Sajeev Kumar v. Rajeev

## **IN THE HIGH COURT OF KERALA AT ERNAKULAM** ## **PRESENT** **THE HONOURABLE MR. JUSTICE DEVAN RAMACHANDRAN** **TUESDAY, THE 14TH DAY OF JULY 2020 / 23RD ASHADHA, 1942** ## **FAO.No.73 OF 2019** **ORDER IN IA 280/2019 IN OS 2/2019 DATED 05-04-2019 OF III ADDITIONAL DISTRICT COURT, THIRUVANANTHAPURAM** ## **APPELLANT/PETITIONER/PLAINTIFF:** **SAJEEV KUMAR, AGED 49 YEARS, S/O. VISWAMBHARAN, PROPRIETOR, JEWEL HUT, GENERAL HOSPITAL ROAD, STATUE, THIRUVANANTHAPRUAM** **BY ADV. SRI.T.M.RAMAN KARTHA** ## **RESPONDENT/RESPONDENT/DEFENDANT:** **RAJEEV, AGED ABOUT 40 YEARS, S/O. VALAYUDHAN,RESIDING AT GOPAL NIVAS, NEAR COSMOPOLITAN HOSPITAL, WEST PATTOM, THIRUVANANTHAPURAM AND HAVING BUSINESS AT TC 5/189, PEROORKADA JUNCTION, THIRUVANANTHAPURAM-695 005.** **BY ADVS. SRI.P.B.KRISHNAN SRI.P.M.NEELAKANDAN SRI.P.B.SUBRAMANYAN SRI.SABU GEORGE SRI.MANU VYASAN PETER SMT.P.MEERA** **THIS FIRST APPEAL FROM ORDERS HAVING BEEN FINALLY HEARD ON 14.07.2020, THE COURT ON THE SAME DAY DELIVERED THE FOLLOWING:** FAO 73/19 2 ## **JUDGMENT** ## **Dated this the 14th day of July 2020** The plaintiff in a suit, seeking a decree of prohibitory injunction restraining the defendant from infringing his registered trade mark, is the appellant. 2. The appellant/plaintiff filed O.S.No.2/2019 on the files of the District Court, Thiruvananthapuram alleging that the respondent/ defendant is infringing his registered trade mark under the name 'Jewel Hut', by using a deceptive name 'Jewel Hunt'. 3. According to the appellant, he had commenced his business under the name and style 'Jewel Hut' in the year 2004 and that he applied for registration of the trade mark in such name, which finally led to its registration on 13.08.2009. 4. The appellant asserts that the respondent is his close relative and in such capacity was allowed to assist him, so as to enable him to learn the business. He says that, however, subsequently, their relationship got strained and that in the year 2018, the respondent attempted to begin a business of his own. He FAO 73/19 3 then alleges that on 22.01.2019, in furtherance of such intention, the respondent commenced a similar business at Peroorkada Junction, adopting the name 'Jewel Hunt', which was indubitably intended to create confusion in the minds of his customers and to pass off his products as being sold by 'Jewel Hut'. He submits that, therefore, he published a caution notice in Mathrubhumi Daily having circulation in Thiruvananthapuram District but that since the respondent inaugurated his shop on 22.01.2019 with the deceptive name, he was constrained to approach the District Court by filing the suit on 24.01.2019. He says that he had, along with the suit, filed I.A.No. 280/2019 for interim injunction against the respondent from using the name 'Jewel Hunt' in violation of his registered trade mark, but that the said Court issued the impugned order declining to grant the said relief. 5. The appellant thus impugns the order of the District Court in I.A.No.280/2019 on various grounds, but primarily asserting that it had been issued without adverting to the applicable provisions of the Trademark Act or to the binding precedents cited by him at the Bar. FAO 73/19 4 6. I have heard Sri.T.M.Raman Kartha, learned counsel for the appellant and Sri.P.B.Krishnan, learned counsel for the respondent. 7. The facts in this case are not greatly disputed. The appellant concedes that the respondent is a close relative and that he was assisting him in the business under the name 'Jewel Hut'. The respondent virtually admits this in his written statement, however, contending that he had arranged for availing a loan of Rs.3 lakhs in favour of the appellant by mortgaging his own property. He then proceeds to say that this amount has been repaid and that the title documents had been released. 8. Thus, the fact that the appellant and the respondent were in good terms and in some manner associated with each other for the purpose of running the business under the name 'Jewel Hut' is not in dispute. However, the appellant asserts that he is the Proprietor of the business under the name 'Jewel Hut', which the respondent does not contest it, except by saying that he had financed some amount for the said business. Therefore, the factum of 'Jewel Hut' having been run by the appellant and that the parties were associated, at least until 2018, is not contested. FAO 73/19 5 9. The point of diversion between the parties appear to have begun in the year 2018, when both of them say, on account of certain personal differences of opinion, the respondent began a business under the name 'Jewel Hunt'. The appellant alleges that this was done so as to confuse his client base, which has been built over several years and therefore, sought for injunction. 