Titan Industries Ltd. v. Kanishk Jewellery

A. Ramamurthi, J.:— The applicant/plaintiff filed this application to grant interim injunction restraining the respondent/defendant firm and their men from directly or indirectly in any manner from making use of the name KANISHK for its goods and/or, as its corporate name of trading style or any other name which is deceptively, phonetically and confusingly similar to the plaintiffs' name TANISHQ and also from passing off its name and goods under the name KANISHK as that of the plaintiffs pending disposal of the suit.

2. The case in brief is as follows:— The plaintiff is a company registered under Companies Act, 1956. The plaintiff company is a well known company, having its manufacturing unit and registered office at Hosur as well as its branch office and service centres all over the country with its Corporate Office situated in Bangalore. The plaintiff company was incorporated in 1984 as a joint venture of the world famous TATA Industries with Tamil Nadu Industrial Development Corporation. They started their main business of manufacturing and sale of watches and timepieces immediately thereafter. The company was originally incorporated under the name of TITAN WATCHES LIMITED and subsequently changed its name to TITAN INDUSTRIES LIMITED with a view to give better expression to its diversification activities in several fields of trade and commerce including manufacturing activities, for different types of goods and products such as jewellery, etc. Several companies have been promoted by the plaintiff as associate companies. In pursuance of the diversification activities, the plaintiff in the year 1993 ventured into the field manufacture and sale of exquisite quality and trendy jewellery items so as to cater to the needs and requirements of all categories of the buying public, not only of the aristocrats but of the comman man in affordable range of prices. They have invested a sum of Rs. 60 crores in terms of equipment and infrastructure and started a jewellery manufacturing unit located at Hosur in Tamil Nadu over a 1,35,000 sq.ft of built up area. They have invented/coined and adopted an innovative name TANISHQ to be used as a trade name/trade mark for its jewellery items in 1994. This mark required a great deal of imagination and a high decree of inventions to coin and the resulting trade mark is unique and is inherently distinctive and cannot be hit upon by another person. The first exclusive TANISHQ jewelly boutique was inaugurated in Chennai in July 1996. They have also opened several TANISHQ boutiques in many cities of India and abroad. It has become a household name all over India including Chennai for design, quality and reliability in jewellery items. The range includes rings, ear rings, bracelets, bangles, necklaces, pendants available at reasonable prices. Over the years the plaintiff has also added diamond an diamond studded jewellery to its TANISHQ range of products. The plaintiff has also applied for registration of TANISHQ with Registrar of Trade Marks in October 1994. The company had also independently applied to the Registrar of Trade Marks for registration of the name/mark TANISHQ in all 34 classes of goods stated in IV schedule of Trade and Merchandise Marks Rules. All the applications are now pending for registration. The said trade mark is registered in favour of the plaintiff in Argentina, Bahamas, Benelux, Bermuda, Cambodia, Hong Kong and several other countries. They have also spent considerable amount towards advertisement/sales & promotion expenditure, etc. The name TANISHQ has left an indelible impression on the public at large that the goods sold under this trademark is a quality product of the plaintiff having the goodwill and backup of the famous TATA Industries. The particulars of the sales turn over are also given. They have been organising several exhibitions, fashion shows, cultural activities and held several seminars all over the country and it was widely reported in newspapers and magazines. Their products are also exported widely to the various countries.

