Kalyan Jewellers v. Kalyanam Jewellers & Others

## **IN THE HIGH COURT OF KERALA AT ERNAKULAM** ## **PRESENT** ## **THE HONOURABLE MRS. JUSTICE C.S. SUDHA** **FRIDAY, THE 26[TH] DAY OF JULY 2024 / 4TH SRAVANA, 1946** ## **AS NO. 203 OF 1996** **AGAINST THE DECREE AND JUDGMENT DATED 02.09.1995 IN OS NO.19 OF 1994 OF DISTRICT COURT, THRISSUR** ## **APPELLANT/DEFENDANT:** - **1 KALYANAM JEWELLERS, A FIRM REPRESENTED BY ITS MANAGING PARTNER, E.O.LAWRENCE, SWARAJ ROUND NORTH, THRISSUR. (DIED, LRS IMPLEADED)** - ***2 ADDL.APPELLANT 2 - THANKAMMA LAWRENCE, AGED 59 YEARS, W/O E.O LAWRENCE, RESIDING IN THE ADDRESS EDAKALATHUR HOUSE, MUNDOOR P.O, THRISSUR DISTRICT- 680541** - ***3 ADDL APPELLANT 3 - LEMIN LAWRENCE, AGED 34 YEARS, S/O E.O LAWRENCE, RESIDING IN THE ADDRESS EDAKALATHUR HOUSE, MUNDOOR P O, THRISSUR DISTRICT- 680541** - ***4 ADDL APPELLANT 4 - LENIL LAWRENCE AGED 32 YEARS, S/O E.O LAWRENCE, RESIDING IN THE ADDRESS EDAKALATHUR HOUSE, MUNDOOR P O, THRISSUR DISTRICT- 680541** - ***5 ADDL.APPELLANT 5 - LERIN LAWRANCE AGED 30 YEARS,** - **S/O E.O LAWRENCE, RESIDING AT EDAKALATHUR HOUSE, MUNDOOR P.O, THRISSUR DISTRICT- 680541** - ***(ADDITIONAL APPELLANTS 2 TO 5 ARE IMPLEADED AS LEGAL HEIRS OF DECEASED MANAGING PARTNER, 1ST APPELLANT VIDE ORDER DATED 17/09/2021 IN I.A.NO.1/2021.)** **BY ADVS. SRI.P.R.VENKETESH SRI.G.SREEKUMAR (CHELUR) SRI.K.ASHIS SMT.PREETHY KARUNAKARAN SRI.K.RAVI PARIYARATH** ## **RESPONDENT/PLAINTIFF:** **T.S.KALYANARAMAN, PROP.KALYAN JEWELLERS, Y.M.C.A. ROAD, THRISSUR. BY ADVS. SRI.M.GOPIKRISHNAN NAMBIAR N.N.SUGUNAPALAN (SR.)** **THIS APPEAL SUITS HAVING COME UP FOR ADMISSION ON 26.07.2024, THE** **COURT ON THE SAME DAY DELIVERED THE FOLLOWING:** 2 ## A.S. No.203 of 1996 ## **C.S.SUDHA, J.** **--------------------------------------------A.S. No.203 of 1996 --------------------------------------------Dated this the 26th day of July 2024** ## **J U D G M E N T** This appeal has been filed by the defendant aggrieved by the judgment and decree dated 02/09/1995 in O.S.No.19/1994 on the file of the District Court, Thrissur. The respondent herein is the plaintiff in this suit. The parties will be referred to as described in the suit. 2. The suit was filed seeking permanent prohibitory injunction as well as mandatory injunction. According to the plaintiff, he is carrying on a business in the name and style 'Kalyan Jewellers' at Thrissur. Even though the plaintiff's business in jewellery was started two years before the institution of the suit, they have another business venture by name 'Kalyan Silks'. It is the contention of the plaintiff that the name 'Kalyan' is their trade 3 ## A.S. No.203 of 1996 name and it has gained reputation and goodwill. The plaintiff's family had adopted the name 'Kalyan' for their textile business over 40 years before the suit. Plaintiff's father's name was Kalyana Rama Iyer and it was after his name, the business was named as 'Kalyan Silks', 'Kalyan Textiles' and 'Kalyan Jewellers'. Plaintiff's family business is generally called 'Kalyan Group' because of their continuous use of the said trade name. According to the plaintiff, the trade mark 'Kalyan' is associated with the plaintiff in the minds of the public and in the business community. The defendant has started a jewellery by name 'Kalyanam Jewellers' and he is passing off gold jewellery of inferior quality to the customers as that of the plaintiff. The trade mark used by the defendant is identical to and deceptively similar to the trade name of the plaintiff. It is likely to cause confusion in the minds of the customers and public at large. There is a deceptive visual and phonetic similarity between the trade names of the plaintiff and the name dishonestly adopted by the defendant. Hence the suit. 4 ## A.S. No.203 of 1996 3. The defendant filed a written statement disputing the plaint claims. Though the plaintiff is running a jewellery by name 'Kalyan Jewellers', it has no similarity with the name of the defendant's jewellery 'Kalyanam Jewellery'. The word 'Kalyan' is a Hindi word and 'Kalyanam' is a Malayalam word. The word 'Kalyanam' is a generic term used in common parlance. Keralites are familiar with the word and there is vast difference between the names 'Kalyan' and 'Kalyanam'. From 1985 onwards, another jewellery was being run in Kanjani, under the name and style 'Kalyan Jewellery'. It is contended that at Chavakkad, there is another jewellery by name 'Kalyan Jewellers'. Contention that the plaintiff has acquired goodwill and reputation and that the defendant is attempting to pass off goods deceiving the public are incorrect. 4. Necessary issues were framed by the trial court. The parties went to trial on the basis of the aforesaid pleadings. PW1 to PW3 were examined and Exts.A1 to A35 were marked on the 5 ## A.S. No.203 of 1996 side of the plaintiff. DW1 to DW7 were examined and Exts.B1 to B21 were marked on the side of the defendant. 