10. The learned counsel for the appellant, in addition to the afore narration of facts, submitted that the learned District Judge has wholly erred in issuing the impugned order because he did not even choose to advert to the documents produced by the parties, along with the pleadings nor to the fact that an Advocate Commissioner had been appointed at the instance of his client. He says that it is clear from the impugned order that the learned District Judge had entered into surmises and conjunctures, more in the realm of personal opinion, while arriving at a decision that the appellant is not entitled to an order of injunction. He says that this is manifest from the order itself wherein the learned Judge says that the judgment of the Hon'ble Supreme Court in **Cadila Health Care Limited v. Cadila Pharmaceuticals Limited** ((2001) 5 SCC 73) is not applicable to a FAO 73/19 6 State like Kerala because the citizens are highly literate and would not be, therefore, swayed by deceptive sounding and looking names or boards. He thus prays that the impugned order cannot be allowed to sustain and that an order of injunction as prayed for be granted. 11. In response to the above, the learned counsel for the respondent submitted that the appellant has approached the District Court without clean hands, suppressing true facts. He says that the respondent was closely associated with the business under the name 'Jewel Hut' and that as has been admitted by the appellant, they are close relatives. He submits that the respondent had enabled the appellant to obtain a loan of Rs.3 lakhs from State Bank of India to start the business 'Jewel Hut', which was secured by an equitable mortgage created by him over his own property and that this clearly establishes that the business of 'Jewel Hut' was being run by the appellant and the respondent together. He then submitted that in spite of his client having been so intrinsically connected with the business of 'Jewel Hut', differences of opinion arose between the parties and therefore, he was constrained to start a new business, which was, in fact, supported by the appellant, with its name being FAO 73/19 7 suggested by him during their deliberations. He further submitted that, as has been stated in the written statement, it is the appellant who had encouraged the commencement of the business of his client in the name 'Jewel Hunt' and that he had done so since the new business is at least 7 to 8 kilometres away from his shop. 12. The learned counsel for the respondent vehemently submitted that all these facts would clearly show that a deception of the appellant's trade mark is completely out of question, particularly because 'Jewel Hut' is situated in a very congested area, with several other similar businesses and that the appellant has chosen the said area only because it was famous for such business establishments. He says that in contradistinction, the respondent has started his business at a distance of over 7 to 8 kilometres in Peroorkkada, which was also intended to ensure that the appellant's business or clients were not disturbed in any manner. He contends that, therefore, the learned District Judge was without any error in having dismissed the application for injunction. 13. When I assess the impugned order, it becomes manifest that the conclusions therein has been entered into by the learned FAO 73/19 8 Judge bordering on conjunctures. This is because, referring to the declarations of law of the Hon'ble Supreme Court in **Cadila Health Care Ltd.** (supra), the learned Judge has recorded in paragraph 11 of the impugned order, as under: “While examining such cases in India, what has to be kept in mind is the purchase of such goods in India who may have absolutely no knowledge of English language or of the language in which the trademark is written and to whom different words with slight difference in spellings may sound phonetically the same. The above ruling is not applicable to the facts of the case especially in State of Kerala there is high rate of literacy and further the trademark allotted to petitioner is very much different from the proposed trade mark of the respondent of the name board which exhibited in the shop of the respondent. In other words, ordinary people can very well differentiate the two shops by seeing the emblem followed by the name of the business and that the board or respondent do not have such emblem as that of the petitioner. Therefore, there is no possibility of making confusion in the mind of customers and so the phonetics similarity is not at all criteria when there is a distinguished feature in the form of pictorial exhibition followed by the name of the shop as 'Jewel Hut'.” 14. The learned Judge then goes on to say that since the shop of the respondent does not function in the vicinity of the appellant's shop, the phonetic similarity of the names used by them would be of no concern to the appellant. After saying so, the impugned order continues that 'the possibility of confusion among the customers on account of phonetics similarity may arise when the respondent broadcast or transmit the word 'Jewel Hunt' through radio or channel FAO 73/19 9 as the case may be, much less unless and until there is evidence to show that the respondent has been made the advertisement through the radio or T.V. Channel, the possibility of misleading the consumers by way of phonetics similarities does not arise at all' (sic). These findings of the District Judge are ineluctably without any legal basis and are hinged on personal opinion, which could not have been the sole basis for denial of an order, as sought for by the appellant. 