3. The plaintiff was shocked and surprised to see an advertisement published in THE HINDU on 13.01.2002 stating that a new showroom by name KANISHK Jewellery has been opened at the premises of the defendant's address. The showroom was opened on 07.01.2002 The intention of the defendant using the name KANISHK for its own jewellery business is obvious since it closely resembles the famous name of TANISHQ. The defendant has stealthily come out in the open by capitalizing on the famous name and trademark of the plaintiff. The enquiry further revealed that the defendant was all along doing business in the name of KHAZANA JEWELLERY in a different place thought it fit to start a new business under the name KANISHK. The use of the impugned name KANISHK is intended to give an impression of some connection or approval of the plaintiff or at least, to indicate a nexus with the business under the well known trade mark TANISHQ. The defendant is a later entrant in the market and has been well aware of the reputation and goodwill enjoyed by the plaintiffs corporate name as well as the trade mark. The defendant has been passing off the trade mark and trade name of the plaintiff both in its corporate form as well as in trademark. In course of time, the defendant may open several such KANISHK showrooms as a chain of shops not only in Chennai, but also in other parts of the country. The use of the name by the defendant in a deceptively similar manner has caused irreparable loss and injury to the plaintiff, which cannot be compensated in pecuniary terms. No one is entitled to commence or carry on business in such a way as to represent it to be the business of someone else or at least associated with someone else. Hence, the application. The respondent/defendant filed a detailed counter affidavit and denied the averments. The plaintiff has not claimed damages or accounts for profits. The suit is not properly valued and proper court fee has also not been paid. The defendant had started its business in January 2002. The word KANISHK is the name of famous Hindu King Kanishka of Kushan dynasty. The name is also a personal name, which means ‘Young’ in Sanskrit. They adopted the name KANISHK from the name of their nephew and they have also honestly adopted the name for their jewellery business based upon several factors. Their family astrologer suggested the name KANISHK in accordance with numerology and nameology calculations. The two brothers carry on jewellery business with name starting with the initial “K” and Khazana Jewellery is run by the elder brother and Kuber Jewellery is looked after by another elder brother. The adoption of the trade mark KANISHK for his jewellery business is honest, bona fide and without reference to any other company including that of the plaintiff. They are also dealing in high quality traditional/modern gold jewellery items such as chains, necklaces, bracelets, rights, silverwares, diamonds, etc. They have incurred considerable expenses and made wide publicity in various newspapers, magazines and also by putting up hoardings. There is absolutely no similarity whatosever between the names of KANISHK and TANISHQ. The syllable K forms predominant part in the name KANISHQ whereas the letters T and Q are prominent in the plaintiffs trademark. The two marks are phonetically, visually and structurally different. There has not been a single instance of actual confusion. The class of customers of jewellery are educated, sophisticated, discerning public. A customer will not enter a shop merely assuming the same to be another shop. Considering the nature of goods, the class of customers involved, there is no likelihood of any consumer assuming the defendant to be associated with the plaintiff. Neither the plaintiff nor the defendant sell their jewellery bearing any trademark. The purchaser of jewellery investing substantial amount of money, would not enter a jewellery shop merely because he assumed the same to be that of another shop. In South India, jewellery shops are patronized from generation to generation and not merely by seeing an advertisement. In India, in any town, jewellery business is normally family business managed by members of a family and not by a corporation. A normal family lady, who wants to buy Mangalasutra for the wedding of one of her family members, enters their shop without any hesitation, whereas she would not under any circumstances enter the plaintiff's shop. Most of the jewellery pieces sold by the plaintiff are per piece value and not by the weight of gold or the weight of the precious stones embedded therein. The plaintiff claims that they are exporting jewellery, whereas the defendant's firm is not exporting. The plaintiffs shop is about 7 to 10 kms. away from the shop of the defendant. The plaintiff has only applied for registration of the trademark and it is not yet registered. The KANISHK jewellery logo used by the defendant's firm is entirety different to that of TANISHQ script. The defendant had paid an advance amount of Rs. 25 lakhs and monthly rent is Rs. 35,000/-. He had engaged interior decorators, electrical contractors and lighting experts to make the shop cater to the needs of the jewellery customers. He had spent substantial amount and time for more than six months in establishing the shop. Approximately 60 employees are employed in his firm. KANISHK Jewellery is his only business and his only source of livelihood. The balance of convenience is only in their favour. The plaintiff has indirectly admitted that they have not suffered any loss or damage by the business, carried on by the defendant under the name and style of KANISHK JEWELLERS. The plaintiff has not made out a prima facie case and balance of convenience is also not in their favour and, as such, the application is liable to be dismissed. The defendant's end products are embossed with the initials KJ, denoting KANISHK Jewellery and therefore, the use of the name KANISHK does not amount to pass off the defendant's goods as of the plaintiff's goods. Moreover, the plaintiff failed to disclose in detail as to how they suffered irreparable loss and injury on account of the use of the name KANISHK by the defendant. The plaintiff has instituted the instant proceedings out of business jealousy/commercial rivalry to cripple their business. The plaintiff has not come to Court with clean hands.

