Delhi High Court
Sunil Mittal & Anr vs Darzi On Call on 19 April, 2017
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 19th April, 2017.
+ CS(COMM) 1381/2016
SUNIL MITTAL & ANR ..... Plaintiffs
Through: Mr. D.K. Yadav & Mr. Sudhir Balyan,
Advs.
Versus
DARZI ON CALL ..... Defendant
Through: Mr. J. Sai Deepak, Mr. Mohit Goel,
Mr. Sidhant Goel, Mr. Bhardwaj
Jaishankar, Ms. Pragya Mishra & Mr.
Ashutosh Nagar, Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
IA No.12449/2016 (of plaintiffs u/O XXXIX R-1&2 CPC) & IA
No.15269/2016 (of defendant u/O XXXIX R-4 CPC)
1. The plaintiffs Mr. Sunil Mittal and Darzi (India) LLP claiming to be
registered proprietor of the label mark
/
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in respect of textile cloth included in Class 24 (of IV Schedule of Trade
Marks Rules, 2002) have sued the defendant M/s Darzi on Call (a
partnership of Md. Ali Reza, Ms. Nazia Nabi and Sh. Avinash Kumar) for
injunction restraining the defendant from using the word „DARZI‟ or any
other word, mark, label identical with or deceptively similar to the word /
mark „DARZI‟ amounting to infringement of plaintiffs‟ trademark and
passing off its services as those of the plaintiffs‟ and for ancillary reliefs,
pleading:
(i) that the plaintiffs founded the business concern "THE DARZI"
in the year 1981 to provide the finest quality of bespoke tailoring and
made to measure to clients;
(ii) that the plaintiffs honestly and bona fidely conceived and
adopted the trademark / label and trade name "THE DARZI" in
respect of providing the services of tailoring and draping as well as
relating to the trade and business of selling and marketing of all kinds
of clothing and wearing apparels, textile clothes, readymade garments;
(iii) that to acquire rights, the plaintiffs filed Trade Mark (TM)
Application No.1024154 in Class 24;
(iv) that subsequently several other applications in different classes
have been filed and the same are pending registration;
(v) that the plaintiffs have been using the trademark / trade name /
label "THE DARZI" continuously since the adoption till the present
time;
(vi) that artistic work, placement of words, get up and make up of
trademark / label are unique and the plaintiffs are the owners and
proprietor in the artistic features in the trade name / trademark / label
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"THE DARZI" and the artistic work involved in the trade name /
trademark / label "THE DARZI" is registered under the Copyright
Act, 1957; hence, the plaintiffs are the registered proprietor of the
copyright involved in the artistic work of the trade name / trademark /
label "THE DARZI";
(vii) that the defendant claims to be engaged in the same nature of
goods / services as that of the plaintiffs and has adopted an identical
and / or deceptively similar trade name / trademark "DARZI ON
CALL" in a manner which cannot be differentiated and distinguished
from the plaintiffs trade name / trademark;
(viii) that the word „DARZI‟ is pivotal and cardinal in the trade name
/ trademark of both, the plaintiffs and defendant;
(ix) that the plaintiffs, immediately on coming to know of the
defendant, made enquiries and found that the defendant had also filed
TM application for registration of the trade name / trademark "DARZI
ON CALL";
(x) that the plaintiffs sent a cease and desist notice dated 15 th
October, 2015 to the defendant and to which though no reply was
given but the plaintiffs did not find use by the defendant of the mark
"DARZI ON CALL";
(xi) however in August, 2016, the plaintiffs received query from its
customers whether the plaintiffs had launched "DARZI ON CALL"
and wherefrom the plaintiffs learnt that the defendant had again started
use of the trademark / label "DARZI ON CALL".
2. The suit came up first before this Court on 5 th October, 2016, when
finding (prima facie) that the defendant, besides using the word „DARZI‟
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had also written the word „D‟ in the same style as in the mark of the
plaintiffs, while issuing summons of the suit and notice of the application for
interim relief, the defendant, till further orders, was restrained from using the
trademark or trade name having as component thereof the word „DARZI‟ or
any other trademark or trade name similar or deceptively similar thereto.
3. Vide subsequent ad-interim order dated 7th December, 2016, the
defendant was permitted to use the alphabet „D‟ stylised as under:
and the logo as under:
without the word „DARZI‟.