15. The judgments of the Hon'ble Supreme Court in this area, which are several in number, including **Bengal Waterproof Ltd. v. Bombay Waterproof Manufacturing Company and Another** ((1997) 1 SCC 99), **Midas Hygiene Industries P. Ltd. And Others v. Sudhir Bhatia and Others** ((2004) 3 SCC 90), **Ramdev Foods Products (P) Ltd. v. Arvindbhai Rambhai Patel and Others** ((2006) 8 SCC 726), **M/s.Power Control Appliances and Others v. Sumeet Machines Pvt. Ltd.** ((1994) 2 SCC 448), have emphatically spoken about the concepts and aspects involved in the Trademark Act and the sanctity of such a mark has been reiteratingly stated by the Hon'ble Court to the effect that when a person holds a trademark and another person attempts to infringe it, grant of an injunction is the FAO 73/19 10 normal order and its denial must be the exception. 16. That said, many of the issues relevant in this case have also already obtained the attention of this Court in **Beena v. Seematti** (2020 (3) KLT 668). However, the impugned order does not refer to any of the precedents or to the declarations therein, which are binding, but has still proceeded to conclude that merely because Kerala has a high rate of literacy, the deception of the trade mark of the appellant is not possible. 17. I am afraid that these views cannot obtain the approval of this Court, particularly when it appears to be admitted, even in the written statement of the respondent, that the appellant had obtained the trade mark as early as on 13.08.2009. It is without doubt that, at least prima facie, there is some merits in the contentions of the appellant that the word 'Jewel Hut' and 'Jewel Hunt' are similar, if not deceptively so. When the respondent has chosen to use the name 'Jewel Hunt' knowing fully well that the appellant is already in possession of the registered trade name 'Jewel Hut', it is up to him to explain how he could have done so. FAO 73/19 11 18. However, the documents, which have been examined by me from the lower court records called for, would show that the respondent had applied for registration in the name 'Jewel Hunt' only in the year 2018 and the said application shows that the name is being sought for a proposed business. This would, prima facie, indicate that the respondent had applied for a trade mark only in the year 2018 and it is also on record that he has not obtained the same. Certainly, therefore, the provisions of Section 29 of the Trademarks Act, 1999 would stand attracted and the learned District Judge, therefore, ought to have verified whether the rigour of the said Section would apply to the facts of this case, particularly in view of the emphatic mandate in sub-section (3) of Section 29 of the said Act. 19. The impugned order unfortunately does not even advert to the legal provisions and as I have already said above, proceeds to dismiss the application of the appellant, edificed merely on certain personal opinion. Pertinently, if the conclusions of the learned District Judge are now allowed to stand, then every action for violating the provisions of the Trademark Act can be resisted by the respondent on the ground that Kerala has a high rate of literacy and therefore, that FAO 73/19 12 no question of deception arises. I do not intend to say anything further, since I am fully aware that the matter is still pending before the District Court. Suffice to say that the impugned order cannot stand to judicial scrutiny.. 20. In the afore circumstances and without entering into the merits of any of the disputes between the parties, I am of the firm view that the District Court must reconsider the application filed by the appellant, taking note of the various judgments of the Hon'ble Supreme Court and that of this Court, including those referred herein and pass appropriate orders thereon, as expeditiously as possible, but not later than one month from the date of receipt of a copy of this judgment. 21. Eventhough, at this time, the learned counsel for the appellant insisted that this Court issue an interim order of injunction against the respondent, I am choosing not to do so, since I am sure that the learned District Judge will consider the application and pass appropriate orders thereon in terms of this judgment, without any delay and I do not propose to influence its decision in any manner, including by granting any interim order. FAO 73/19 13 22. I reiteratingly clarify that I have not considered the merits of the dialectical contentions of the parties and that the observations in this judgment are exclusively for the purpose of this appeal. Consequently, the learned District Judge will be at full liberty to reconsider the application filed by the appellant, but untrammeled and unfettered by his views earlier arrived at, after adverting to the provisions of law, the pleadings and documents on record, as also the binding precedents. 23. In order to enable the learned District Judge for an to expeditiously comply with the directions in this judgment, I direct the parties to mark appearance before the District Court on 03.08.2020. 24. The Registry is directed to re-transmit the records to the District Court urgently. This appeal is thus ordered. Sd/Devan Ramachandran, Judge tkv