4. The plaintiff filed a rejoinder to the counter affidavit filed by the defendant.

5. Heard the learned counsel for the parties.

6. The point that arises for consideration is whether the applicant/plaintiff has got a prima facie case and the balance of convenience is in its favour?

7. Point:— The plaintiffs company filed the suit against the defendant for permanent injunction restraining the defendant and their men from directly or indirectly in any manner, from making use of the name KANISHK for its goods and/or, as its Corporate name of trading style or any other name which is deceptively, phonetically and confusingly similar to the plaintiff's name TANISHQ and also from passing off its name and goods under the name KANISHK, as and that of the plaintiff's name and other reliefs.

8. The plaintiff as well as the defendant are doing jewellery business. The learned counsel for the plaintiff contended that the plaintiff's company had coined and adopted an innovative name TANISHQ to be used as a tradename and trademark for its jewellery items in the year 1994. The first exclusive TANISHQ jewellery boutique was inaugurated in Chennai at Cathedral Road in July 1996. The tradename TANISHQ has become a household name all over India including Chennai for design, quality and reliability in jewellery items. They have given an application for registration of the trademark and it is pending. They have also spent considerable amount towards advertisement. The trademark TANISHQ is registered in favour of the plaintiff in several foreign countries. They have established a goodwill and reputation of its own in jewellery items. They are also exporting TANISHQ products to various countries. This being so, on 07.01.2002, the defendant had opened a jewellery shop under the name KANISHK, which is identically, visually and structurally similar to the mark of the plaintiff. Now, the defendant is also passing off their goods of jewellery as that of the plaintiff. Unless an order of interim injunction is granted, the plaintiff will be put to much loss and hardship. Moreover, the plaintiff company is a prior user in point of time, whereas the defendant is a later entrant in the field of jewellery.

9. Per contra, the learned counsel for the defendant contended that they commenced the business in jewellery in January, 2002. They have honestly adopted the name KANISHK for the jewellery business based on various factors inclusive of the name suggested by the astrologer in accordance with the numerology and nameology calculations. The defendant's elder brother is carrying on another jewellery business under the name Khazana Jewellery and one another elder brother is also carrying on another jewellery business under the name Kuber Jewellery. Their family was already in the business of jewellery items for a very long time and they are also manufacturing various items in gold as well as in diamond. There are differential letters between the two names and it cannot be said to be identically or visually same. The class of customers of jewellery are mostly educated and sophisticated. Considering the market price of the gold, the customers with full knowledge enter into various shops knowing the worth and no one will be carried away that the shop of the defendant is affiliated or associated with the plaintiff. Apart from that, most of the jewellery pieces sold by the plaintiff are per piece value and not by the weight of gold or the weight of the precious stones. The defendant had also spent considerable amount towards advance, advertisement, interior decoration etc. KANISHK Jewellery is his only business and about 60 employees are working and the balance of convenience is also only in his favour. The plaintiff has also not explained as to any damage or loss in the business sustained by them for the last ten months. The burden is only upon the plaintiff to establish that they have got a prima facie case and the balance of convenience is in their favour. If an order of interim injunction is granted, the ultimate sufferer would be only the defendant. Moreover, the business is carried on since January 2002 till this date without any order of interim injunction. There is no complaint from any of the customers that they were misled by these two tradenames.