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4. The defendant (Darzi on Call Private Limited / Darzi on Call Services
Pvt. Ltd.) has contested the suit by filing a written statement pleading:
(a) that the defendant was originally founded in April, 2015 as a
partnership firm which got incorporated into a company on 3rd August,
2015;
(b) that the plaintiffs have referred to their mark as "THE DARZI"
when in fact the only registered trademark of the plaintiffs is a
composite logo mark which comprises of a stylized iteration of the
words "THE DARZI", a tag line "The Suit People" and the numbers
"1981";
(c) that the alleged registration obtained by the plaintiffs under TM
Application No.1024154 and their pending applications are all for the
logo or the label and none of them are for the word "DARZI" or "THE
DARZI";
(d) that in other words, the plaintiffs themselves have never claimed
protection for the words "THE DARZI" or "DARZI" per se given that
they are conscious that these words are common to the trade and / or
generic and descriptive of textile and tailoring;
(e) that the plaintiffs have concealed that they had applied to
register the word mark "THE DARZI" under TM Application
No.900352 on 28th January, 2000 and this application was
subsequently abandoned;
(f) that under Section 2(m) of the Trade Marks Act, 1999, a
"device", "word", as well as a combination thereof is separate /
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independent subject matter and Section 17 of the Act clearly says that
registration of a trademark will not confer any rights in the parts of a
trademark without separate registration of such parts (under Section
15);
(g) that registration of a label or a logo mark does not confer any
exclusive rights in the matter forming only a part of the whole of the
trademark so registered; such label or logo mark registrations confer
rights over the mark as a whole and not over the independent
constituents thereof;
(h) therefore the plaintiffs cannot assert any right over the mark
"DARZI" (word per se);
(i) that the logo or label mark cannot have a phonetic connotation
and it cannot be pronounced, but only seen / perceived visually;
(j) that in respective marks of the parties, the word "THE DARZI"
and "DARZI ON CALL" have been written in differed stylized font;
(k) that the tag line of the two marks is also different;
(l) that the letter „D‟ in the two marks is also different;
(m) that the get up and trade dress including the colour combination
of the two marks is different;
(n) that a comparison of the rival marks clearly establishes the two
marks to be completely different and distinguishable;
(n) that the plaintiffs do not use the word „DARZI‟ independently
in the course of their business activities, which is obviously on
account of this word being generic and / or descriptive;
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(o) that the word „DARZI‟ standalone cannot function as a
trademark on account of its generic, laudatory and descriptive
characteristics;
(p) that the plaintiffs cannot assert any statutory or proprietary
rights over the word „DARZI‟ (word per se);
(q) that the word „DARZI‟ for tailor has no known or popular
synonym in Urdu or Hindi;
(r) that several third parties have applied to register and have in
fact registered marks containing the word „DARZI‟ for tailoring
services, thereby rendering the said word „DARZI‟ as common to
trade;
(s) that there are several others who are also using „DARZI‟
formative marks as part of tailoring and stitching business;
(t) that the plaintiffs, in their response to the examination reports
issued for their pending applications, have admitted that the plaintiffs‟
logo mark is different to the third party registrations and pending
applications containing the word „DARZI‟; such admissions on the
part of the plaintiffs extends to the fact that a pictorial mark containing
the word „DARZI‟ cannot cause any confusion and deception vis-a-vis
the plaintiffs logo mark;
(u) that the defendant‟s trademark is a unique and fanciful pictorial
or logo mark and the plaintiffs own admission and concession
distinguished the plaintiffs logo mark from the defendant‟s logo mark;
(v) that the services of tailoring do not fall in Class 24 but rather in
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Class 40;
(w) that the defendant‟s TM Application No.2985596 has been
made in Class 40 for tailoring services;
(x) that the plaintiffs are thus precluded from averring that their
statutory rights for tailoring services have been infringed by the
defendant, when the plaintiffs do not own any registration in respect of
tailoring services;
(y) that the plaintiffs have not established any use of the mark in the
nature of textile products falling in Class 24;
(z) that the copyright applications filed by the plaintiffs along with
the suit are for the work "be suited bespoke(n)" and not for „DARZI‟;
(aa) that the plaintiffs registered mark under TM Application
No.1024154 dates back to 9th July, 2001 and some of the invoices filed
by the plaintiffs date back to the year 1996; the plaintiffs have
wrongly represented registration since the year 1981;
(bb) that the defendant adopted the trademark "DARZI ON CALL"
logo since 2015 in respect of its tailoring and stitching business;
(cc) that the defendant as a method of brand recall and personal
touch, stitches the letter „D‟, as depicted in its logo mark on every
article of clothing tailored and stitched by the defendant;
(dd) that the defendant‟s trademark has been adopted keeping in
mind its business of offering tailoring services on a call;
(ee) that there can be no possibility of any unwary consumer of
average intelligence being misled or deceived into availing the
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defendant‟s services instead of the plaintiffs;
(ff) that the plaintiffs are not entitled to the reliefs on the ground of
laches, acquiescence and waiver.
5. No replication has been filed by the plaintiffs. The counsels were
heard on the application for interim relief on 15th December, 2016 and 2nd
January, 2017 and orders reserved.
6. Though extensive oral arguments were addressed by the counsels but
since the counsels at the end thereof also sought permission to file written
arguments and have filed written arguments, instead of giving a narrative of
the arguments addressed, their submissions in writing, in addition to the
pleadings, are recorded herein below.
