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Defendants' Case

8. Defendant No.1 - M/s R.K. Jewellers SK Group is a firm of which, Defendants No.2 and 3 - Mr. Suresh Kohli and Mr. Sahil Kohli, respectively are partners. In the written statement, the case of the Defendants is that the three marks are generic expressions for the services being rendered by both the parties. There is extensive third party use of these marks. There are more than 50 websites operating internationally which use the marks „CASH FOR GOLD‟, „GOLD BUYERS‟ and „WE BUY GOLD‟ and some of these websites have been operational since 1999. A list of such websites has been extracted in paragraph 4 of the written statement. Screenshots of the said websites have also been placed on record. It is thus averred that the attempt of the Plaintiff is to monopolise generic expressions, which cannot be permissible in law.

The Plaintiff‟s marks are thus registered and the IPAB has also dismissed the Defendants‟ appeal on 18th October, 2018. Since, the Plaintiff‟s marks are now registered, it is entitled to protection, as it has statutory rights in the marks. He further submits that this is a case of an identical mark for an identical business, and hence there is presumption of confusion. It is vehemently urged that the Defendants themselves having filed applications for trademark registrations are estopped from arguing that the Plaintiff‟s marks are descriptive/generic. He relies on the following judgments:

i) Midas Hygiene Industries Pvt. Ltd. v Sudhir Bhatia 2004 (28) PTC (121) SC

ii) Hindustan Pencils v India Stationary Products Co & Anr. AIR 1990 Delhi 19 Submissions on behalf of the Defendant

13. On the other hand, Mr. Saikrishna Rajagopal, Ld. counsel appearing on behalf of the Defendants submits that the three trademarks/trade names being used by the Plaintiff are incapable of achieving trademark signification. According to him, the present case is a textbook example of marks which are generic. Even though the Defendants may have applied for registration of the marks under wrong advice, that by itself does not mean that generic marks should be allowed to be monopolised. He submits that the Defendants, as on the date of making submissions before this Court, have withdrawn their trademark applications. Further, it is contended that an interim injunction ought not to be granted as the mark „CASH FOR GOLD‟ is so descriptive that there is no other expression to describe the said service. He vehemently relies upon third-party use of the mark and the documents placed in support of this submission, namely, printouts of websites of third parties, invoices issued by third party shopkeepers and visiting cards, etc. to show the rampant use of the mark „CASH FOR GOLD‟ and similar marks. It is further submitted that the year of the Plaintiff‟s adoption is of 2012 and the Defendants‟ user is of 2013, and hence though the Defendant was a customer of the Plaintiff, the Defendant would still be an honest and concurrent user of the marks. It is further argued that the mere fact that one of the Defendants was a customer of the Plaintiff, cannot block a generic mark such as „CASH FOR GOLD‟ as the industry would need such a mark for its common use. Section 30(2)(a) of the Trade Marks Act is relied upon to submit that the mark describes the intended purpose of the business and a characteristic of the service provided. Reliance is placed on the judgment of the Bombay High Court in Pidilite Industries Limited and Ors. v. Vilas Nemichand Jain and Ors. 2015 (6) ABR 389 to argue that the mere use of the mark does not constitute distinctiveness of the mark. For a mark to acquire secondary meaning, the primary meaning ought to have been displaced. It is also submitted that the use by the Defendants of the words „24 Karat‟ is sufficient to distinguish the two marks. The Plaintiff‟s whole case before the Trademark Registry in reply to the examination report was that the two marks can co-exist. When any business adopts a descriptive or a generic mark, it has to tolerate some degree of confusion and such a descriptive or generic expression cannot be expropriated. On the basis of the various third-party related documents, it is argued that the Plaintiff is not the originator of the mark. It is further submitted that in Automatic Electric Limited (supra), the Court arrived at the conclusion that the mark „DIMMERSTAT‟ was not descriptive and it is on that basis that the Defendant was injuncted. In that case, there was no evidence of third-party use. Reliance is place on Skyline Education Institute (Pvt.) Ltd. v. S.L. Vaswani and Ors. AIR 2010 SC 3221 and Asian Paints Limited v. Home Solutions Retail (India) Limited 2007 (35) PTC 697 (Bom) to argue that in cases where there was third party use, no injunction was granted.

16. However, what is argued by the Defendants is that the marks are descriptive/generic and are incapable of being exclusively monopolised by any party. The defence of descriptiveness/generic nature of the marks emanates from Section 30 (2)(a) of the Trademark Act, 1999. The said Section reads as under:

"(2) A registered trade mark is not infringed where--

(a) the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services."