 (Del), Bajaj Electrical Limited, Bombay vs. Metals & Allied Products, Bombay and Anr., AIR 1988 Bombay 167 and Kirloskar Diesal Recon Pvt. Ltd. and Another vs. Kirloskar Proprietary Ltd. and Others, AIR 1996 Bombay 149 and held as :
"We may incidentally state that the aforesaid ratio of Division Bench judgment of this court in the Montari case answers one of the contentions raised by the counsel for the appellant that the appellant is entitled to use the name 'Goenka' by virtue of Section 35 of the Trademark Act, 1999. Clearly, the arguments of learned counsel for the appellant are not well founded because the defence under Section 35 will only apply to a full name and that also by a natural person and not by a legal entity which can choose a separate name. Also, once distinctiveness is achieved or secondary meaning acquired with respect to a surname, then, another person cannot use that surname for an artificial person or entity. The appellant, therefore, only on the strength of Section Suit No. 201/08 - Virender Chawla Vs. Chawla Band 24 35 cannot successfully contend that it is entitled as of right to use the name 'Goenka' merely because it happens to be the surname of its original and present trustees."
25. The contention of ld. Counsel for defendant is that although the plaintiff is using the common surname i.e CHAWLA under the trade mark but it has not acquired distinctive or secondary meaning so as to qualify to be taken as an established trade mark and there is no question of any passing off by the defendant in this regard. In Goenka Institute of Education & Research (supra), our Hon'ble High Court laid down tests for passing off as :
(1) a misrepresentation,
(2) made by a trader in the course of trade,
(3) to prospective customers of his or ultimate consumers
of goods or services supplied by him,
(4) which is calculated to injure the business or goodwill of
another trader (in the sense that this is a reasonably foreseeable consequence), and (5) which causes actual damage to a business or goodwill of the trade by whom the action is brought or (in a quia timet action) will probably do so."
26. Hence, as per the aforesaid tests, the plaintiff was required to prove that the defendant made a mis-representation to injure the business or goodwill of the trade of the plaintiff. In aforesaid discussions, it has been held that the plaintiff has Suit No. 201/08 - Virender Chawla Vs. Chawla Band 25 failed to prove that his trade mark had acquired such a distinctive character that on seeing the trade mark by the name of M/s CHAWLA BAND, people will think only of the band of the plaintiff i.e. CHAWLA BAND of Delhi and no other band. The plaintiff has also failed to prove that the use of trade mark CHAWALA BAND by the defendant had caused confusion in the mind of any person that they are carrying on the business of the plaintiff and in any manner are connected with the business of the plaintiff. The plaintiff has failed to satisfy the test of passing off in terms of aforesaid judgment in Goenka Institute of Education & Research (supra).
27. The contention of ld. counsel for plaintiff is that the plaintiff has been doing the business under the trademark CHAWLA BAND since the year 1973 and any business activity by the defendant under any deceptively similar trade mark would lead to creating confusion in the mind of the public and as per the law of trade marks the same is meant to protect the public also from any kind of deception. The contention of the plaintiff is that the trade mark of the plaintiff is to be protected in order to prevent any confusion or deception being caused in the mind of ordinary person. In order to prove that the plaintiff has been doing business over a long period of time, the plaintiff has relied on Ex.PW1/2 (collectively) which are the bills issued by the plaintiff and perusal of the said bills show that in number of those bills which are dated 27.09.1992, 28.09.1992, 28.04.1993, Suit No. 201/08 - Virender Chawla Vs. Chawla Band 26 08.11.1993, 05.09.1995, 05.05.1998, 09.12.2000, 04.02.2004 and 05.08.2003, the plaintiff has used alphabet ® above his trade mark CHAWLA BAND which signifies that the trade mark of the plaintiff is registered. However, the plaintiff has not placed any document on record in order to prove that the trade mark of the plaintiff is registered. The plaintiff has not explained that if his trade mark was not registered then why the plaintiff was using alphabet ® with his trade name in order create impression that his trade name is registered. On one hand, the ld. counsel for plaintiff has contended that the trade mark of the plaintiff needs to be protected on account of its long user in order to prevent any deception in mind of ordinary person but on the other hand, the plaintiff himself is misrepresenting that his trade mark is registered and at the same time is trying to take benefit by creating impression in the mind of other traders in the same trade that the trade mark of the plaintiff is registered so that they are deterred from using the said trade mark. The plaintiff has by this act thereby tried to eliminate any competition to its trade mark in order to monopolise the same and at the same time to create impression in the mind of the public that they are the only CHAWLA BAND who is a registered trade mark. In order to prove that the plaintiff has been carrying on business for a period of time, the plaintiff has relied upon the said documents Ex.PW1/2 (Collectively) and the plaintiff cannot escape from the consequences of the said documents. By representing in the documents Ex.PW1/2 (Collectively) that Suit No. 201/08 - Virender Chawla Vs. Chawla Band 27 the trade mark of the plaintiff is registered, the plaintiff has committed an offence punishable u/s 107 of Trade Marks Act, 1999. Now the question is that the plaintiff who himself misrepresents that they are the holder of registered trade mark and advertise the said trade mark as the registered trade mark and carry on the business under the said trade mark can claim to injunct any person who is carrying on the business under the honest belief that he is the registered trade mark holder and can carry on the business to the exclusion of others for the same trade. Section 41 (i) of the Specific Relief Act, 1963 provides that an injunction cannot be granted when the conduct of the plaintiff or its agent has been such so as to disentitle him of the assistance of the Court. Any injunction in favour of the plaintiff whereby he himself represented his trade mark to be registered would amount to condoning the acts of the plaintiff which is otherwise an offence punishable u/s 107 of the Trade Mark Act, 1999 and will allow plaintiff to take benefit of his own wrong. The conduct of the plaintiff is such which disentitles him to the assistance of the Court. Both these issues stand answered accordingly.
28. Issue No. 3In para 11 of the plaint, the plaintiff has stated that defendant has obtained registration in respect of his trade mark CHAWALA BAND in class 15 under no. 1106729 claiming use since 01.01.2000 and the plaintiff has also filed the rectification proceedings before the appropriate Suit No. 201/08 - Virender Chawla Vs. Chawla Band 28 authorities and the defendant has also filed opposition to the application for registration of trade mark CHAWALA BAND filed by the plaintiff. In findings on issue no. 1 & 2 above, it has been held that the plaintiff has misrepresented by propagating/publicizing that his trade mark is registered although the same is not registered and by the said act the plaintiff has created impression that its trade mark is registered, the plaintiff cannot be allowed to take advantage of his own wrong. However, the trade mark of the defendant is registered and admittedly rectification proceedings are already pending in respect of the same. In the circumstances, the defendant shall be able to carry on his business subject to the outcome of the rectification proceedings. This issue stands answered accordingly.
29. Issue No. 4 (Relief) In findings of Issue nos. 1 & 2 above, it has been held that in view of Section 41(i) of the Specific Relief Act, 1963, the conduct of the plaintiff is such so as to disentitle him the assistance of the Court. Accordingly, the plaintiff is not entitled to the reliefs, as claimed. The suit of the plaintiff is dismissed. Parties are left to bear their own costs. Decree sheet be prepared accordingly. File be consigned to Record Room.
(Announced in the open Court
on 30th January, 2010 (HARISH DUDANI)
ADDL. DISTRICT JUDGE-15
(CENTRAL) : DELHI
Suit No. 201/08 - Virender Chawla Vs. Chawla Band 29