7. Arguments of the counsel for the plaintiffs:
(A) The trade name / trademark / label of the plaintiffs is "THE
DARZI" and no logo can be portrayed without the words "THE
DARZI"; hence the pleading of the defendant that the trademark of the
plaintiffs is a logo mark and that the word „DARZI‟ is nowhere
connected with the label is wholly misconceived and baseless;
(B) The word „DARZI‟ is the integral and essential part of the label
of the plaintiffs as well as of the defendant;
(C) Reliance is placed on United Biotech Pvt. Ltd. Vs. Orchid
Chemicals and Pharmaceuticals Ltd. 2012 (50) PTC 433 (Del) to
contend that when a label mark is registered, it cannot be said that the
word mark contained therein is not registered;
(D) "THE DARZI" is not generic as it is not synonymous to
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stitching and is neither generic for textile nor for garments;
(E) Reference is made to Section 9(1) of the Trade Marks Act
providing that a trade mark shall not be refused registration if before
the date of application for registration it has acquired a distinctive
character as a result of use made of it and to Section 32 providing that
a trade mark registered in breach of Section 9(1) shall not be declared
invalid if, in consequence of the use which has been made of it, it has
after registration and before commencement of any legal proceedings
challenging the validity of such registration, acquired a distinctive
character in relation to the goods for which it is registered and to
Section 31 pronouncing the registration to be prima facie evidence of
validity;
(F) Reliance is placed on Jagdish Gopal Kamath Vs. Lime & Chilli
Hospitality Services 2015 (62) PTC 23 (Bom) to contend that the
registration of a device mark is neither a presumption nor axiomatic in
the absence of being described as a word mark and to contend that
even in case of device mark what is to be considered is the essential,
prominent and leading feature of that mark whether be a label, device,
composite, word and where finding that there was nothing else in the
so called device than the words „Cafe Madras‟, the said words were
held to enjoy protection;
(G) The registration of the mark of the plaintiffs does not carry any
disclaimer; reliance in this regard is placed on Pidilite Industries Ltd.
Vs. S.M. Associates 2004 (28) PTC 193 (Bom);
(H) Reliance is placed on Central Park Estates Pvt. Ltd. Vs. CHD
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Developers Ltd. 2015 (61) PTC 221 (Del) holding that the defendant
therein himself having filed an application for registration of the mark
„BELLEVUE‟ could not contend the same to be generic;
8. Arguments of the counsel for the defendant:
(I) Reliance is placed on Living Media India Ltd. Vs. Alpha
Dealcom Pvt. Ltd. 2014 (58) PTC 589 (Del) holding that the plaintiff
having admitted „Punjab Today‟ to be different from „India Today‟
cannot be permitted to contend similarity between „India Today‟ and
„Nation Today‟;
(II) Astrazeneca UK Ltd. Vs. Orchid Chemicals &
Pharmaceuticals Ltd. 2012 SCC OnLine Del 2092 holding that a
party cannot be allowed to approbate and reprobate;
(III) Dwijendra Narain Roy Vs. Joges Chandra De AIR 1924 Cal
600 holding that a defendant cannot be allowed to shift his position;
(IV) Caterpillar Inc. Vs. Mehtab Ahmed 2002 (25) PTC 438 (Del)
holding that the words which are directly descriptive of the quality or
attributes of the goods are neither patented nor proprietary names;
however words, though also directly descriptive of the quality or
attribute of goods but without any element of laudation, can be used as
mark or trademark only if acquire secondary meaning;
(V) Indchemie Health Specialties Ltd. Vs. Intas Pharmaceuticals
Ltd. 2015 (63) PTC 391 (Bom) holding that if the plaintiffs have got
protection for a narrow class of goods, it is only fair that they ought to
be restricted to that narrow class and not be permitted to extend the
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protection to other goods for which the protection was not meant to;
(VI) Rhizome Distilleries Pvt. Ltd. Vs. Union of India 2012 (50)
PTC 1 (Mad) (DB) holding that the conflicting composition marks
must be compared in their entirety and a mark should not be dissected
or split into its component parts and each part then compared with
corresponding parts of the conflicting mark to determine the
likelihood of confusion;
(VII) IHHR Hospitality Pvt. Ltd. Vs. Bestech India Pvt. Ltd. 2012
(50) PTC 535 (Del) (DB) holding that sales of Rs.200 crores spread
over ten years would prima facie be insufficient evidence to establish
that the word „ANANDA‟, in relation to an abode, has acquired such
secondary meaning that an ordinary consumer, without thinking any
more, would automatically conclude every abode with the appellant;
(VIII) People Interactive (India) Private Limited Vs. Vivek Pahwa
2016 (68) PTC 225 (Bom) holding that exclusivity claims based on
secondary meaning acquisition must be established by cogent material
and mere use and statements of sales and expenses do not, of their
own, establish the acquisition of a secondary meaning;
(IX) SBL Ltd. Vs. Himalaya Drug Co. 1997 (17) PTC 540 (Del)
holding that a mark is said to be common to the trade when it is in
common use in the trade or when it is open to the trade to use and
whether a mater is or is not common to trade is a question of fact and
that nobody can claim exclusive right to use any word, abbreviation or