10. The learned counsel for the plaintiff mainly contended that the tradename was coined and invented by them as early as 1994 and the jewellery shop under the tradename TANISHQ was opened by them in Chennai in July 1996, whereas the defendant opened the KANISHK jewellery shop in Chennai in January 2002. When the trademark has not been registered, the plaintiff cannot take advantage of the same and claim the relief of interim injunction against the defendant; but however, if the plaintiff is able to establish that the trade name of both of them is phonetically, visually and structurally similar and is likely to cause deception and mislead the customers, only then the plaintiff can claim the relief of interim injunction. It is seen from the pleadings that the trade mark of the plaintiff TANISHQ is completely different from the trade mark of the defendant named KANISHK Although phonetically it may appear to be a similar one, but it cannot be said that it is visually and structurally similar and identical one. The gold jewellery is not a household item, where everyone used to purchase daily. All the shops dealing in jewellery are manufacturing similar kind of articles and no one can claim any proprietary right over the said articles. But at the same time, only if anyone is able to establish that the name of the other company is phonetically, structurally and visibly similar likely to cause deception to a consume public, then only they can succeed in getting order. If that criteria is adopted, I am of the view that the plaintiff has failed to establish the same. The logo adopted by the plaintiff as well as the defendant on a perusal of the same clearly indicates that they are not identical; but there are variations. It is not difficult or impossible for an unwary purchaser identifies these two products. It is also stated that the defendant's jewellery mark is embossed in their items as KJ; but there is nothing to show that a similar mark is available in the product of the plaintiff.

11. The typed set of documents filed on behalf of the plaintiff also established that their trade mark TANISHQ has been registered in other parts of the world. The advertisement given by them are completely different from the advertisement given by the defendant relating to their product. A bare look at the advertisement made by the plaintiff would clearly establish that it relates to modern woman and a person dealing in fashion. So far as the advertisement made by the defendant is concerned, it appears to be one intended for a common person. There are also differences between the two shops, namely, in the plaintiff's shop, the jewellery is sold per piece value, whereas in the shop of the defendant, the jewellery is sold by the weight of the gold. There are so many differential factors between the trade name and product of the plaintiff with that of the defendant. The sales turnover particulars given by the plaintiff in paragraph 16 would indicate that it has not come down. During 1994–95, the sales turnover was Rs. 1918.54 lakhs and during 1999–2000, it was Rs. 15,430.49 lakhs. Nowhere in the pleadings, it is stated that the sales turnover of the plaintiff had come down on the opening of the shop of the defendant. There are number of jewellery shops in the City and each customer will choose his shop depending upon so many factors.

12. The learned counsel for the defendant also pointed out that his family is in the business of jewellery for the last several years. One of the elder brothers of the defendant is carrying on jewellery business in the name of Khazana Jewellery and one other elder brother is carrying on jewellery business under the name Kuber Jewellery and now the defendant had started the jewellery business under the name KANISHK Jewellery. It is quite possible that due to business rivalry, the plaintiff has been constrained to file this case and apart from that, there is nothing on record to show that one has anything to do with the other company. In fact, the advertisement made by the defendant on earlier occasions itself indicates that they are only in continuation of Khazana Jewellery. In one of the advertisements made on a particular day in THE HINDU, the plaintiff as well as the defendant have given simultaneous advertisement in respect of their jewellery. The plaintiff has come forward with the suit, no doubt, immediately in January 2002 itself within 15 days of the opening of the shop of the defendant. Now, more than ten months had already passed and there was no interim order. The plaintiff has not filed any record to show that during the last ten months whether the defendant had passed off their goods as that of the plaintiff and whether any customer has been misled that the shop of the defendant is affiliated or associated with the plaintiff.

