M. Jeyapaul, J.
1. The suit is filed seeking permanent injunction restraining the defendants or their agents from in any manner infringing the plaintiffs' well established trade mark 'MOHAN JEWELLERY' and passing off their jewellery by using the word 'MOHAN' as part of trade mark and the trading style as and for the plaintiffs' jewellery and also for directing the defendants to surrender the entire stock of unused offending 'Ummidi Bangaru MOHAN JEWELLERS', Bill Books, Invoices and Labels together with the blocks and dyes, etc. for destruction and to render a true and correct accounts of income earned by the defendant by using the offending word 'MOHAN' as part of their trade mark and trading style.
2. The plaintiffs allege that they are leading manufacturers of precious metals including gold jewellery. They have honestly conceived and adopted the trade mark and trading style 'MOHAN JEWELLERY' since 15.11.1961. The plaintiffs have become distinctive. They have spent considerable amounts and efforts for promoting the sales of their jewellery under the Trade and Merchandise Act, 1958. The plaintiffs were shocked to see an advertisement in The Hindu on 11.6.1992 announcing the inauguration of the shop Ummidi Bangaru Mohan Jewellers at Annanagar. The defendants have, with ulterior motive, adopted the word 'MOHAN' as part of their trade mark and trading style. The defendants have created confusion in the market by adopting the same trading style and trade mark 'MOHAN'. The public would be misled by the jewellery manufactured by the defendant. Hence, the relief is sought for.
3. The defendant has contended that the suit is not maintainable in the absence of registration of the firm as per the provisions of the Indian Partnership Act. The defendant denies that the plaintiffs have honestly conceived and adopted the trade mark and trading style 'MOHAN JEWELLERY'. The defendant hails from a leading family of jewellers carrying on business in Madras for over several decades. Mohan is a common south Indian name. None can take copyright in such a common name. This defendant, at any rate, is named as Mohan. Thus, the defendant is honestly using his name for doing his business. The defendant has not imitated or adopted somebody's name for the purpose of his business. There cannot be any copyright in respect of the word 'MOHAN JEWELLERY' as claimed by the plaintiffs. There is no such trade mark for jewellery shop or for jewellery. No jewel is being sold under the name of 'MOHAN JEWELLERY'. Mohan Jewellery is neither a trade mark nor a trading name. In the jewellery trade, the common practice is to emboss some initial on the jewels manufactured and sold. The defendant does not even emboss the jewel manufactured by it Embossing some initials on the jewels has nothing to do with the trade mark or trading style. The plaintiffs have indulged in blackmailing action with vexatious and frivolous suit. Therefore, the defendant prays that the suit may be dismissed with costs.
4. The following issues were framed for determination:
1. Whether the plaintiff is entitled for a permanent injunction restraining the defendant from infringing the plaintiff's well established mark 'Mohan Jewellery' and also for passing off of their jewellery articles by using the word 'Mohan' as part of their trade mark and trading style.
2. Whether the plaintiff is entitled for a direction to the defendants to surrender to the plaintiff the entire stock of unused offending 'Vummidi Bangaru MOHAN JEWELLERS', bill books, invoices and labels together with the blocks and dyes, etc. for destruction.
3. Whether the plaintiff is entitled for rendition of account as asked for.
4. To what other relief is the plaintiff entitled?
5. On the side of the plaintiffs, a partner of the plaintiff firm was examined as PW1 and Exs.P1 to P12 were marked. The sole proprietor of the defendant firm was examined as DW1 and Exs.D1 to D14 were marked on the side of the defendant.
6. Issue No. 1: Learned Counsel for the plaintiffs would submit that as per the registration certificate, Ex.P2, the trade mark 'MOHAN JEWELLERY' was registered as of the date on 16.6.1992 and the same was renewed subsequently under Exs.P3, P4 and P5. The balance sheets, Exs.P6 to P9 would establish the volume of business carried on by Mohan Jewellery. The defendant, adopting a, part of the name 'MOHAN', has infringed the trade mark registered by the plaintiffs.
7. Learned Counsel for the defendant would contend that there was no registration of the trade mark by the plaintiffs as on the date of institution of the suit. Therefore, the plaintiffs cannot maintain the relief with regard to infringement of the trade mark. There is evidence to show that the defendant has started carrying on business in the name and style of 'VUMMIDI BANGARU MOHAN JEWELLERS' annexing the family name and the grandfather's name alongwith his personal name. There is no similarity between the trade mark of the plaintiffs and the trade mark employed by the defendant. Nobody would be deceived on comparing the distinct trade marks of the plaintiffs and the defendant. No documentary proof has been forthcoming to establish that the plaintiffs have spent huge amount in advertising their business in the name and style of 'MOHAN JEWELLERY' and that there was a slump in the business on account of opening of the shop by the defendant in a similar trade mark. Therefore, the learned Counsel for the defendant would submit that the action for infringement of trade mark is not sustainable.
8. The suit was filed on 15.6.1992 before the present Trade Marks Act, 1999 was enacted repealing the Trade and Merchandise Act, 1958. Therefore, as on the date of institution of the suit, the Trade and Merchandise Act, 1958 was in vogue.