acronym which has become publici juris; in that case it was held that
in the trade of drugs, it is common practice to name a drug by the
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name of the organ or ailment which it treats or the main ingredient of
the drug and such organ, ailment or ingredient being publici juris or
generic cannot be owned by anyone for use as a trademark;
(X) Marico Limited Vs. Agro Tech Foods Limited 2010 (44) PTC
736 (Del) (DB) holding that the expression „Low-Absorb‟ is a
common descriptive expression / adjective, at an interlocutory stage, it
cannot be said that it had become distinctive of the plaintiff therein;
(XI) Astrazeneca UK Limited Vs. Orchid Chemicals &
Pharmaceuticals Ltd. 2007 III AD (Delhi) 430 holding that the
expression „MERO‟ in relation to drug with the molecule
„MEROPENEM‟ had become a generic term and being publici juris,
no exclusive right thereto as a constituent to a trademark could be
claimed;
(XII) Pidilite Industries Limited Vs. Vilas Nemichand Jain 2015
(64) PTC 185 (Bom) also holding that mere evidence of extent of use
is not enough to show that the use is such that the mark has become
distinctive;
(XIII) Ultratech Cement Limited Vs. Dalmia Cement Bharat Limited
2016 (67) PTC 314 (Bom) denying interim injunction to restrain use
of the words „DALMIA ULTRA‟ on the ground of passing off owing
to the plaintiff‟s mark „UltraTech‟ therein;
(XIV) Registrar of Trade Marks Vs. Ashok Chandra Rakhit Ltd. AIR
1955 SC 558 holding that absence of a disclaimer in respect of parts
contained in a trade mark registered as a whole does not confer any
statutory right with respect to that part;
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(XV) Three-N-Products Private Limited Vs. Emami Limited
MANU/WB/0011/2010 Cal (DB) laying down the distinction between
the tests of infringement and passing off;
(XVI) P.P. Jewellers Pvt. Ltd. Vs. P.P. Buildwell Pvt. Ltd. ILR (2010)
II Delhi 165 denying interim injunction on the ground of passing off to
restrain use of the alphabets „PP‟ which were part of plaintiff‟s logo
„PPJ‟ in relation to jewellery by the defendant in relation to real estate;
(XVII) Subhash Chand Bansal Vs. Khadim's 2012 (52) PTC 565
(Del) granting interim injunction against use of trademark „KHADIM
SHRIMAN KHAZANA‟ on the ground of being in infringement of
plaintiff‟s mark „KHAZANA‟, though registered as a label / device
but without any additional word or logo or monogram;
(XVIII) Carlsberg India Pvt. Ltd. Vs. Radico Khaitan Ltd. 2012 (49)
PTC 54 (Del) (DB) denying interim injunction to the proprietor of the
composite mark „8 PM‟, applying the test of essential feature;
(XIX) M/s Aravind Laboratories Vs. Modicare 2011-4-L.W.55
(Mad) denying interim injunction to the proprietor of „EYETEX
DAZLLER‟ against the use of the word „DAZLLER‟ because there
was no registration of the mark „DAZLLER‟ per se;
(XX) S.P. Chengalvaraya Naidu Vs. Jagannath (1994) 1 SCC 1
holding that a plaintiff who obtains an order playing fraud on the
Court, has to be summarily thrown out;
(XXI) Arunima Baruah Vs. Union of India (2007) 6 SCC 120
holding that one who suppresses material facts is not entitled to invoke
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discretionary jurisdiction of the Court.
9. The counsel for the plaintiffs in his written submissions has also
countered the arguments of the counsel for the defendant contending:
(a) that every case is decided on its own peculiar facts and
circumstances;
(b) that the trademarks relied upon by the defendant are not being
used in the course of trade and business and mere pendency of
applications for registration does not prove user of the mark; else, the
plaintiffs have filed suits against whosoever has been found using the
mark „DARZI‟ in relation to tailoring services; reference in this
respect is made to Corn Products Refining Co. Vs. Sangrila Food
Products Ltd. AIR 1960 SC 142 holding that presence of the mark in
the register does not prove its user;
(c) that whether a trademark is common to trade or not can also be
proved only post evidence;
(d) referred to Himalaya Drug Company Vs. S.B.L. Limited 2013
(53) PTC 1 (Del) (DB) holding that where the defendant‟s mark
contains the essential feature of the plaintiff‟s mark combined with
other matter, the correct approach for the Court is to identify an
essential feature depending particularly on the Court‟s own judgment
and burden of the evidence that is placed before the Court and that in
order to come to the conclusion whether one mark is deceptively
similar to another, the broad and essential features of the two are to be
considered, not by placing the two side by side but rather by overall
similarity and the impression it leaves in the mind of the general
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public;
(e) that the plaintiffs have not practised any misrepresentation and
have in the plaint as well as the documents represented their trademark
as a trade name and trademark / label;
(f) that the plaintiffs have been using the trademark / label / trade
name for 36 years prior to the institution of the suit and for 35 years
before the defendant claims to have commenced using;
(g) reliance is placed on Laxmikant V. Patel Vs. Chetanbhai Shah
(2002) 3 SCC 65 laying down that honesty and fair play are, and ought
to be, the basic policies in the world of business and that when a
person adopts a name in connection with his business or services
which already belongs to someone else it results in confusion.
