Sunday, 14 February 2016

When a person is not entitled to use family name of his wife as trademark of his business?

  The main contention advanced by the learned counsel for

the appellant is that 'Panikkassery' being the family name of the wife of


the defendant, the use of the said name by the defendant will not



amount to infringement. Section 35 of the Trade Marks Act relied on by



the defendant in support of his contention reads thus :



                     "Section 35. Saving for use of name, address or description of



              goods or services--Nothing in this Act shall entitle the proprietor or a



              registered user of a registered trade mark to interfere with any bona fide



              use by a person of his own name or that of his place of business, or of the



              name, or of the name of the place of business, of any of his predecessors



              in business, or the use by any person of any bona fide description of the



              character or quality of his goods or services."



Section 35 protects bona fide use by a person of his own name or that of



his place of business, or of the name, or of the name of the place of



business, of any of his predecessors in business. It is evident from



Section 35 that the said Section permits only bona fide use of the name



referred to in the Section. Bona fide use means honest use by a person



without any intention to deceive anybody or without any intention to



make use the good will of another. In the instant case, 'Panikkassery' is



the family name of the wife of the defendant. The said name is not a



name contemplated under Section 35 of the Trade Marks Act and at any



rate, the said name being the family name of the wife of the defendant, it



is difficult to hold that the use of the said name by the defendant is bona


fide and without any intention to make use the good will of the plaintiff.



The defendant is, therefore, not entitled to the protection under Section



35 of the Trade Marks Act.

IN THE HIGH COURT OF KERALA AT ERNAKULAM


                                                      PRESENT:



     THE HONOURABLE MR. JUSTICE P.B.SURESH KUMAR



             THURSDAY, THE 19TH DAY OF MARCH 2015



                          FAO.No. 292 of 2014 



            SHOUKKATH.J, 

Vs


            M.MUHAMMED NOUSHAD,

           
Citation;AIR 2016(NOC)134 Kerala

      The defendant in an action for infringement of a trade mark has


come up in this appeal challenging the order of temporary injunction



passed against him in the suit.



      2.    The case of the plaintiff is that he is engaged in the



manufacture and sale of jewellery and related goods in the name



'Panikkassery Jewellers' from the year 1996; that the name



'Panikkassery' has been registered by him as his trade mark under



the Trade Marks Act; that during the year 2002, the defendant who is



the brother-in-law of the plaintiff has opened a jewellery under the



name 'Shehanaz Panikkassery Jewellers' in the vicinity of the



jewellery of the plaintiff and that the use of the name 'Panikkassery'



by the defendant amounts to infringement of the trade mark of the



plaintiff. The relief sought in the suit is a prohibitory injunction



restraining the defendant from infringing the registered trade mark



of the plaintiff.



         3.      Along with the suit, I.A.No.1319 of 2014 was filed by the


plaintiff seeking an order of temporary injunction restraining the



defendant and others acting under him from infringing the trade mark



of the plaintiff by using the name 'Panikkassery'.        The defendant



contested the application for temporary injunction contending inter alia



that 'Panikkassery' is the family name of his wife; that it was he who



started 'Panikkassery Jewellers' in the year 1996 with the plaintiff; that



under a family arrangement, he has given up his rights in the business



carried on in the name 'Panikkassery Jewellers'; that at the time of



parting, there was no agreement that the defendant shall not use the



name 'Panikkassery' and that therefore, the use of the name



'Panikkassery' by the defendant will not amount to infringement.



         4.     The documents produced by the plaintiff in support of



I.A.No.1319 of 2014 were marked as Exts.A1 to A38 and the documents



produced by the defendant in support of the contentions raised in the



said application were marked as Exts.B1 and B2. The court below, on an



appraisal of the materials on record, granted the interim order of



temporary injunction sought by the plaintiff.           The defendant is



aggrieved by the said order.





         5.     Heard the learned counsel for the appellant and the



respondent.



         6. The learned counsel for the appellant contended that



'Panikkassery' being the family name of the wife of the defendant, the



use of the said name by the defendant for his jewellery will not amount



to infringement. He relied on section 35 of the the Trade Marks Act in



support of the said contention. The learned counsel for the appellant



has also contended that the materials on record would establish that



the defendant had been doing business jointly with the plaintiff in the



name 'Panikkassery Jewellers' and in the absence of any agreement to



the effect that the defendant shall not use the said name, it has to be



presumed that the defendant has been permitted to use the trade name



'Panikkassery'. He relied on section 53 of the the Trade Marks Act, in



support of the said contention. The learned counsel for the appellant



has further contended that the names 'Panikkassery Jewellers' and



'Shehanaz Panikkassery Jewellers' have no similarity and therefore, at



any rate, it cannot be contended that the defendant has infringed the



trade mark of the plaintiff.



