TARUN JAIN Vs MANOJ JAIN AND ANR.
Bench: SINGLE BENCH
Acts Referenced
Judgement Snapshot
Case Number
1356 of 2016
Hon'ble Bench
Rajiv Sahai Endlaw
Advocates
Prachi Agarwal, Vivek Chib, Archana Sahadeva, Nikhil Lal, Pracheta Kar
Acts Referred
- Trade Marks Act, 1940, Section 34, Section 12
Judgement Text
Translate:
1. The plaintiff has instituted this suit inter alia for permanent injunction to restrain the defendants Manoj Jain and Mamta Jain from infringing the trade mark ''NIKKY POINT'' of the plaintiff by using the trade marks/names ''NIKKY FASHION'' and ''NIKKY GIRLS WEAR''.
2. Summons of the suit and notice of the application for interim relief were issued, though no ex-parte relief sought granted.
3. On 20th October, 2016, the senior counsel for the defendants contended that the business of ''NIKKY POINT'' was in fact of the defendant No.1 and it is the defendant No.1 who has built and developed the same and the plaintiff at the time of commencement of the business was a minor and was like a trainee under the defendant No.1. Finding prima facie from the documents filed by the plaintiff that the business was in the name of the plaintiff, even though the defendant No.1 may have been the face of the business and further finding that the registration of the year 2007 of the trade mark ''NIKKY POINT'' was also in the name of the plaintiff, it was on 20th October, 2016 observed that a case for grant of ad-interim injunction restraining the defendants from using the word ''NIKKY'' or any other word/mark deceptively similar to the word/mark ''NIKKY'' was made out. At that stage, the senior counsel for the defendants offered to deposit a sum of Rs.5 lakhs in this Court to compensate the plaintiff for loss if any, to enable the defendants to continue using the marks ''NIKKY FASHION'' and ''NIKKY GIRLS WEAR'' on the occasion of the festival of ''Diwali'' of the year 2016. Accepting the said undertaking of the defendants and in view thereof and subject to the amount being deposited, at that stage, interim injunction was not granted.
4. Since then issues have been framed in the suit.
5. The counsels have been heard.
6. It is not in dispute that the plaintiff is the registered proprietor since 19th January, 2007 of the trade mark ''NIKKY POINT'' in Class 25 i.e. for readymade garments and the business in the name and style of ''NIKKY POINT'' of readymade garments is being carried on at Gandhi Nagar Market, Delhi.
7. It is also not in dispute that the father of the defendant No.1 and the paternal grandfather of the plaintiff are brothers.
8. It is also not in dispute that the defendant No.1 was earlier associated with the business in the name and style of ''NIKKY POINT''. While according to the plaintiff, the business was always of the plaintiff and the defendant No.1 was allowed to be associated with the business on account of relationship, according to the defendants, the business was set up and established by the defendant No.1 and the sales tax registration was got done in the name of the plaintiff owing to the relationship between the parties and that the benefits derived from the business in the name and style of ''NIKKY POINT'' were shared equally between the defendant No.1 and the father of the plaintiff.
9. The defendants in this context also contend that the trade mark ''NIKKY POINT'' was conceived and adopted by the defendant No.1 and registration thereof in the name of the plaintiff was again on account of the close relationship between the parties.
10. It is also not in dispute that since the plaintiff and the defendant No.1 have parted, the business earlier being carried on in the name and style of ''NIKKY POINT'' is being carried on by the plaintiff and the defendant No.1 along with his wife defendant No.2 has set up separate business in the name of ''NIKKY FASHION'' and using the mark ''NIKKY GIRLS WEAR''.
11. Though an issue has already been framed, whether the use of the names/marks ''NIKKY FASHION'' and ''NIKKY GIRLS WEAR'' or any other mark with the word ''NIKKY'' by the defendants amounts to infringement of the trade mark ''NIKKY POINT'' and the defendants passing off their goods/business as that of the plaintiff but the counsel for the defendants has today not addressed on the said aspect and in my view, rightly so inasmuch as there can be no two views that use by the defendants of ''NIKKY FASHION'' and ''NIKKY GIRLS WEAR'' or any other mark with the word ''NIKKY'', in relation to the same goods/business and in the same Gandhi Nagar Market, Delhi and from a premises in close proximity to the premises where the business in the name of ''NIKKY POINT'' has been carried on and is being carried on, will amount to infringement of the trade mark ''NIKKY POINT'' and the defendants passing off their business/goods as that of the plaintiff.
12. The counsel for the defendants has however argued (i) that this suit for reliefs on the basis of infringement of trade mark and passing off, being between family members, has to be viewed differently from a dispute between trade persons or between business houses or between industries; (ii) that the defendants have filed documents before the Court to show that it is the defendant No.1 who had started the business in the name of ''NIKKY POINT'' and who was carrying on the said business and who had conceptualised the trade mark ''NIKKY POINT''; (iii) that the plaintiff at that time was 12 years of age; (iv) that the plaintiff has made false averments in the plaint regarding nature of association of the defendant No.1 with the business of ''NIKKY POINT''; (v) that the defendant No.1 as the person who had conceptualised the trade mark cannot be restrained from using the same; (vi) that issues have already been framed on the aspect of who was the owner of the business of ''NIKKY POINT'' and whether the defendant No.1 had conceived, adopted and conceptualised the mark ''NIKKY POINT'' and trial can be expedited; (vii) reference has been made to Sections 12 & 34 of the Trade Marks Act, 1999 to contend that the defendant No.1 thereunder is entitled to use the mark ''NIKKY''; (viii) that the plaintiff will not suffer any irreparable loss and injury, as the Income Tax Returns (ITRs) of the plaintiff show an income from the business of the trade mark ''NIKKY POINT'' of Rs.5 lakhs to Rs.6 lakhs per annum only; (ix) that the defendants are not questioning the validity of the registration of the trade mark ''NIKKY POINT'' but are rather claiming rights to the trade mark ''NIKKY POINT''.
