Case Summary Task

INDEX OF CASE
NAME OF CASE PRECIOUS JEWELS & ORS. V. VARUN GEMS (2013)

BENCH PRADEEP NANDRAJOG & MANMOHAN SINGH, JJ.
COURT DELHI HC
RATIO If a word forming a part of the mark has come in trade to
be used to identify the goods of the owner of the
trademark, it is an infringement of the mark itself to use
that word as the mark or part of the mark of another trader
for which confusion is likely to result.
SUMMARY
The case was between two separate firms (JEWELLERY SHOPS) consisting of members
from the same family, sharing the same surname – ‘Rakyan’. These firms were each engaged
in a family business. The parties’ shops were also “abutting” each other. The plaintiffs
(Varun Gems) in the original suit was the registered proprietor of “RAKYAN FINE
JEWELLERY” contended that they had a trademark over the phrase ‘Rakyan’ and therefore
sought an injunction to restrain the defendants from using the same for their shop, with the
name NEENA AND RAVI RAKYAN”.
Court noted, that registration is prima facie proof of evidence u/s 31 and can be used against a
person who passes off its goods/services under his name.
Court extensively discussed sec-34 and 35, which talks of vested rights, which states that
even a registered proprietor cannot interfere with the rights of a person having a prior and
continuous usage (valid defence against infringement), provided a clear and cogent evidence
of the same must be provided. The standard of proof is much rigorous in such a scenario and
the continuous usage must be in a commercial sense.
Court noted that in this case, there is no prior or continuous usage of the mark by the
defendant since 1986, as claimed. In considering whether a mark has become distinctive by
user, the extent of user must be sufficiently large although universal use/knowledge
throughout the country is not required to establish distinctiveness.
SURNAME: application of sec 35 (bona-fide use)
Bona-fide use normally means the honest use by the person of his own name without any
intention to deceive the public or to exploit the goodwill acquired by another trader.
Whether a surname has acquired a secondary meaning wrt particular goods or services is a
question of fact (decided on evidence). If secondary meaning is established by the plaintiff
then infringement is deemed, irrespective of the intention of the defendant. (i.e., if there is a
likelihood of confusion).
In this case there is no bona-fide use, as the shop of the defendant is right next door to the
shop of the plaintiff. Such use would tantamount to confusion/deception in the minds of the
consuming public. Thus, they are not entitled to get the benefit of sec-35. Moreover
“RAKYAN” is not a common surname, even otherwise common surnames are also protected
if they establish secondary meaning.
The High Court on considering this plea, observed that a prima-facie case of infringement is
made and granted an interlocutory order restraining them from using the phrase as their
trademark, however, the defendants were allowed to use the same (A unit of Neena & Ravi
Rakyan) on their invoices, account books, packaging material as a genuine trade description.
NOTE: Later the SC reversed the findings of the Delhi HC. The court in its ruling did not
venture much reasoning but held that the defence of S.35 was indeed available to the
appellants and therefore the order of the High Court was quashed and set aside. The court
also comments stating that it noted no similarities between the hoardings of the two parties.
INDEX OF CASE
NAME OF CASE MIDAS HYGIENE INDUSTRIES LTD. V. SUDHIR

BHATIA & ORS. [2004]
BENCH S.N. VARIAVA & H.K. SEMA, JJ.
COURT SUPREME COURT
RATIO (order) Mere delay in bringing an action is not sufficient to defeat
grant of injunction, it must be granted if adoption of the
mark is prima facie dishonest.
SUMMARY
Appellants filed a suit for infringement of copyright against the Respondent. They were the
prior users of the mark “Laxman Rekha” (since 1991). Defendants has not given any reason
to adopt the trademark “Magic Laxman Rekha”. Single judge granted interim injunction
preventing the Respondents from using the same. The division bench vacated the order
merely because there were delay in bringing the action by the plaintiff.
SC observed that mere delay in bringing an action is not sufficient to defeat grant of
injunction, it must be granted if adoption of the mark is prima facie dishonest. Allowed
appeal and reversed the order of the Division bench.
INDEX OF CASE
NAME OF CASE S. SYED MOHIDEEN V. P SULOCHANA BAI

BENCH H.L. DATTU & A.K. SIKRI, JJ.
COURT SUPREME COURT
RATIO As per the scheme of the Act, rights of prior user are
recognized superior than that of the registration and even
the registered proprietor cannot disturb interfere with the
rights of prior user.
SUMMARY
The Respondent herein is a registered owner of trade mark 'Iruttukadai Halwa'. Though, this
trade mark was got registered by the Respondent/plaintiff sometime in the year 2007, as
would be noted hereafter, according to the Respondent/plaintiff the business of selling halwa
in the aforesaid name was started by her father-in-law way back in the year 1900. When she
found that Appellant was also selling Halwa under the trade name 'Iruttukadai Halwa', she
filed suit for declaration, permanent injunction and other reliefs on the ground that the
Appellant had adopted deceptive similar trade mark to confuse the consumers.
Trial court decreed in favour of respondent, the same is upheld by the HC on the ground that
the trade mark of the Appellant, even if it is registered, would cause deception in the mind of
public at large and the Appellant is trying to encash upon, exploit and ride upon on the
goodwill of the Respondent herein. The Apex Court agreed and observed:
A collective reading of sec 27, 28, 29 and 34 shows that the rights conferred by registration
are subject to the rights of a Prior User. Common law rights are distinct from the rights
conferred by the Trademark Act. Thus, the scheme of the Act is such where rights of prior
user are recognized superior than that of the registration and even the registered proprietor
cannot disturb interfere with the rights of prior user.
From the reading of Section 27(2) of the Act, it is clear that the right of action of any person
for passing off the goods/services of another person and remedies thereof are not affected by
the provisions of the Act. Likewise, the registration of the mark shall give exclusive rights to
the use of the trademark subject to the other provisions of this Act. Thus, the rights granted
by the registration in the form of exclusivity are not absolute but are subject to the provisions
of the Act.
It is also recognized principle in common law jurisdiction that passing off right is broader
remedy than that of infringement. This is due to the reason that the passing off doctrine
operates on the general principle that no person is entitled to represent his or her business as
business of other person.
Thus, respondent is able to establish that the trademark 'Iruttukadai Halwa' has been used by
the predecessors since 1900. The same is not only famous in Tamil Nadu but in various parts
of India. Thus, the appeal is dismissed and the Respondents shall be entitled to a cost of Rs
50,000/-.

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INDEX OF CASE

NAME OF CASE PRECIOUS JEWELS & ORS. V. VARUN GEMS (2013)

NAME OF CASE MIDAS HYGIENE INDUSTRIES LTD. V. SUDHIR

NAME OF CASE S. SYED MOHIDEEN V. P SULOCHANA BAI

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