TMI Blog1981 (9) TMI 298X X X X Extracts X X X X X X X X Extracts X X X X ..... share and interests in the partnership business, goodwill, stocks etc. in favor of remaining partner, Krishan Lal Khanna, who was carrying on the said business as its sole proprietor since then. The trade name 'Kala Niketan', it is Stated, had acquired a valuable goodwill and reputation amongst the trade and public because of its long and extensive user since 1957. The annual sale from April 7. 1957 to March 31, 1958 was of ₹ 2,49,410.53. In the financial year 1975-76 it was increased to ₹ 11,06,840.70 and in the year 1976-77 the annual sale was of ₹ 10.26,420.45. The plaintiff had given wide publicity to its trade name through newspapers, radio, boarding and other media and the name is stated to have become popular amongst the public and the trade. The defendant being aware of the rights and interests of the plaintiff in this trade name, with mala fide and illegal design, adopted the same trade and started business in Sarees with a view to earn illegal profits on the reputation and goodwill of the plaintiff-firm. The defendant was passing off and causing confusion in the trade and public that he was in any way connected with the plaintiff-firm. The Saree ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ions of the Act. Similarly, section 51(1) of this Act entitles a registered user of trade mark to institute proceedings for infringement in his own name in certain circumstances. This right is subject to any agreement subsisting between, the parties. It is thus clear that an action for infringement of a trade mark is based on a statutory right. Admittedly, the action brought by the plaintiff is not an action for infringement of trade mark. It is a common law action for passing off in relation to plaintiff's business. In other words, it is an action in tort. (6) A trade name means a name under which goods are sold by a certain person and which by established usage has become known to the public as indicating that those goods are the goods of that person. To carry on business under such a name, mark, description or otherwise in such a manner as to mislead the public into believing that the business is that of another person, is an factional wrong. Just as a man is not entitled to pass off his goods as being somebody else's goods, so the man is not entitled to carry on business in such a way as to represent his business as being that of another person. This form of injury i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s are in favor of 'Kala Niketan'. plaintiff has also filed copies of assessment orders for the assessment year 1958-59 to 1975-76. These show that the plaintiff was being assessed to Income Tax for carrying on business under the trading style Messrs 'Kala Niketan'. Thus it has been proved that the plaintiff's business in Sarees under the trading name 'Kala Niketan' was going on since 1957. (9) In Paragraph 6 of his affidavit dated September 21, 1979, Shri Krishan Lal, proprietor of the plaintiff-firm, has said that his firm had been advertising its trading name 'Kala Niketan' and its products i.e. Sarees, through various media i.e. handbills, drum beating, newspapers and radio. This fact also finds corroboration from the various bills and newspapers filed by the plaintiff on record. Correctness of these averments was not controverter in the various affidavits filed on behalf of the defendant. Thus it has been proved that the plaintiff had given wide publicity to its trading name 'Kala Niketan' through newspapers, radio, etc. (10) As observed above, the plaintiff has filed copies of the assessment orders for the years 1958-59 to 1975 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... sale of Sarees and not of manufacture. Moreover, the user of this trade name is for the last more than 20 years. (12) Shri Kuldip Jain, son of Shri Lal Chand Jain, has filed an affidavit on behalf of the defendant and has stated that Messrs Kala Niketan in Karol Bagh were not very good' pay masters. This is a vague statement and is of no value. (13) The defendant is using exactly the same trade name 'Kala Niketan'. From the fact that defendant's trade name is identical it would be reasonable to assume that there will be interference with the trade and there may be a diversion of customers. There was likelihood of considerable confusion. The use of the trade name 'Kala Niketan' by the defendant was likely to deceive the plaintiff's customers in the thinking that defendant's business was that of the plaintiff's. Several affidavits have been filed on behalf of the defendant but there is no evidence that get-up, packing and other writing and marks on the goods or on packets in which the defendant offered his goods for sale show marked difference or indicate a different trade origin. Shri Kasturi Lal Tandon in paragraph 10 of his affidavit date ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the words 'Kala Niketan' were simple words in common use in the general language of the people and were descriptive of the quality and character of the goods i.e. 'Sarees in which the defendant was dealing and, Therefore, these words could not be monopolised and consequently the plaintiff was not entitled to any protection. Reliance was also placed on a letter dated January 15, 1980 issued by the Trade Marks Registry, Bombay opining that the mark 'Kala Niketan' was prima facie inherently not adapted to distinguish and was also prima facie inherently not capable of distinguishing the goods mentioned in the request within the meaning of section 9 of the Act. (15) It is settled law that if a trade name merely describes the goods or their characteristics then ordinarily the plaintiff cannot prevent others from using it. A trade name is opposed to a merely descriptive name. In Office Cleaning Services Limited v. Westminster Window General Cleaners Limited, (1946) 63 R.P.C. 39, Lord Simonds said : IT comes in the end, I think, to no more than this, that where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... information as to the general nature or character of the Sarees. The word 'Kala' is a noun and not an adjective. It cannot be said that it describes the quality of the Sarees. The word 'art' according to Chamber's Twentieth Century Dictionary (Revised Edition) is noun and means : practical skill, or its application, guided by principles : human skill and agency (opp. to nature) : application of skill to production of beauty (esp. visible beauty) and works of creative imagination (as the fine arts) : a branch of learning, esp. one of the liberal arts (see trivium, quadrivium), as in faculty of arts, master of arts; skill or knowledge in a particular department : a skilled profession or trade, craft, or branch of activity : magic or occult knowledge or influence : a method of doing a thing : a knack : contrivance : address : cunning ; artifice : crafty conduct : a wile. Applying these meanings the word 'art' cannot be said to be indicative or descriptive of the Sarees. It does not refer to Sarees or its quality. In Mohd. Rafiq and another v. Modi Sugar Mills Ltd. AIR1972Delhi46 , a Division Bench of this Court held that the reference to the character an ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ading name 'Jain Kala Niketan' and the third at Vinay Nagar Market. Defendant has not cared to file affidavits of the proprietors or the partners of the aforesaid firms. Shri Krishan Lal Khanna in his counter-affidavit dated April 9, 1980 has stated that he had visited the said shop No. 25, Vinay Nagar Market, New Delhi and the name of the said shop was 'Sari Mandir'. He has filed a photograph of that shop in support of his statement. His brother, Shambhoo Nath has also filed an affidavit stating that he had been using the trading style 'Kala Niketan' at Kamla Nagar shop and had now agreed to discontinue the use of the words 'Kala Niketan'. Thus it cannot be said that it was the common name in Delhi or that many persons were trading in Sarees under that name. (20) The Registrar of Trade Marks, Bombay, in his letter dated January 15, 1980 has opined that mark 'Kala Niketan' was prima facie inherently not adopted to distinguish and was also prima facie inherently not capable of distinguishing the goods mentioned in the request within the meaning of section 9, namely, the Sarees. His opinion is neither conclusive nor sufficient to hold that t ..... X X X X Extracts X X X X X X X X Extracts X X X X
|