10. I have considered the pleadings and contentions of the respective
counsels keeping in mind the plethora of precedents cited by them. As would
be obvious from the precedents cited by the two counsels, though the
determining principles remain the same, but outcome depends upon the
peculiar facts of each case.
11. My experience of life in the city of Delhi, to the high-end section of
the society wherein both plaintiffs and the defendant claim to be providing
tailoring services, is that the words „Tailors‟ and / or „Drapers‟ are used to
describe the nature of the business being provided by a tailor under a trade
name. Mention in this regard may be made of Raymond Tailors, D. Vaish &
Sons Tailors & Drapers, Vedi Tailors, Libas Tailors, Iqbal Brothers Tailors
& Drapers, Bedi Tailors, University Tailors, Mohan Lal Sons, Jainsons etc.,
to mention a few. Though „DARZI‟ is undoubtedly the Urdu word for
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„tailor‟ and used in Hindi as well but at least I have not come across any
person / entity providing tailoring services describing the services rendered
as that of a „DARZI‟. The defendant also has been unable to cite any person
carrying on tailoring business describing his/her/its services as those of
„DARZI‟. In fact, the word „Tailor‟ has also found acceptance in the Hindi
language with those not speaking or reading or writing English language also
using the same instead of the word „DARZI‟. It however cannot be denied
that it is not as if „DARZI‟, the Hindi / Urdu equivalent of the word „Tailor‟,
is not understood or is uncommon. However, it is generally used in spoken
language, as distinct from in writing, to describe the profession of a person.
12. Not only so, I had also not come across use of the word „DARZI‟ as a
trade name / trade mark and as between the plaintiffs and the defendant the
plaintiffs are admittedly the prior adopter of the word „DARZI‟ as trade
name / trade mark or as part of trade name / trade mark.
13. A distinction has to be carved between use of a word as descriptive of
services provided under a trade name / trade mark and use of that word as
trade name / trade mark in itself. A person who for the first time starts using
as a trade name / trade mark, a word which in the past has always been used
as descriptive of the services, cannot, in my opinion, be denied the protection
as available to other proprietors of trademark, on the ground of the word
being descriptive of the trade. Protection afforded to intellectual property, to
which genre trade names and trademarks belong, in the ultimate analysis, is
protection of a novel idea/concept/thought. If none else has in the past
thought of adopting as a trade name / trademark, a word which till then has
been used as descriptive of services, then the person who has this novel
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thought / idea deserves protection.
14. Not only so, what is peculiar here is that the word which can be said to
be descriptive in writing of the tailoring services is the word „Tailor‟ and not
the Hindi / Urdu equivalent „DARZI‟ thereof. It is the word „Tailor‟, written
in Hindi language and accompanied with the word „MASTER‟, also in Hindi
language which is / are found written on boards outside shops providing
tailoring services in the Hindi speaking neighbourhoods.
15. That brings me to the principal contention of the counsel for the
defendant, of the word „DARZI‟ being inherently incapable of being a trade
mark owing to being generic or publici juris of the tailoring services.
16. The law of trade marks, insofar as statutory, is to be found in Section
9, listing the absolute grounds for refusal of registration. Sub-section (1)(a)
thereof provides that a trade mark which is devoid of any distinctive
character, not capable of distinguishing the goods or services of one person
from those of another, shall not be registered. In consonance with discussion
hereinabove, though the word „TAILOR‟, (in the context of the city of Delhi
where the plaintiffs and the defendant are carrying on their tailoring business
and which business is largely territorial in nature with a customer not
travelling to a city other than of his ordinary residence for availing tailoring
services) may fall in this category in relation to service of tailoring but not
the word „DARZI‟. Sub-section (1)(b) of Section 9 makes not registrable the
trade marks which consist exclusively of marks (word) which may serve in
trade to designate the services rendered thereunder. Though on first reading
it appears that the word „DARZI‟ which describes the services of Tailoring,
would fall thereunder and be unregistrable but the words "which may serve
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to designate the rendering of services" therein, in my opinion, have to be
again read and understood in relation to the nature of business, place where
the business is carried on, the word generally used at that place to designate
the service of tailoring etc. There may be multiple words listed in the
Thesaurus / Dictionary to describe any goods or service. However all such
words would not become unregistrable as a trade mark under Section 9(1)(b)
supra. Only such of these words would be unregistrable which are
commonly used in the territory of business to designate the service rendered
thereunder.
17. Supreme Court, in T.V. Venugopal Vs. Ushodaya Enterprises Ltd.
(2011) 4 SCC 85, considered the Telugu language word „EENADU‟
meaning „Today‟ in the context of the State of Andhra Pradesh i.e.
territorially, where it was well understood.
18. It was indeed the argument of counsel for the defendant during the
hearing that because the word „DARZI‟ is understood in Delhi as a
„TAILOR‟, it cannot be used as a trade mark though in the State of Kerala it
may not qualify as descriptive.