5. The trial court on an appreciation of the oral and documentary evidence and after hearing both sides decreed the suit by which a decree of permanent prohibitory injunction was granted restraining the defendant or anybody claiming under him from in any manner passing off and selling the gold ornaments under the trade name 'Kalyanam Jewellers' which is deceptively similar to the plaintiff's trade name 'Kalyan Jewellers'. Aggrieved, the defendant filed an appeal. This Court by judgment dated 27/07/2016 confirmed the judgment and decree of the trial court and dismissed the appeal. The defendant took up the matter in S.L.P.No.22098/2017 and the Apex Court in Civil Appeal No.9049/2019 by judgment dated 26/11/2019 held as follows- “ _4. No analysis of the factual position or the evidence produced by the respective parties has been undertaken by the High Court. Merely saying that there is no reason to interfere with the findings of the court_ 6 ## A.S. No.203 of 1996 _below is not enough when the appellant had raised several issues regarding the correctness of the said finding. The High Court ought to have addressed itself to those issues specifically either accepting the same or rejecting it, as the case may be._ _5. Suffice it to observe that the disposal of the First Appeal in this manner cannot be countenanced. Hence, the appeal succeeds and the impugned judgment and order is set aside._ _6. The parties are relegated before the High Court for reconsideration of the First Appeal on its own merits and in accordance with law._ _7. All contentions available to both parties are left open.”_ 6. Heard both sides. 7. On going through the materials on record, I find that the plaintiff is infact running his jewellery business under the name and style 'Kalyan Jewellers' on a large scale. Admittedly, the business concern of the defendant is known as 'Kalyanam Jewellers'. The defendant is also doing gold business. The business concern of the defendant is situated 2 furlongs away from 7 ## A.S. No.203 of 1996 'Kalyan Jewellers' of the plaintiff. The business establishments of the plaintiff as well as the defendant are situated in important localities in Thrissur town. The defendant when examined as DW1 admitted that he started his business on 24/08/1994. Material has come on record to show that the defendant was aware that there was another jewellery in Thrissur town having the name 'Kalyan Jewellers'. In the cross examination DW1 admitted that even before he started the business he was aware of the fact that there was another business being run in Thrissur town by the name 'Kalyan Jewellers'. He had also seen the board of 'Kalyan Jewellers' before he started his business. 7.1. Evidence has also come on record through the plaintiff examined as PW1 that for the past 85 years, his family has been running a textile business under the name 'Kalyan Group' . At the time when PW1 was examined, there were nine business establishments run by Kalyan Group in Thrissur town. They are – Kalyan Jewellers; Kalyan Silks; Kalyan Textiles; Kalyan Fabrics; 8 ## A.S. No.203 of 1996 Kalyan Vastraalaya; Kalyan Readymades; Kalyan Apparels; Kalyan Dresses and Kalyan Garments. According to PW1, these are the various business establishments of 'Kalyan Group'. PW1 also deposed that the male members of the family are known as 'Kalyan Swamikal'. It is not disputed that the grandfather of the plaintiff is T.S.Kalyana Rama Iyer and that he had started the textile business about 85 years back. According to PW1, the textile business was known by the name of his grandfather, that is, T.S.Kalyana Rama Iyer. PW1 also deposed that from 1973 onwards, the name and style of the business establishments of the Kalyan Group were given the name 'Kalyan' as it was felt that the said name was more attractive. 7.2. The defendant did not dispute the fact that there were nine business establishments run by the plaintiff's family and that those establishments were known under the name 'Kalyan'. The version of the plaintiff that his family gave the name Kalyan to all business establishments started after 1973 has also not been 9 ## A.S. No.203 of 1996 discredited or disproved. 8. The defendant when examined as DW1 admitted that he had seen the board of Kalyan Jewellers before he started his gold business under the name and style 'Kalyanam Jewellers'. According to the plaintiff, the board of the defendant looks similar to the board of his concern and that customers are going to the business establishment of the defendant under the mistaken impression/notion that 'Kalyanam Jewellers' is also one of the business establishments of 'Kalyan Group'. According to him, the gold ornaments being sold in the defendant's establishment are inferior in quality. The customers would then get the impression that the gold ornaments sold by one of the establishments of Kalyan Group are of inferior quality and thereby the business of the plaintiff would be adversely affected. The trade name used by the defendant is quite similar to the trade name of the plaintiff. The defendant disputed the case of the plaintiff that his trade name was quite similar to that of the plaintiff and contended that there 10 ## A.S. No.203 of 1996 was no resemblance at all. The main complaint of the plaintiff was that that the defendant was passing off goods by running the jewellery shop 'Kalyanam Jewellers' as if the gold ornaments were that of the plaintiff. 9. The trade name used by the defendant in his gold business is no doubt identical with and deceptively similar to the plaintiff's trade name. Therefore there is every possibility of the customers being misled by the name of the defendant's establishment. There cannot also be any dispute that the name of the defendant is quite phonetically similar to the trade name used by the plaintiff. 