Saturday, 17 January 2015

Honest use of his Own Name: not amount to Infringement and Passing off.

                                                                              B.A. LL.B. (HONS)

Precious Jewels & Anothers vs. Varun Gems [2014 (60) PTC 465 (SC)]

Justice Anil R. Dave,

Justice Vikramajit Sen


In this case, the appellants aggrieved by the interim orders in a civil suit approached this Hon’ble Court by way of an appeal.
The appellants and respondents belong to same family and reside in Delhi, having Surname “RAKYAN”.  Their family business is sale of Jewellary. The family has not less than 15 business units in different names and styles. The appellants do the same Jewellary business with the name and style “NEENA AND RAVI RAKYAN” and the respondents shop name being “RAKYAN’S FINE JEWELLARY”. Both their shops are abutting each other. The respondents restrained appellant in doing the Jewellary business under the name & style of NEENA AND RAVI RAKYAN alleging that they cannot use the word “RAKYAN” as it is the violation of their IPR rights. The respondents got interim order against the appellants, restraining them the use of word “RAKYAN”.


i.              Whether the appellants can continue with the word “RAKYAN”?
ii.            Whether the interim order was just and proper?


The learned counsel on behalf of the respondents argued that the appellants had no right to do their business in the shop which is next to the shop of the plaintiff. The learned counsel also submitted that the appellants have no right to use word “RAKYAN”.
The learned counsel for appellants vehemently argued that they should not be restrained. The learned counsel argued that the Partners in the said firm are Smt. Neena Rakyan and Shri Ravi Rakyan. They cannot be restrained from doing their business in their own name.
The learned counsel relied upon Section 35 of the Trademarks Act, 1999. The Section 35 of Trademarks Act, 1999 says that no person shall be restrained of using his own name. Further for the clear understanding the Section 35 says that, Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services.


The Hon’ble Supreme Court accepting the arguments of the appellants concerning the interim order held that, we do not find any similarity between the marks by looking at the provision Section 35 of the Trademarks Act, 1999. The appellants cannot be restrained from running the business on the name “NEENA AND RAVI RAKYAN”. We therefore quash and set aside order granting interim relief to the respondents.


The use of surname is not an offence. Section 34 of The Trade and Merchandise Act, 1958 also entitles a person to use his/her name or that of his/her place of business to any bonafide description of the character or quality of his goods.  Section 35 of The Trademarks Act, 1999 protects use by a person of his own name.

The honest use by the person his own name without any intention to deceive does not amount to any infringement or passing off. In Benzet Cie’s Application[1], the Court held that, “mere surname is not the name of a company, individual or firm. Further any person with bonafide intention can use his own name and without any intention to deceive anybody or without intention to make use of the goodwill.[2] Therefore use of name with honest use does not amount to any infringement and passing off.

[1] (1913) 30 RPC 177
[2] Baume & Co. Ltd vs. AH Moore Ld., (1957) RPC 459

Thursday, 1 January 2015

First Draft of National IPR Policy by Submitted by: IPR Think Tank

The Newly formed IPR Think Tank  has submitted its first draft on country's  IPR POLICY for suggestions.

       The draft Policy aims to Establish a dynamic, vibrant and balanced intellectual property system in India to  Foster innovation and creativity in a knowledge economy;· Accelerate economic growth, employment and entrepreneurship;· Enhance socio-cultural development; and  Protect public health, food security and environment, among other areas of socio-economic importance. 

      Further Objectives include creating  public awareness about the economic, social and cultural benefits of IP  among all sections of society for accelerating development, promoting entrepreneurship, enhancing employment and increasing competitiveness; stimulate the creation and growth of intellectual property through measures that encourage IP generation ;To have strong and effective laws with regard to IP rights that are consistent with national priorities and international obligations and which balance the interests of rights owners with public interest;To modernize and strengthen IP administration for efficient, expeditious and cost  effective grant and management of IP rights and user oriented services.To augment commercialization of IP rights; valuation, licensing and technology transfer;To strengthen the enforcement and adjudicatory mechanisms for combating IP
violations, piracy and counterfeiting; to facilitate effective and speedy adjudication of IP disputes; to promote awareness and respect for IP rights among all sections of society;To strengthen and expand human resources, institutions and capacities for  teaching, training, research and skill building in IP.

       Realizing the need of special attention to  Ip matters and importance of Ip in India's  negotiation power, the policy has incorporated an  model to integrate  IP with Government Initiatives which focus on 
1. The proposed IP Promotion and Development Council (IPPDC) will open IP Promotion and Development Units (IPPDU) in all States, smart cities, innovation and industrial clusters in order to provide one window services to entrepreneurs, startups and manufacturing units for IP awareness, protection and utilization.

2. IP support to MSMEs will be expanded through new or existing IP facilitation centers.

3. Links will be forged between IPPDU/Facilitation Centers with IPOs, innovation and research universities, industry associations and financing institutions in order to realize ‘Mind to Market’ concept.
4. Technology Acquisition and Development Fund under the Manufacturing  Policy will be utilized for licensing or procuring patented technologies.

5. The use of global protection systems will be promoted for obtaining protection  of Indian IPRs in several countries for creating wider marketing and trading  opportunities.

6. Manufacturing units will be encouraged to set up IP cells in their own units  and make IP an integral part of their corporate strategies.

7. Establishment of a system in IPOs for simultaneous examination and grant of  several category of rights such as patents, trademarks, designs when attached  to a single product will be examined.

8. Integrate into the Government initiatives the various schemes of the  Department of Electronics and Information Technology for IP promotion and  global protection, forging links between industry and academic/research  institutes for industry oriented research, commercialization and  entrepreneurship development. 

The draft policy will be made into effect after 3 year after various reviews and monitory .
Further details on the Draft is available at