13. The learned counsel for the plaintiff relied on the decision reported in Laxmikant V Patel v. Chetanbhat Shah, (2002) 3 SCC 65 : AIR 2002 SC 275: 2002 (24) PTC 1 (SC), wherein it is stated as follows:—

“The three elements of passing-off action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiff. The same principle, which applies to trade mark, is applicable to trade name. Passing-off cases are often cases of deliberate and intentional misrepresentation, but it is well settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception”.

14. Reliance is also placed on Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., (2002) 2 SCC 147 : AIR 2002 SC 117 : 2002 (24) PTC 121 (SC) as follows:—

“In an action for passing-off whether there is a likelihood of deception or confusion arising is a matter for decision by the Court and no witness is entitled to say whether the mark is likely to deceive or to cause confusion; that all factors which are likely to create or allay deception or confusion must be considered in combination; that broadly speaking, factors creating confusion would be, for example, the nature of the market, itself, the class of customers, the extent of the reputation the trade channels, the existence of any connection in course of trade, and others”.

15. The principle in this decision is applicable to the case on hand. The question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity of the two marks is likely to deceive or cause confusion. In deciding whether two marks are so similar as to be likely to deceive or cause confusion the similarity of idea is a relevant consideration. What has to be seen in the case of a passing-off action is the similarity between the competing marks and to determine whether there is likelihood of deception or causing confusion. If these principles are made applicable to the case on hand, it can be positively said that there is no possibility of deception or confusion to either unwary purchaser or to other educated class of purchasers.

16. It has been held in Essco Sanitations…Petitioner v. Mascot Industries (India)…), 1982-1 PLR 25, wherein it has been held as follows:

“For determining whether a particular trade mark was deceptively similar to another, the factors to be taken into consideration were (a) the nature of the marks, (b) the degree of resemblance between the marks, phonetic, visual as well as similarity in idea, (c) the nature of the goods in respect of which they were used, (d) the similarity in the nature, character and purpose of the goods of the rival traders, (e) the class of purchasers who were likely to buy the goods bearing the marks, their level of education and intelligence and the degree of care they were likely to exercise in purchasing the goods, (f) the mode of purchase of the goods or of placing orders for the goods, and (g) any other surrounding circumstances”.

17. The learned counsel for the respondent/defendant relied upon B.C.W.C.S (P) Ltd. v. I.C.W Coop. Society Ltd., 1999 (1) KLT 322 that “the right to relief in a passing-off action must be related to the passing-off of certain goods under a particular name manufactured by another and the mere use of the name itself could not enable a plaintiff to obtain a relief of injunction restraining the use of that name”. The principle in this decision is also applicable to the case on hand.

18. The learned counsel for the plaintiff next contended that the plaintiff had opened number of showrooms in the City and there is a possibility of opening some more also and unless the order of interim injunction is granted, their business would be affected. No doubt, the plaintiff was already in the market since 1996; but this does not mean that the plaintiff is automatically entitled to the relief of interim injunction against the defendant. Even assuming that the plaintiff had established the trade name TANISHQ, it cannot be said that the trade name KANISHK is identical with the name of the plaintiff. Simply because the plaintiff is the prior user in jewellery, they cannot shut or prevent any other person from opening a jewellery shop.

19. It is seen from the pleadings that the plaintiff had applied for registration of the trade mark TANISHQ in respect of 34 articles and it is not the case that all these articles are now manufactured by them. There is also no special pleading relating to the damages already sustained by the plaintiff or is likely to sustain in future because of any alleged similarity. It is also seen from the typed set of documents that there is lot of variation between the two trade names not only in the advertisement but also in the guarantee card and also in the logo supplied by them. Having regard to the entire materials and also the logo of the two trade names, I am of the view that it cannot be said that both are identical and similar which is likely to cause deception or confuse to public, who intend to purchase jewellery items. The plaintiffs have failed to establish that they have got a prima facie case and the balance of convenience is in their favour.

20. For the reasons stated above, O.A No. 78 of 2002 is dismissed.