         7. Section 29 of the Trade Marks Act deals with infringement of



registered trade marks. Sub-sections (1) to (3) of Section 29 read thus:


                        "29. Infringement of registered trade marks:- (1) A registered trade



                mark is infringed by a person who, not being a registered proprietor or a



                person using by way of permitted use, uses in the course of trade, a mark



                which is identical with, or deceptively similar to, the trade mark in relation to



                goods or services in respect of which the trade mark is registered and in such



                manner as to render the use of the mark likely to be taken as being used as a



                trade mark.




                        (2) A registered trade mark is infringed by a person who, not being a



                registered proprietor or a person using by way of permitted use, uses, in the



                course of trade, a mark which because of--



                        (a)its identity with the registered trade mark and the similarity of the



                goods or services covered by such registered trade mark; or



                        (b)its similarity to the registered trade mark and the identity or



                similarity of the goods or services covered by such registered trade mark; or



                        (c) its identity with the registered trade mark and the identity of the



                goods or services covered by such registered trade mark,



                is likely to cause confusion on the part of the public, or which is likely to have



                an association with the registered trade mark.




                        (3) In any case falling under clause (c) of sub-section (2), the court



                shall presume that is is likely to cause confusion on the part of the public."



It is evident from Section 29 of the Trade Marks Act that if the use of a



mark in the course of trade, which because of its similarity to the



registered trade mark and the identity to the product or service covered



by the registered trade mark, is likely to cause confusion to the public as



to the source of the product or service, such use would amount to


infringement. It is settled that the question whether the use of a mark



is likely to cause confusion among the public as to the source of the



product or service is to be determined in the context of an unwary



person of average intelligence with imperfect recollection. [See



Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449)].



         8.      The fact that the plaintiff has obtained registration of the



trade mark 'Panikkassery' under classes 14 and 35 of the fourth



schedule to the Trade Marks Rules, 2002 is not in dispute. Likewise, the



fact that the plaintiff and the defendant are engaged in identical



business is not in dispute. Again, the fact that the registered trade mark



of the plaintiff is part of the name of the jewellery of the defendant is



not in dispute. The issue to be considered, therefore, is whether the



trade name 'Shehanaz Panikkassery Jewellers' is             likely to cause



confusion among the public as to the source of the products and



services of the defendant. Ext.A1 is the licence obtained by the plaintiff



from Kottankara Grama Panchayat on 9.4.1996 to run a jewellery in the



name 'Panikkassery Jewellers'. Ext.A2 is the registration obtained by the



plaintiff under the Kerala General Sales Tax Act on 18.10.1996 in the



name 'Panikkassery Jewellers'. Ext.A3 is the copy of the counterfoil of


the return of income tax submitted by the plaintiff on 27.2.1998 in



connection with the business carried on by him in the name



'Panikkassery Jewellers'. Ext.A5 is a copy of the proceedings initiated



against the plaintiff under the Kerala General Sales Tax Act on 11.2.1998



in connection with the business carried on by him in the name



'Panikkassery Jewellers'. Ext.A9 is the registration obtained by the



plaintiff under the Shops and Commercial Establishments Act in



connection with the business 'Panikkassery Jewellers'. Ext.A9 indicates



that the plaintiff has been doing business in the name 'Panikkassery



Jewellers' from 31.3.1996. Exts.A8, A12, A14, A15, A17 and A18 are the



advertisements of 'Panikkassery Jewellers'. Among them, Ext.A8 is an



advertisement published on 30.8.2003. Ext.A16 is the copy of a



proceedings initiated against the plaintiff under the Kerala Value Added



Tax Act on 20.5.2008. Exts.A30 and A31 are the photographs of the



jewellery of the plaintiff. Exts.A32 and 33 are the photographs of the



jewellery of the defendant. Ext.A34 is an advertisement of the jewellery



of the defendant. The documents referred to above would indicate



beyond doubt that the plaintiff has been doing business in the name






'Panikkassery        Jewellers' from   1996   onwards.      The   various



advertisements of the jewellery of the plaintiff also would indicate the



reputation and goodwill acquired by the plaintiff in the name



'Panikkassery Jewellers'. In Parle Products (P) Ltd. v. J.P. and Co.,



Mysore (1972)1 SCC 618), the Apex Court has held that in an action for



infringement, in order to come to the conclusion whether one mark is



deceptively similar to another, the broad and essential features of the



two alone need be considered. It was also held that it would be enough



if the impugned mark bears such an overall similarity to the registered



mark as would be likely to mislead a person usually dealing with one to



accept the other if offered to him.    A comparison of the photographs of



the shop of the plaintiff and the photographs of the shop of the



defendant, in the light of the principles aforesaid, would indicate



beyond doubt that the use of the name 'Shehanaz Panikkassery



Jewellers' by the defendant is likely to cause confusion among the public



as to the source of the products and services of the defendant. It is thus



evident that the plaintiff has made out a prima facie case for an order of



temporary injunction.



