A. Arumughaswamy, J.@mdashThis appeal suit has been filed to set aside the judgment and decree made in O.S. No. 1 of 2000, dated 19.04.2002, on the file of the Principal District Munsif Court, Madurai.
2. The averments in the plaint are as follows:
The Plaintiffs 2 to 4 are the partners of the first Plaintiff firm, which is a registered firm and they are doing business of fancy bags, suit-cases, luggage, travelling bags, trunks business from the year 1963 in Madurai under the name and style of ''ROSHAN''. The suit has been filed by the Plaintiffs for declaration that the said Trade mark ''ROSHAN'' exclusively belongs to them and for consequential reliefs. The Certificate of Registration was given by the Registrar of Trade Marks under Trade Mark No. 249775 in favour of the second Plaintiff on 11.06.1968. The Plaintiffs have spent a huge money in the publicity of their trade under the said trade mark and it has gained a good significance in the public. The Defendants who are now in the same trade have very well know about the special significance with regard to the aforesaid goods under the said Trade Mark. With an intention to confuse the minds of the public, the Defendants have also used the same Trade name ''ROSHAN'' and are running their business in plastic goods, novelties, gift articles and plastic cans under the name of ''ROSHAN PLAST'' to confuse the minds of the public that their goods are that of the Plaintiffs goods. The Plaintiffs have also requested the Defendants not to use the said trade name or mark or anything similar to that of the Plaintiffs. The Defendants have also used the name ''ROSHAN'' in their bill-books and carry bags. The usage of the said trade name had caused a heavy loss and hardship to the Plaintiffs and also caused disrepute to their trade name. The Plaintiffs have used the said trade name in their concern at Madurai and Tirunelveli. The Plaintiff and her sister had business at D. No. 166, East Masi Street, Madurai, but, it was completely closed down in the year 1989 itself. The Plaintiffs have outlets at Madurai and other prominent places for sale of aforesaid goods under the trade name ''ROSHAN''. The second Plaintiff had the trade name ''ROSHAN'' registered under the Trade and Merchandise Act, 1958, as early as on 11.06.1968. Due to the pre-occupation in business and division in the family of the first Plaintiff, the Plaintiffs have not renewed the same. Hence, they have applied for fresh registration of the said trade name and mark as shown in rectangle in the schedule. By using the same trade name, the Defendants have indulged in defrauding and cheating the Plaintiffs. The request of the Plaintiffs not to use the said trade mark was not complied by the Defendants. Therefore, the Plaintiffs issued a legal notice, dated 09.07.2000 to the Defendants, but, it is not heeded by the Defendants. Hence, the Plaintiffs have filed the suit claiming the above said reliefs.
3. The averments in the written statement filed by the Defendants are as follows:
The Plaintiffs are not the registered proprietors of any trade name/mark as on record and they do not possess any exclusive right to use the said trade name/mark. Therefore, the Plaintiffs are not entitled to the relief sought for by them in their suit. There was originally a firm under the name and style of ''ROSHAN COMPANY'' in Door No. 166, East Masi Street, Madurai and their trade mark was registered in the trade mark Registry as early as in the year 1963 itself. The Defendants have validly purchased the right of business from one Khaja Hussain and another, that was running in the above said premises. The said Khaja Hussain has also given a letter of consent for restoring the phone connection after the suspended period and for effecting the necessary repairs to the building. From this, it is very clear the Plaintiffs are not in picture of doing business at D. No. 166-A, East Masi Street, Madurai, wherein, the trade is being carried on in the name of ''ROSHAN'' for over a period of 30 years. When the partnership is dissolved, one of the partner has got every right to use the said trade name/mark for their goods in the absence of any contract between them. These Defendants have purchased the trading style on 31.08.1989 and are doing business in partnership in the above said premises. The relevant records, namely, partnership deed and the certificate of registration as ''ROSHAN PLAST'' in the Commercial Tax Department issued on 28.08.1989 and the receipts from the owners of the premises and advertisements in daily news paper etc., are also produced before the Court. Therefore, the trade name ''ROSHAN PLAST'' is established since 1989. This trading style is open and known to the public and the Plaintiffs are also aware of it. All the traders have also recognised their trading style and name as ''ROSHAN PLAST'' from 1980 onwards. The word ''ROSHAN'' is a urudu name which is commonly used among the Muslims. There cannot be any registration of a common name and no one can claim any right over the same. These Defendants are doing such business continuously in the very same place with the goodwill left by his vendor. When an offence is committed in the trading of the goods, there cannot be any order of injunction against these Defendants. The Plaintiffs have made an attempt to obtain an order of injunction suppressing the material facts and the same will not clothe any legal rights. Only the Plaintiffs have committed illegality by copying the symbols of many companies and monograms as ''ROSHAN''. The Defendants company alone is known as ''ROSHAN PLAST''. There is no product registered as ''ROSHAN'' with resemblance of mark to be construed as deceptively similar to any product sold by the Plaintiffs. ''ROSHAN PLAST'' is only the name of the company, since the word ''ROSHAN'' means brightness. These Defendants have lawfully acquired the trade name in the market. There is no merit in the suit and the suit is liable to be dismissed with costs.