10. The defendant had also a case that 'Kalyan' is the name of a place in Maharashtra and that there is also a railway station by the said name and therefore there was nothing distinctive in the name. However, as rightly held by the trial court, it may be true that there is a place by name Kalyan and also a railway station by the said name. But they are not situated in Thrissur. Evidence has 11 ## A.S. No.203 of 1996 come on record to show that there are about nine business establishments in Thrissur town known by the name 'Kalyan'. Those establishments are admittedly being run by the members of the plaintiff's family. The grandfather of the plaintiff was T.S.Kalyana Rama Iyer and therefore there is no reason to disbelieve the case of the plaintiff that the name 'Kalyan' was given to the business establishments after the name of his grandfather. 11. In an action for passing off based on tort, distinctiveness of the plaintiff's name and injurious use of the same name by the defendant is one of the aspects that has to be taken into consideration. The plaintiff will have to prove that by using the disputed name, the name has become distinctive of his goods and the use of the same name is likely to deceive and thus cause confusion and injury to the business reputation of the plaintiff, though proof of actual damage or fraud is unnecessary. The evidence on record clearly revealed that the word 'Kalyan' had 12 ## A.S. No.203 of 1996 become distinctive of the plaintiff's business. 12. As held by the by the Apex Court in **Parle Products (P) Ltd. v. J.P. and Co., Mysore, AIR 1972 SC 1359** , for deciding whether a name is deceptively similar to another, the broad and essential features of the two are to be considered. It is not necessary that the two names have to be placed side by side to find out if there is any difference in its designs and whether they are of such a character so as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears an overall similarity of the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. 13. In the case on hand, the name 'Kalyan' of the plaintiff and the name 'Kalyanam' are apparently and obviously visually and phonetically similar leading to every possibility of the customer being misled. Therefore, the trial court on the basis of the materials on record and the precedents referred to in the 13 ## A.S. No.203 of 1996 impugned judgment was justified in holding that the trade name 'Kalyanam' used by the defendant is deceptively similar to the trade name 'Kalyan' used by the plaintiff and that the word 'Kalyan' is not descriptive and that it has acquired distinctiveness in the business of the plaintiff. Therefore, I find no illegality, perversity or any infirmity in the findings of the trial court. 14. Another interesting aspect which needs to be taken note of is the contentions raised by the plaintiff/respondent in the counter affidavit to C.M.No.1380/1996 filed by the defendant/appellant to condone the delay in filing the appeal. Paragraph 2 and a portion of paragraph 3 of the counter affidavit reads thus- _“ 2. I am the Proprietor of Kalyan Jewellers doing business in gold ornaments at Round East, Thrissur and I had filed the suit against the petitioner for prohibitive and mandatory injunction. The decree of the court below restrained the petitioner from passing off and selling gold ornaments under the trade name Kalyanam Jewellers which is deceptively similar_ 14 ## A.S. No.203 of 1996 _to the trade name Kalyan Jewellers. The petitioner has after the decree of the court below changed his trade name as Five Star Jewellers with Kerala General Sales Tax Registration No.25112590. The new sales tax registration number was obtained on 19.10.1995 subsequent to the decree of the court below dated 2.9.1995 and the same is reflected in a sales bill issued by Five Star Jewellers. A photocopy of the sales bill issued by Five Star Jewellers to a customer of gold dated 15.8.1999 is produced herewith marked Annexure R-1(a). A photgraph of the shop with the name board Five Star Jewellers wherein the petitioner is conducting the business in gold is produced herewith marked Annexure R-1(b)._ _3. The irresistible conclusion therefore is that the petitioner is no longer interested in prosecuting the appeal as he has since then changed the trade name and obtained a new sales tax registration...........”_ 15. These facts are not seen disputed. In the light of the decree of permanent prohibitory injunction granted against the defendant, it is submitted that the name 'Kalyanam Jewellery' is not being used for the business concern of the defendant. The 15 ## A.S. No.203 of 1996 judgment and decree of the trial court is dated 02/09/1995. 29 years have elapsed since then. It appears that the defendant after the decree has been conducting his business in gold jewellery in the name and style 'Five Star Jewellers' as contended in the counter affidavit of the plaintiff/respondent. Therefore, it appears that nothing further survives in the appeal. In the result, the appeal is dismissed. Parties to suffer their respective costs. Interlocutory applications, if any pending, shall stand closed. Sd/- **C.S.SUDHA JUDGE** Jms