19. However the test as aforesaid is not only of whether a word / or its
meaning is understood at a particular place but also of whether it is generally
used at that place as descriptive of service rendered thereunder. Not only is
the word „DARZI‟ not used in Delhi as to designate the service of tailoring
provided under a trade mark but is used in spoken language as descriptive of
vocation / profession of a person individually and not as a service, which is
designated as "TAILOR".
20. The test to be applied, at the same place, may also vary from business
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to business and word to word. What may be held in respect of drugs and
medicinal products may not apply to tailoring services.
21. This Court in Info Edge (India) Pvt. Ltd. Vs. Shailesh Gupta 2002
(24) PTC 355 (Del.) was concerned with grant of interim injunction at the
instance of prior user of "NAUKRI.COM" against the user of
"NAUKARI.COM", both in the business of a job / employment portal. The
defence inter alia was that the word „NAUKRI‟ was generic and incapable
of achieving the trade mark significance and performing function of a trade
mark as it was descriptive of the work / business offered by the plaintiff. It
was held that there was „peculiarity‟ as the plaintiff had adopted Hindi word
with English script and thus distinctiveness could be attributed to the said
name. It was further held that if a product is marketed in a particular area or
place under a descriptive name and has gained a reputation thereunder, that
name which distinguished it from competing products, it will be protected
against descriptive use. Interim injunction was granted.
22. The aforesaid decision, in my view, squarely applies to the facts of the
present case. The plaintiffs here also have adopted a Urdu / Hindi word with
English script and which word prior to the plaintiffs, was not generally used
by those providing tailoring services as descriptive or designating their
service.
23. Moreover the defendant itself having applied for registration of its
label, is estopped from taking the plea of the word „DARZI‟ being generic.
Reference if any required can also be made to Automatic Electric Ltd. Vs.
R.K. Dhawan 77 (1991) DLT 292, The Indian Hotels Co. Ltd. Vs. Jiva
Institute of Vedic Science & Culture 2008 (37) PTC 468 Del and Brij
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Mohan Bhatia Vs. Jain Sales Corporation MANU/DE/2955/2014.
24. In this context, no merit is also found in the contention of the
defendant of the mark being label marks and not word marks. The essential
feature of both marks is the word „DARZI‟ and there is barely anything else
on the labels to serve the purpose of a trade mark i.e. of recall. A consumer
of tailoring services would remember the service availed of on an earlier
occasion, whether it be of the plaintiffs or of defendant as „DARZI‟ only and
would not remember the defendant as different from the plaintiffs owing to
the words "ON CALL" in the label of the defendant. Conversely, a customer
of the plaintiffs, on coming across the defendant is likely to understand the
service of the defendant, as an extension of the service of plaintiffs „ON
CALL‟. Also, the goodwill of a business as of tailoring is by word of mouth.
A person for whom either the plaintiffs or the defendant have customised or
tailored, when asked of the reference of his tailor is unlikely to mention the
defendant as „DARZI ON CALL‟ as distinct from plaintiffs as „THE
DARZI‟; even if he were to so mention, the person seeking reference is
unlikely to remember the words "ON CALL" and what is likely to stick to
his memory is the word „DARZI‟. The test of similarity / deceptive
similarity have to have their roots in the human interactions in a particular
society / city and cannot be in abstract. What has to be applied is the test of
human beings and not a test as laid down in the law books in relation to a
different society.
25. Applying the aforesaid tests, the presence in the label of the defendant
of the alphabet „D‟ in a stylised form besides the word „DARZI‟ and the
shape of a dress on a mannequin or of the words „The Suit People‟ or „1981‟
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edged on the label of the plaintiffs are unlikely to distinguish the two. What
stands out in the two marks is the word „DARZI‟ with people remembering
the marks as unique in adopting the Hindi / Urdu meaning of the word
„Tailor‟ in English script. The recall value of both the trademarks is thus the
word „DARZI‟. I may in this context also record that though the colour
scheme etc. may be relevant in relation to trademarks qua other products but
have no relevance to the trademark in the context of tailoring services.
Similarly, a person searching on the internet or trade directories for „DARZI‟
referred to him is also likely to confuse between the two trademarks and
likely to take down the telephone number and address of the other.
26. In fact I am of the opinion that Subhash Chand Bansal supra fairly
cited by the counsel for the defendant where, without trial, the defendant was
restrained from using label „Khadim‟s Khazana‟ in relation to the same
goods for which plaintiff had label registration which was but the word
„Khazana‟ in a square box, applies squarely to the facts of the present case,
though goes against the defendant.
27. I again highlight that it is not merely the label of the plaintiffs and the
defendant but both, are also using the words in the label i.e. "THE DARZI"
and "DARZI ON CALL" as their trade name. It is not as if owing to distinct
trade names, similarities in labels are of no avail.