4. The points that arise for consideration in these appeals are as follows:
(1) Whether the Plaintiffs have been using the trade name "ROSHAN" continuously for their products ? If not,
(2) Whether the Defendants are entitled to use the trade mark "ROS HeN" as against the Plaintiffs ?
5. The Plaintiffs filed a suit under the Trade mark and Merchandise Act for declaring that the trade name ''ROSHAN'' belongs to them absolutely and exclusively and permission to use the same. The trial court after framing necessary issues and after due enquiry, decreed the suit granting the relief of declaration, permanent injunction and mandatory injunction with costs and had given two months time to comply with the decree with other reliefs. Aggrieved by the same, the Defendants as Appellants have filed the present appeal.
6. The Defendants are the Appellants. The vehement contention of the Appellants is that a common name cannot be a trade name for doing business and the second contention of the Appellants is that their registration of the trade mark has been cancelled and they have commenced the business once under the said trade mark and name only in the year 1989. Therefore, the Respondents are not entitled to question the use of the same by the Appellant and hence, the appeal has to be allowed.
7. The learned Counsel for the Plaintiffs/ Respondents contended that they have been all along using the trade name and mark and hence, they are entitled to use the same and therefore, the judgment and decree of the trial court has to be confirmed and thereby the appeal has to be dismissed.
8. The vehement contention of the Appellants is that ''ROSHAN'' is a common name and that name cannot be used as a trade name. Hence, the appeal suit has to be allowed. The learned Counsel for the Respondents contended that it is a urudu name, but, it can be used as a trade name. The Defendants have produced Ex.B31-Name book showing the translation of the Urudu name ''ROSHAN'', the equivalent Tamil meaning is brightness . Of course, it seems to be a common name. Since it is a common name, it cannot be said that it cannot be used as a trade name. Therefore, I am of the view that the first contention of the Appellants that the common name cannot be used as trade mark/name is not correct. In such circumstances, I am of the view that the finding and discussion made in this regard by the lower court is correct.
9. The second contention raised by the Appellants is that the Plaintiffs/Respondents company was using the trade name only from 1999 and, whereas, the Appellants are using the said trade name right from the year 1989 onwards and therefore, the appeal suit has to be allowed.
10. The learned Counsel for the Respondents/Plaintiffs contended that they are using the said trade name even prior to 1989 and subsequently, renewal could not be made in the year 1990 and therefore, the judgment and decree of the trial court has to be confirmed. In support of their claim, the Respondents/Plaintiffs relied on Ex.A47. Ex.A47 is the trade-mark Registration in the name of the Plaintiffs/Respondents which has been registered as "ROSHAN" as per Rule 37 of the Trade Mark and Merchandise Act, 1958. From this, it is very clear that the Plaintiffs/Respondents have been permitted to use the symbol and the name as ''ROSHAN'' from 08.06.1999. Therefore, the continuous usage of the said trade name has been proved by the Plaintiffs/Respondents. Ex.B40 is the letter issued by the Registration Authorities cancelling the trade mark of ''ROSHAN COMPANY'' and that the trade name of the Defendants/Appellants have been removed from the panel from 14.03.1990 onwards. Therefore, it is very clear that the Plaintiffs had been doing their business in the said trade mark prior to 1990 and thereafter, since they have not renewed the trade name and mark, their registration has been cancelled as per Ex.B40. Therefore, I am of the view that the Plaintiffs/ Respondents have proved that they were doing business upto the year 1990 and afterwards, they have ordered to remove their trade name by the panel of registration authorities. Therefore, I am of the view that the as per Ex.A47 the Plaintiffs/Respondents alone are entitled to use the said trade name from 08.06.1999 onwards.
11. The next contention of the Defendants/ Appellants is that they have been using the trade name ''ROSHEN'' in their business and they are only entitled to use the said trade name and hence, the judgment and decree of the trial court has to be set aside.
12. From the perusal of the pleadings, it is seen that both are doing the same business of Rexine bags, suit-cases, trunks and plastic goods. As per Ex.A47, the Plaintiffs are doing the business in the trade name ''ROSHAN''. Incidentally, we have to see that the Plaintiffs have vacated the premises in which the Defendants/Appellants have occupied and doing the same business in such a way he developed the same business. Of course, it is not very germane to decide the facts of the case at this point of time. I am of the view that both the persons are carrying on their business in the same trade name which is not disputed. Once the Plaintiffs are entitled to use the word ''ROSHAN'', the Defendants /Appellants are not entitled to use the said trade name and as well as "ROSHEN'' as pointed out by the learned Counsel for the Plaintiffs/Respondents.
13. Therefore, I am of the view that looking from all the angles, the Defendants/Appellants have not made out a good case to use the trade name ''ROSHAN'' and therefore, the judgment and decree of the trial court has to be confirmed and the appeal is liable to be dismissed. Both the points answered against the Appellants.
14. In the result, the appeal suit is dismissed with costs, confirming the judgment and decree of the trial court in O.S. No. 1 of 2000, dated 19.04.2002. Consequently, connected Civil Miscellaneous Petitions are dismissed.
