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Varun Gems vs. Precious Jewels and Anr - (High Court of Delhi) (06 Oct 2022)

A party is not required to produce evidence of actual deception in order to prove the case of infringement


Intellectual Property Rights

The Appellant has filed the present appeal being aggrieved by the impugned judgment and decree, whereby the suit filed by the Appellant praying for restraining the Respondent from using the name 'RAKYAN' and / or any other mark which is identical or deceptively similar to the Appellant/ Plaintiff's registered trademark 'RAKYAN'S FINE JEWELLERY', was dismissed.

It is settled law that, name and surnames are registerable and are liable to be protected under the Act. The definition of the marks contained in Section 2(m) of the of the Trade Marks Act, 1999, specifically includes "name", if a trademark is used in relation to goods and services for the purpose of indicating a connection in the course of trade with the said person having the right as a proprietor to use the mark.

The issue to be decided in this case is whether the use of its own name by defendant is bona fide or is for the purpose of riding on popularity of an established trademark. The bona fide use in terms of Section 35 of the Act would mean an honest use by a person of his own name without any intention to deceive and without any intention to ride on the popularity or goodwill of a registered mark. It is common knowledge that the surname 'RAKYAN' is not a commonly adopted/ used surname. The Courts have injuncted even common surnames for the reason of them being identical or deceptively similar to the registered marks on the ground of likelihood of confusion and deception.

A party is not required to produce evidence of actual deception in order to prove the case of infringement. In the present case, it is not in dispute that, the Plaintiff has a valid registration in respect of the label 'RAKYAN'S FINE JEWELLERY'. The word 'RAKYAN'S' is the prominent feature of the trademark. The artistic representation of the trade name 'RAKYAN'S FINE JEWELLERY' is also registered in favour of the Plaintiff under the Copyrights Act, 1957. It is not disputed that use of the word 'RAKYAN'S' for similar goods is causing confusion on part of the public.

Once the evidence has been filed and remains uncontroverted, either by way of cross-examination or by way of filing evidence in support of the written statement, the same has to be accepted at its face value. In view of the specific evidence being filed, which remain uncontroverted, it cannot be said that the use of the name 'RAKYAN' by the defendant was bona fide. The very fact that the business was started initially by the defendants under the name 'DIAMEZ' and later on changed as 'NEENA & RAVI RAKYAN'. This coupled with the fact that the business was commenced from the adjoining premises are sufficient to reach a conclusion that the defendants were not entitled to the benefit of Section 35 of the Act.

The Respondent are injuncted from using the name 'RAKYAN' and / or any other mark which is identical or deceptively similar to the appellant/ Plaintiff's registered trademark 'RAKYAN'S FINE JEWELLERY', from any shop or market located within a radius of two kilometers of the Appellant's premises.


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