9. The plaint refers to application filed by the plaintiffs for registering their trade mark under the Trade and Merchandise Act, 1958. As per Section 23(1)(b) of the Trade and Merchandise Act, 1958, a trade mark shall be registered as of the date of making of the application and the said date of application shall be deemed to be the date of registration. The registration certificate was issued on 31.3.2000 under Ex.P2 with effect from the date of application viz., 16.6.1992. The suit was filed by the plaintiffs on 15.6.1992 and the registration of their trade mark has taken effect from 16.6.1992. Therefore, from the next day of the institution of the suit, the plaintiffs are deemed to have got registration of their trade mark 'MOHAN JEWELLERY'.
10. Of course, as per Section 27 of the Trade and Merchandise Act, 1958, no person shall be entitled to institute any proceedings to prevent the infringement of unregistered trade mark. As the trade mark of the plaintiffs has been registered the very next day of the institution of the suit well before the service of summons on the defendant, the court comes to the conclusion that the suit for infringement of trade mark is maintainable.
11. If the trade mark of the defendant is quite identical with the plaintiffs' trade mark, there is no necessity for the court to address the issue whether the infringement is likely to deceive or cause confusion. But, in a case where the impugned trade mark is something similar to the trade mark which is sought to be protected, then the court will have to test whether any confusion or deception would arise from such similarity of the marks. (Refer Ruston and Hornby Ltd. v. Z. Engineering Co. : [1970]2SCR222 ).
12. In the instant case, the plaintiffs are using the trade mark 'MOHAN JEWELLERY' whereas the defendant is using the trade mark 'VUMMIDI BANGARU MOHAN JEWELLERS'. It is quite clear from the description of the aforesaid trade marks of the respective parties that they are not identical. The court will have to, therefore, find whether the totality of the impression is likely to cause deception or confusion in the mind of the buyers.
13. DW1 has categorically stated that 'VUMMIDI' is his family name and 'BANGARU' is the name of his grandfather who started jewellery business wayback in the year 1900. He bears the name 'MOHAN' which fact is not in dispute. Therefore, honestly, he has floated his jewellery business in the name and style of 'VUMMIDI BANGARU MOHAN JEWELLERS'. It is his further version that the jewellery manufactured by him are sold with the mark 'VBMJ'. PW1 also in his evidence, has categorically admitted during the course of cross examination that 'VUMMIDI' is the family name. 'BANGARU' means gold. The family of Vummidi is engaged in the business of manufacture and sale of gold, silver and diamond jewellery. It is not in dispute that the defendant hails from Vummidi family. Except the word 'MOHAN', no other word constituting the trade mark of the defendant is similar to that of the plaintiffs' trade mark. The name 'MOHAN' has been introduced very honestly in the trade mark of the defendant as he himself bears the name Mohan. The plaintiffs would categorically admit in his evidence that there are two business trading in the name of Mohan apart from them and the name 'Mohan' is a common name.
14. Further, the products of the jewellers contain only initials and not the whole trade mark registered by them. It is the admitted case of both the parties that the plaintiffs sold their products embossing the initial 'MJ' and the defendant sells his products embossing the initial 'VBMJ'. Nobody purchases the jewellery verifying the initials embossed in the product in a jewellery. The jewellers have a reputation and thereby they attract the public to their shops facilitating them to trade in volume of business.
Nobody will be confused with the trade names 'MOHAN JEWELLERY' AND 'VUMMIDI BANGARU MOHAN JEWELLERS'. No deception has been practised by the defendant as he has coined the trade mark combining the family name, grandfather's name and his name. No material object was produced by the plaintiffs to show that similar trade mark of the plaintiffs was found embossed in the products of the defendant. The plaintiffs also have not produced Income Tax Returns, assessment order of the Sales Tax, Bill Books, Invoices, etc., to show their volume of business. They have simply produced the balance sheets, certified by their Chartered Accountants which are self-serving documents. There is no evidence to show that their volume of business has come down on account of the opening of the shop by the defendant in the name and style of 'VUMMIDI BANGARU MOHAN JEWELLERS'. Nothing is on record to show that the distinctive mark of the jewellery was copied by the defendant.
15. The registration of the trade mark under the statute does not confer any new right to the mark claimed by the plaintiffs. Of course, the registration confers protection under the statute. Just because Mohan Jewellery was registered, the plaintiffs cannot successfully claim protection for their trade mark unless it is proved that the trade mark employed by the defendant is identical or similar to that of the plaintiffs. There is no resemblance between the trade marks of the plaintiffs and that of the defendant. Except the word 'MOHAN' found incorporated in the trade mark of the defendant, there is virtually no evidence to establish that the goods of the defendant are passed off as that of the plaintiffs. The evidence available on record would establish that the jewellery of the defendant are sold embossing the defendant's initial. Therefore, it is held that the plaintiffs are not entitled to permanent injunction restraining the defendant from infringing the plaintiffs' trade mark 'MOHAN JEWELLERY' and also from passing off their jewellery using the word 'MOHAN' as part of their trade mark and trading style. The issue is answered accordingly.
Issues 2 and 3: It has been held that there is no infringement of trade mark 'MOHAN JEWELLERY' registered by the plaintiffs inasmuch as the trade mark of the defendant is quite dissimilar to that of the plaintiffs. Therefore, the plaintiffs are not entitled for a direction to the defendant to surrender the entire stock of unused offending 'Ummidi Bangaru MOHAN JEWELLERS', Bill Books, Invoices and Labels together with the blocks and dyes, etc. for destruction and for rendition of accounts as sought for. Both the issues are answered accordingly.
Issue No. 4: The plaintiffs are not entitled to any relief as claimed in the suit. Therefore, the suit stands dismissed with costs.