Saturday, 17 January 2015

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


                                                                             P.S.MUZEEB
                                                                              B.A. LL.B. (HONS)

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

Justice Anil R. Dave,

Justice Vikramajit Sen

FACTS

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”.

CONTENTION

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


ARGUMENTS

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.

JUDGMENT

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.

CONCLUSION

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