28. As far as the contention of the counsel for the defendant, of the
registration of the plaintiffs being in relation to textile cloths and not in
relation to tailoring services and the plaintiffs being thus not entitled to any
relief on the ground of infringement is concerned, the Fourth Schedule to the
Trade Marks Rules while classifying goods and services does not provide
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any separate classification for tailoring. Entries 1 to 34 therein are under the
heading "articles" with Class 24 being "textiles and textile goods, not
included in other classes; bed and table covers" and Class 25 being
"Clothing, footwear, headgear"; and, Entries 35 to 45 are under the heading
„Services‟ with Entry 40 being "Treatment of materials". In the absence of a
specific class for tailoring, in my opinion, the plaintiffs cannot be deprived
of the protection on account of their registration being in Class 24. After all
textiles and textile goods are not usable articles without being tailored.
Though business of tailoring per se / as a standalone business is not unknown
but tailors are invariably found attached to the business of sale of textiles and
textile goods with the shops of high-end textile goods having a tailoring desk
so that the textiles can also be purchased as per the suggestions of tailors.
Seen in this context, it cannot be said that the use by the plaintiffs of the
trademark is not in the class registered or the plaintiffs having registration in
Class 24 are not entitled to use the registration to prevent others from using
the registered trademark for similar business.
29. Though the plaintiffs claim user since 1981 but the defendant also
does not dispute the plaintiffs to be prior user at least by a couple of decades.
It is not the case of the defendant that the defendant, at the time of launching
its business was not in the know of the plaintiffs. The defendant inspite
thereof chose use of the word „DARZI‟ as part of its trade name.
30. That brings me to the most important and guiding light in the law of
intellectual property which is found to be the ultimate reason which
prevailed with the Courts in granting injunction i.e. of dishonesty and an
attempt on the part of the defendant to ride on the goodwill of the plaintiffs,
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to steal the market created by the plaintiffs, to have a headstart from the
place to which the plaintiffs have built the business, to pass off his/her/its
goods or services as that of the plaintiffs, all obviously to the prejudice of the
plaintiffs and amounting to cheating the patrons/consumers/customers of the
plaintiffs and the public at large. No society governed by law will permit a
defendant to do so. The message which this Court will be sending out if
refuses injunction in a case as this is that it, embroiled in its legalese and
technicalities of law as the defendant here has raised, is encouraging such
deception in society and allowing hijacking of businesses which another has
toiled to build. Such a message going out from the Court will kill
entrepreneurship in the country, thereby spelling the doom for development.
Even laws relating to tangible properties, as distinct from intellectual
property have, have been interpreted to protect titles in property, as long as
acquired honestly and for consideration, even if imperfect.
31. The entire argument of the defendant of „generic‟ and „publici juris‟
and of the word „DARZI‟ being descriptive is nothing but an argument of
technicality. The defendant itself has used the word „DARZI‟, not as
descriptive of its trade identified by another name but as distinctive of it
amongst the class of businesses which the defendant is carrying i.e. of
tailoring. Such an argument would have been understandable if Md. Ali
Raza, Ms. Nazia Nabi and Sh. Avinash Kumar who set up the business of
defendant had commenced business of tailoring, say in the name of „M/s
Raza, Nabi & Kumar‟ and described the business carried on under the said
name as "Darzis on Call". It could then have been said that the plaintiff
No.1 Sunil Mittal, by adopting the name of his tailoring business as „THE
DARZI‟ is not entitled to restrain other tailors, catering to section of society
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not familiar with the word „TAILOR‟, is not entitled to restrain „M/s Raza,
Nabi & Kumar‟ from informing their prospective customers the services of
„DARZI‟ provided by them. The act of the defendant of having itself chosen
the word „DARZI‟, not as descriptive of its business but as a trade name, as
the plaintiffs had done two decades before the defendant, is nothing but an
act of dishonesty with which the Court is not only required to but bound to
interdict. It is also not as if the defendant is writing the word „DARZI‟ in
Urdu or Hindi language, to cater to the section of the society which is
unfamiliar with the word „TAILOR‟. The defendant also, as the plaintiffs,
has chosen to write the word „DARZI‟ in English script. The defendant is
targeting the same customer base as the plaintiffs. I may in this regard also
notice a shift in the society in the last few decades. Earlier, owing to limited
availability of readymade garments in the country, only the rich were buying
the same from foreign markets with the economically weak section of the
society buying cloth and getting it tailored. Now, readymade garments are
tailored in factories, mechanically with limited human skills and are
available in volumes at much less price than the cost, if the cloth was to be
purchased and tailoring charges given. Today, customised / bespoke
tailoring, which both, plaintiffs and defendant are providing, is affordable
only by the rich and high-heeled, who are generally literate and understand
the word „TAILOR‟ and find the word „DARZI‟ „exotic‟ and hence with
high recall value, thereby serving very well the purpose of a trademark.