         9.      The main contention advanced by the learned counsel for


the appellant is that 'Panikkassery' being the family name of the wife of


the defendant, the use of the said name by the defendant will not



amount to infringement. Section 35 of the Trade Marks Act relied on by



the defendant in support of his contention reads thus :



                     "Section 35. Saving for use of name, address or description of



              goods or services--Nothing in this Act shall entitle the proprietor or a



              registered user of a registered trade mark to interfere with any bona fide



              use by a person of his own name or that of his place of business, or of the



              name, or of the name of the place of business, of any of his predecessors



              in business, or the use by any person of any bona fide description of the



              character or quality of his goods or services."



Section 35 protects bona fide use by a person of his own name or that of



his place of business, or of the name, or of the name of the place of



business, of any of his predecessors in business. It is evident from



Section 35 that the said Section permits only bona fide use of the name



referred to in the Section. Bona fide use means honest use by a person



without any intention to deceive anybody or without any intention to



make use the good will of another. In the instant case, 'Panikkassery' is



the family name of the wife of the defendant. The said name is not a



name contemplated under Section 35 of the Trade Marks Act and at any



rate, the said name being the family name of the wife of the defendant, it



is difficult to hold that the use of the said name by the defendant is bona


fide and without any intention to make use the good will of the plaintiff.



The defendant is, therefore, not entitled to the protection under Section



35 of the Trade Marks Act.



         10. The next contention advanced by the learned counsel for the



appellant is that the defendant has been doing business jointly with the



plaintiff in the name 'Panikkassery Jewellers' and in the absence of any



agreement to the effect that the defendant shall not use the said name, it



has to be presumed that the defendant has been permitted to use the



name 'Panikkassery'. The said contention is advanced based on Section



53 of the Trade Marks Act. Section 53 of the Act reads thus:



                       "Section 53.  No right of permitted user to take proceeding



                against infringement--A person referred to in sub-clause (ii) of clause



                (r) of sub-section (1) of section 2 shall have no right to institute any



                proceeding for any infringement."



Exts.B1 and B2 are the two documents produced by the defendant to



substantiate his contention that he was conducting the business



'Panikkassery Jewellers' jointly with the plaintiff. Among them, Ext.B1



is a copy of the lease deed executed by the defendant in respect of two



shop rooms. Ext.A19 licence produced by the plaintiff would indicate





that the jewellery of the plaintiff was housed in the premises covered by



Ext.B1 lease deed.     The plaintiff has not produced any document to



show as to how he got possession of the shop rooms covered by Ext.B1



lease deed. The defendant has no case that the plaintiff is running his



establishment in the very same premises even now. In the light of the



said documents, it has to be inferred that the plaintiff had been



conducting the business in a premises taken on lease by the defendant



for some time. Ext.B2 is a newspaper report in which it is stated that



'Panikkassery Jewellers' is an establishment run by the plaintiff and the



defendant together.



         11. The documents produced by the plaintiff as referred to above



rule out the possibility of the joint business by the plaintiff and



defendant beyond any shadow of doubt. As such, merely for the reason



that the plaintiff had conducted business in a premises taken on lease



by the defendant for some time, it cannot be held that the plaintiff and



the defendant were doing business jointly. As noticed above, Ext.B2 is



only a news paper item and the same cannot be accepted as evidence of



the facts reported in the news item. The materials on record are not



sufficient to hold that the plaintiff and defendant were doing business





together. As such, the contention of the defendant that there is an



implied permission to use the trade mark 'Panikkassery Jewellers'



cannot be accepted.



         12.     I have found that the use of the name 'Shehanaz



Panikkassery Jewellers' by the defendant is likely to cause confusion



among the public as to the source of the products and services of the



defendant. As such, the contention advanced by the learned counsel for



the appellant that the names 'Panikkassery Jewellers' and 'Shehanaz



Panikkassery Jewellers' have no similarity and therefore, there is no



question of any infringement is only to be rejected.



         In the aforesaid facts and circumstances, the decision of the court



below is perfectly in order. There is no merit in the appeal. The appeal



is, accordingly, dismissed.






                                              P.B.SURESHKUMAR, JUDGE


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