Regal Jewellers (An Indian Partnership Firm) v. Faris Rahman R V Nivas

## **IN THE HIGH COURT OF KERALA AT ERNAKULAM** ## **PRESENT** **THE HONOURABLE MR. JUSTICE SATHISH NINAN THURSDAY, THE 1[ST] DAY OF JUNE 2023 / 11TH JYAISHTA, 1945** **FAO NO. 46 OF 2023** **AGAINST THE ORDER IN IA 3/2022 IN OS 8/2022 OF I ADDL. DISTRICT COURT,THRISSUR** **-----** ## **APPELLANT/PLAINTIFF:** M/S REGAL JEWELLERS (AN INDIAN PARTNERSHIP FIRM) HAVING ADDRESS AT ROOM NO. 8/884, KANJIRANGAT BUILDING, PONNANI ROAD, EDAPPAL, MALAPPURAM, PIN - 679576, KERALA, INDIA REPRSENTED BY ITS MANAGING PARTNER VIBIN DAS T.S. BY ADVS. JOHN MATHEW MATHEW JOHN (JMA) VINU SASIDHARAN ## **RESPONDENT:** MR. FARIS RAHMAN R V NIVAS, RAYAMARAKKAR VEETIL (H), EDAPPULLY, GURUVAYOOR, THRISSUR DISTRICT, KERALA., PIN - 680506 BY ADVS. SANTHOSH P.PODUVAL R.RAJITHA(K/870/2005) CHITHRA S.BABU(K/376/2012) THIS FIRST APPEAL FROM ORDERS HAVING COME UP FOR ADMISSION ON 01.06.2023, THE COURT ON THE SAME DAY DELIVERED THE FOLLOWING: ## **SATHISH NINAN, J.** **= = = = = = = = = = = = = = = = = = F.A.O. No.46 of 2023** **= = = = = = = = = = = = = = = = = = Dated this the 1[st] day of June, 2023** ## **J U D G M E N T** The interlocutory application for injunction in a suit alleging infringement of trade mark and passing off, was dismissed by the trial court. The plaintiffpetitioner is in appeal. 2. Plaintiff is the proprietor of the registered trade mark “REGAL”. The plaintiff is engaged in the business of jewellery. The plaintiff markets products also under the sub brands “PAITHRIKA, REGALIA, MY DIAMOND” with primary brand “REGAL”. Recently the defendant has been making preparations to start a jewellery outlet in the name and style “REGALIA GOLD AND DIAMONDS”. Thereupon the plaintiff has filed the suit alleging infringement of his trade mark “REGAL” and also alleging passing off, under the trade name “REGALIA”. Along with the suit the plaintiff filed IA 3/22 for a temporary injunction to restrain the defendant from **F.A.O. No.46 of 2023** -: 2 :- using the trade mark “REGAL” or “REGALIA”. 3. The respondent contended that the trade mark of the plaintiff-petitioner and the respondent are different and are not similar. The respondent had been doing business in jewellery since the year 2019. It was also contended that the plaintiff-petitioner had not used the trade mark “REGALIA” prior to filing of the suit. 4. The trial court, after considering the materials on record and hearing the parties, dismissed the application. 5. Heard learned counsel Sri.John Mathew on behalf of the appellant and Sri.Santhosh Poduval on behalf of the respondent. 6. It is not in dispute that “REGAL” is the registered trade mark of the plaintiff. The defendants do not claim that they have any intention to use the trade mark “REGAL”. It is admitted by the plaintiff that, “REGALIA”, claimed to be a sub-brand of the plaintiff, is not a registered trade mark. **F.A.O. No.46 of 2023** -: 3 :- Plaintiff alleges infringement of his trade mark “REGAL”, and passing off under his trade mark “REGALIA”. 7. The learned counsel for the appellant placed reliance on various authorities to justify the clubbing of causes of action for violation of trade mark and passing off. The authorities are uniform on the permissibility of such course. 8. When infringement of trade mark is alleged, it is to be proved that (i) the trade mark is registered; and (ii) the trade mark of the opponent is identical or deceptively similar to the registered trade mark. Section 2(h) of the Trade Marks Act, 1999 defines the words “deceptively similar” thus, “A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion”. - 9.The learned counsel for the appellant relies on - the judgment of the Apex Court in _**Ruston and Hornby Ltd. v.**_ **F.A.O. No.46 of 2023** -: 4 :- _**Zamindara Engineering Co. AIR 1970 SC 1649**_ , wherein the Apex Court held that where the trade mark used by the defendant is identical with the plaintiff's registered trade mark, no further enquiry is necessary. The court need not enquire whether the infringement is likely to deceive or create confusion. However, when the trade marks are not identical but similar, the courts will consider the likelihood of confusion or deception by the usage of such marks. In _**Heinz Italia and Another v. Dabur India Ltd. 2007 6 SCC 1**_ , the Apex Court after referring to various other judgments held that in a passing off action the similarities rather than dissimilarities have to be taken note of. It was also held that phonetic similarity cannot be ignored. 10. In the instant case, as noticed by the trial court, the term “REGAL” and “REGALIA” cannot be said to be identical or similar, visually or phonetically. At any rate, the terms could not create any confusion to an **F.A.O. No.46 of 2023** -: 5 :- ordinary customer whether the marks are one and the same. Therefore, it could not be said that there is infringement of the trade mark. 11. Now coming to the allegation of passing off, three essential elements are necessary to maintain a passing off action. They are (i) reputation of the goods; (2) possibility of deception; and (3) likelihood of damage. The person who alleges passing off has to establish that his trade mark or trade name has acquired good reputation among the public. The extent of reputation established by him is of significance. _[_ _**United**_ _**Trading Co., Puthanathani and Ors. vs. United Trading Co., 2017 (4) KLJ 59, Mahavir Rice and Pulse Mills vs. Jaikrishnan Trading Co. and Ors, 2009 (4) KLT 593, Laxmikant V. Patel v. Chetanbai Shah, 2002 (110) Company Cases 518** ]._ The plaintiff claims that he had been using the sub-brand name “REGALIA” since the year 2015. To substantiate the same, the plaintiff relied on Ext.A32 dated 12.07.2015 which is the copy of a brochure **F.A.O. No.46 of 2023** -: 6 :- with regard to inauguration of a new show room. Therein, the diamond section is seen named as “REGALIA”. But for a brochure, there is no material available to indicate user of the name “REGALIA” by the plaintiff. On the other hand, Exts.B1 to B5 documents produced by the defendant indicate that since the year 2019 they have been doing business in jewellery under the trade mark “REGALIA” at Koilandy. 12. As noticed supra, when passing off is alleged, it needs to be proved that they have established reputation in respect of the goods under the trade name. It is a matter which requires evidence. As noticed, the defendant had been doing business under the trade name since the year 2019. Hence, on the above discussions it could only be held that the plaintiff has not made out a prima facie case and balance of convenience to secure an order of injunction. The conclusion arrived at by the trial court cannot be said to be perverse. **F.A.O. No.46 of 2023** -: 7 :- In the result, the appeal fails and is dismissed. It is clarified that the findings entered into in this judgment and trial court were purely for consideration of the interlocutory application and the suit shall be disposed of untrammelled and uninfluenced by any of the findings therein. Sd/- **SATHISH NINAN JUDGE** kns/- //True Copy// P.S. to Judge