32. Privy Council, as far back as in De Cordova Vs. Vick Chemical Coy
Reports of Patent, Design and Trade Mark Cases LXVIII (6) 103, in the
context of the contention that the word „VapoRub‟ was generic held (i) that
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though the trademark was a visual device but the ascertainment of essential
feature is not by ocular test alone and since the words formed part if not
whole of the mark, it is impossible to exclude consideration of sound or
significance of those words specifically when the word forming part of the
mark has come in trade to be used to identify the goods of the owner of the
mark; (ii) that there is no absolute incompatibility between what is
descriptive and what is distinctive; (iii) it would be abuse of language to
place a fancy word as „VapoRub‟ in the same descriptive class as "malted
milk" or "shredded wheat"; (iv) description of the word as generic in books /
dictionaries is not enough, what is to be seen is whether the word has passed
into the speech of general public; (v) the alleged infringer in that case also
was not using the words as descriptive of its goods but as a trademark; and,
(vi) „VapoRub‟ though not an invented word, was "just outside". I may add
it is not in every case / situation that adjudication whether a word has
acquired a secondary meaning, cannot be done at interim stage. This Court
in Hindustan Pencils Ltd. Vs. Puma Stationery Ltd. 2005 (31) PTC 541
(Del) held that in some case it may be possible at interim stage. I find this
case to be such.
33. It is for all the aforesaid reasons that I find the act of defendant sought
to be injuncted in this suit, to be dishonest. This is what also prevailed with
this Court in Info Edge (India) Pvt. Ltd. supra also while injuncting
„NAUKARI.COM‟ and with the Supreme Court in T.V. Venugopal supra
while injuncting use of the word „Eenadu‟ though both generic. Reference
may also be made to Laxmikant Patel supra holding that fairplay and
honesty ought to be the basic policy in world of business and where a person
adopts a name which already belongs to someone else, it causes injury to the
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latter.
34. I, at least at this stage, am also of the opinion that search reports from
the online records of the Trade Marks Registry cannot be relied upon to
show use by any other person of „DARZI‟ as a trade name. Not only so, it is
not expected of a proprietor of a trademark to, instead of carrying on
business under the trademark, make litigation a business by continuously
being on the prowl for every use of that trademark, howsoever insignificant
and inconsequential may be, and to take legal proceedings to prevent such
use. A proprietor of a trademark is not expected to take legal proceedings if
remains unaffected by use of the same trademark by others. Merely because
the plaintiffs have not felt the need to take action against some others, even if
using the word „DARZI‟ as a trade name, if according to the plaintiffs such
use does not affect the business of the plaintiffs, the same cannot deprive the
plaintiffs of protective action, when another invades his business. Else, the
defendant along with the written statement has filed only an impression of a
rubber stamp and a business card of one "Mrs. Darzi" carrying on business
in Rajouri Garden, New Delhi and one "d.a.r.z.i BY NAVITA" carrying on
business at Derawal Nagar, Delhi and of one „Darzi Boutique‟ for Women at
Indrapuram, Ghaziabad. The defendant along with its written statement has
also filed Facebook search of the word „DARZI‟ but wherefrom the location
cannot be known. The business of tailoring is a highly territorial business
and the plaintiffs carrying on business at Delhi may not feel threatened from
other business, even if under the same trade name, in other cities. Moreover,
a number of entries in the Facebook search print out filed, are not even in
relation to the tailoring services and are in as diverse businesses as of
providing business services, art, clothing, authors, musicians etc. A number
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of them are also not of the word „DARZI‟ as standalone and are with
prefixes or suffixes or a combination of the word „DARZI‟ with other words.
35. This Court in Brij Mohan Bhatia supra, relying on Express Bottlers
Services Pvt. Ltd. Vs. Pepsico Inc. 1989 (9) PTC 14 and Century Traders
Vs. Roshan Lal Duggar & Co. AIR 1978 Delhi 250 (DB) held that (i) mere
presence of mark in register does not prove use; (ii) proprietor of trademark
is not expected to pursue each and every insignificant infringer, and relying
on P.M. Diesels Vs. S.M. Diesels AIR 1994 Del 264 held that in such a suit
it is the right of two parties before the Court which are to be examined and
not qua others.
36. As far as reliance by the counsel for defendant on IHHR Hospitality
Pvt. Ltd. supra is concerned, I have in order dated 11th April, 2017 in
CS(COMM) No.242/2017 titled IHHR Hospitality Pvt. Ltd. Vs. Hotel
Ananda noticed that the Division Bench, vide subsequent order dated 6 th
August, 2012 in the same appeal recalled the judgment.
37. The plaintiffs thus have made out a prima facie case. The balance of
convenience also is in favour of the plaintiffs and against the defendant in as
much as use by the plaintiffs of the trademark according to the defendant
also is for at least 20 years prior to that by the defendant. The defendant
already since the last about six months has been using a different trademark
and I am of the view that the prejudice from the interim injunction to the
defendant will be negligible in comparison to that to the plaintiffs from non-
grant thereof. Needless to state that a prima facie case having been found in
favour of the plaintiffs, the plaintiffs will suffer irreparable injury from
continued use by the defendant of the mark. A customer of a tailor, once
lost, is unlikely to come back.
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38. Resultantly, IA No.12449/2016 of plaintiffs under Order XXXIX
Rules 1&2 CPC succeeds and IA No.15269/2016 of defendant under Order
XXXIX Rule 4 CPC is dismissed.
39. The orders dated 5th October, 2016 as clarified on 7th December, 2016
are made absolute till the disposal of the suit.
RAJIV SAHAI ENDLAW, J.
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