SUBHASH CHAND BANSAL Vs. KHADIMS

JUDGEMENT

(1.) THE plaintiff before this Court is engaged in the business of manufacturing and sale of boots, shoes and slippers, which he is selling under the trademark ,,KHAZANA. The plaintiff claimed to be using the aforesaid mark since 1.1.1990 and also claims that his products are well known for their intrinsic quality and enjoy tremendous goodwill and reputation in the market. The plaintiff is also the proprietor of the registered trademark KHAZANA, registered vide registration number 1070231 in Class: 25 in respect of boots, shoes and slippers. The defendants applied for trademarks Khadims Sriman KHAZANA (label), ,,Khadims Girls KHAZANA (label), ,,Khadims Srimati KHAZANA (label) and ,,Khadims Boy KHAZANA (label) under applications numbers 1312611, 1312619, 1312623 and 1312621 respectively in class 25 for clothing, footwear and headgear which were opposed by the plaintiff. The defendants, while seeking registration of the above referred marks, claimed user since 18.09.2004, whereas the plaintiff has been using the mark KHAZANA since 1.1.1990. The defendants filed two other applications bearing number 1365971 and 1365977 for registration of the trademark Khadims Baby KHAZANA and Khadims Boy KHAZANA for clothing including boots, shoes, hawai chappals and slippers and headgear included in class 25. In these applications also the defendants claimed user since 18.9.2004. The plaintiff had filed opposition to these applications as well. The plaintiff has accordingly sought an injunction restraining the defendants from using the trademark KHAZANA or any other mark which is identical or deceptively similar to that of the plaintiffs mark. The plaintiff has also claimed damages to the extent of Rs.20 lac, besides delivery up of the infringing material and rendition of accounts.

(2.) THE defendants have contested the suit. It has been stated in their counter affidavit/ written statement that defendant no.1 has no independent juristic existence, it being only an outlet owned by defendant no.2 and even that outlet is not functioning any more. It is further alleged that plaintiff did not apply for registration of the word mark KHAZANA and sought registration only in a stylized manner in which the word KHAZANA has been represented in the Trademark Journal and the application for registration. It was also alleged that defendant no.2 was in the process of applying for rectification of the registration obtained by the plaintiff. It is also alleged that defendants have at all material times representing the mark KHAZANA with the prefix KHADIMS so as to distinguish their mark from other marks. It is also claimed that use of prefix KHADIMS is sufficient to distinguish the goods of the defendants from the goods of the plaintiff. It is also stated in the written statement/ counter affidavit that the defendant No.2 intend to sell the goods with KHAZANA suffix from its own departmental stores and, therefore, there is no possibility of any confusion amongst public. It is further alleged that the sale of the defendants from KHAZANA product was Rs.121,251,927/- as against the plaintiffs sale of Rs.11,87,830/- in the year 2005- 06 and the defendants incurred publicity expenses amounting to Rs.32,49,666/-, in respect of the mark KHAZANA for the year 2005-06. The defendants have placed on record attested photocopies of as many as five registrations in class 25 in respect of boots, shoes, hawai chappals, slippers and headgears. In three of them, the word KHAZANA in conjunction with other word(s) has been used on the labels which have been registered by Trademark Registry. The remaining two are word mark registration of the words ,,KHADIMS KHAZANA and ,,KHADIM KA KHAZANA. The defendants were directed to file legal proceedings certificates in respect of the aforesaid registrations. On 21.04.2011, the learned counsel for the plaintiff stated that the plaintiff proposed to challenge registration/ application Nos.1365976, 1341765, 1281371, 1276320 and 1339523, all in Class 25, before the Intellectual Property Appellate Board. The plaintiff was accordingly given three months time to apply to the Intellectual Property Appellate Board, for rectification of the registration of the aforesaid trademarks. An additional issue was also framed on that date. Vide subsequent order dated 10.10.2001, the trial of the suit was stayed by this Court in terms of Section 124(2) of the Trademarks Act till final disposal of the rectification proceedings which the plaintiff had filed on 21.07.2011, in respect of the said registrations in favour of defendant no.2. However, during the course of hearing in FAO(OS) No.289 of 2012, the learned counsel for the defendants stated that the defendants were not relying on those registration certificates and the controversy in the present suit was limited to the issue as to whether there was an infringement/ passing of qua the mark of the plaintiff KHAZANA by reason of the defendants using the trademark KHADIMS KHAZANA and other prefixes. Therefore, the aforesaid registration in favour of the defendants has to be excluded from consideration, while deciding this suit.

(3.) RELYING upon Section 17 of the Trademarks Act, 1999, the learned counsel for the defendants has contended that since the plaintiff did not seek separate registration in respect of the word KHAZANA, he is not entitled to injunction against user of the word KHAZANA and the right available to him is confined to the word KHAZANA written in a particular stylized form, in a box. The contention of learned counsel for the plaintiff on the other hand is that the plaintiff is entitled to exclusive use of the word KHAZANA irrespective of the fact whether it is written in a stylized form or in a designer font or using ordinary letters of the language in which the word is written.