13. The counsel for the defendants today for the first time having referred to the copy of the ITRs of the plaintiff showing income of Rs.5 lakhs to Rs.6 lakhs per annum from the said business, I have enquired from the counsel for the defendants, whether the income of the defendants from the business carried on by them under the name of ''NIKKY FASHION'' and using mark ''NIKKY GIRLS WEAR'' is substantially more than that of the plaintiff from the business of ''NIKKY POINT''.
14. The counsel for the defendants after obtaining instructions in Court from the defendant No.1 states that the defendants are income tax payee but are not showing income from their business in the their ITRs as more than Rs.5 lakhs to Rs.6 lakhs per annum.
15. I have further enquired from the counsel for the defendants, as to how the defendants can rely on Section 12 or Section 34 of the Trade Marks Act. While Section 12 of the Act is concerned with registration in case of honest, concurrent user, Section 34 saves the vested right. I have put it to the counsel for the defendants that the defendants having not pleaded any prior or concurrent user of ''NIKKY FASHION'' and ''NIKKY GIRLS WEAR'' along with ''NIKKY POINT'' and it being the admitted position that the defendants started using the marks ''NIKKY FASHION'' and ''NIKKY GIRLS WEAR'' only after disassociating with the business of ''NIKKY POINT'', cannot invoke the said provisions.
16. No response has been forthcoming from the counsel for the defendants.
17. I have further enquired from the counsel for the defendants as to what is the effect of all the arguments addressed. Even if each of them is to be upheld in trial, the fact of the matter remains that the defendant No.1 knowingly allowed registration of the mark in the name of plaintiff and allowed the mark to stand registered for nearly ten years prior to the institution of this suit in the name of the plaintiff; whether not use by the defendant No.1 of the mark ''NIKKY POINT'', even if the business under the trade mark ''NIKKY POINT'' were to be held to be of the defendant No.1, be as a permitted user and once that is so, how can the defendants today oppose the interim injunction.
18. The counsel for the defendants cannot contradict.
19. Thus, the interim injunction has to follow.
20. However, considering the peculiar facts including the relationship and association of the parties, it was proposed that the defendants can be permitted to use ''NIKKY FASHION'' and ''NIKKY GIRLS WEAR'', subject to depositing Rs.5 lakhs in this Court every three months.
21. The counsel for the defendants under instructions from the defendants offered to deposit Rs.5 lakhs every four months.
22. The matter was passed over to enable the counsel for the plaintiff to obtain instructions.
23. The counsel for the plaintiff states that the plaintiff is not willing therefor.
24. Next it was put to the counsel for the defendants that the defendants, if agree to suffer a decree for permanent injunction as sought, the decree can be made effective with effect from six months hereinafter, to enable the defendants to, in the interregnum, inform their customers and dealers and effect the change.
25. The counsel for the defendants asked for one year''s time and the counsel for the plaintiff though was agreeable to six months'' time but not for one year''s time, was prevailed upon.
26. However when dictation to that effect was commenced in the Court, it appears that the defendant No.1 has not consented thereto with a free mind.
27. The matter was again passed over to enable the counsel for the defendants to have a word with the defendants.
28. The counsel for the defendants has stated that the application for interim relief be decided on merits.
29. Accordingly, the application is allowed and defendants, during the pendency of the suit, are restrained from using the trade marks ''NIKKY FASHION'' and ''NIKKY GIRLS WEAR'' or any other mark or logo similar or deceptively similar to the trade mark ''NIKKY POINT'' of the plaintiff.
30. The application is disposed of.
31. The plaintiff seeks a direction to the defendants to also file affidavits of examination-in-chief of all their witnesses before the commencement of the cross-examination of the witnesses of the plaintiff. Reliance is placed on order dated 22nd July, 2016 in CS(COMM) No.29/2016 titled F. HoffmannLa-Roche Ltd. Vs. Natco Pharma Limited.
32. Though the order cited cannot be treated as precedent but the counsel for the defendants states that the affidavits will be filed within two weeks.
33. Granting time to the defendants to file affidavits by way of examination-in-chief of all their witnesses within two weeks, the application is disposed of.
34. The counsels inform that recording of evidence before the Court Commissioner appointed therefor is scheduled prior to two weeks granted to the defendants to file affidavits by way of examination-in-chief of their witnesses.
35. In my view, the recording of evidence as scheduled be not interfered with awaiting the affidavits by way of examination-in-chief of the witnesses of the defendants.
36. The recording of evidence before the Court Commissioner to go on as scheduled.
