Nisha Gupta, J.
1. This appeal has been preferred under Section 104 read with Order 43 Rule 1 CPC against the impugned order dated 21.12.2013 passed by Additional District Judge No.4, Jaipur Metropolitan, Jaipur in Civil Misc. Case No. 115/2013 whereby application under Order 39 Rule 1 and 2 CPC has been dismissed.
2. The short facts of the case are that appellant firm filed a Civil Suit for declaration, permanent injunction and damages against the respondents. Along with the civil suit, application under Order 39 Rule 1 and 2 CPC has also been filed. It has been pleaded in the application that appellant firm is running the business of manufacturing and selling gems and jewellery in the name and style of The Gem Palace uninterruptedly since 1852 and he has a registered office at MI Road, Jaipur. The firm is engaged in the business since 1852 and firm enjoys huge reputation and he has acquired a goodwill over the years in the line of Jewellery business not only in India but abroad also. The firm was duly registered on 5.11.1964 under the provisions of Indian Partnership Act, the respondent No.1 was also the partner of the firm who has retired from the firm on 25.1.2012 and a deed of retirement has been executed and in Clause 7, it has been stated as under:-
"The Retiring Partner agrees and undertakes that he will not use the name of the Firm, or any name similar resembling the name "The Gem Palace" at any time after retiring from this firm."
3. To the utter surprise of the appellant, Sudhir Kasliwal, a partner in the firm noticed a sign board outside the residence of respondent No. 1, 3 and 4, i.e. B-6, A-2, Prithvi Raj Road, Jaipur wherein it has been stated "Kasliwal Gem Palace Jewellers since 1852". A notice was served on the respondents. Further, the appellant had discovered that respondents are working and had registered a company using similar name with the trade name of appellant i.e. "Kasliwal Gem Palace Pvt. Ltd." Again a notice was served on the respondents but with no avail. They are also using the same packings used by the appellant, the respondents are using the name and style of the appellant, hence a suit for passing off the appellants firm tradename as well as for infringement of the same has been filed but the court below has dismissed the application only on the ground that two trade names are not similar, hence this appeal.
4. The contention of the respondents is that no error has been committed by the court below and application under O.39 R.1 and 2 CPC has rightly been considered and rejected and the appellate court should slow in disturbing the reasonable findings arrived at by the court below. His further contention is that firm is not running since 1852. The firm was registered on 5.11.1964. The father of the respondent No.1 was also partner and after the death of his father G.C. Kasliwal, the present respondent was also party in the firm and he retired from the firm vide deed dated 25.1.2012. The Gem Palace is not a trade-mark and has not been registered. Respondents have not used the trade name of appellant neither it is similar in font, colour or style with the trade name of appellant firm. The respondents are running their business in the name of Kasliwal Gem Palace Pvt. Ltd. which is distinct from the name of the appellant firm. His company has been registered under the Companies Act. He never represented himself to be a partner of the appellant firm, after the retirement and he never allure any of the customers of the appellant firm. No case of passing off is made out. Many other firms in Jaipur are carrying on business in the name and style of Gem Palace, list of which has been brought on record in reply to the application in Para-6, hence no interference is needed.
5. Heard the learned counsel for the parties and perused the copies of the original documents placed by the counsel for the appellant.
6. The contention of the appellant is that they are prior users of the trade-mark and respondents have no right to use similar or deceptively similar trademark and reliance has been placed on Heinz Italia & Anr. v. Dabur India Ltd., (2007) 6 SCC 1 wherein it has been held that to establish an action for passing off it should be established that the plaintiff is the prior user of the trade name and further reliance has been placed on Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd.. (2004) 6 SCC 145. There is no dispute about this fact that appellant firm is prior user of the trade-name "The Gem Palace" but it is also the admitted case that the respondents are also the partners of the said firm and Trade name "Gem Palace" is not registered under the Trade Marks Act. It has been submitted that before filing of the suit, they have applied for registration of trade mark. The counsel for the appellants have rest their case essentially on Section 27 sub-clause (2) of the Trade Marks Act and Section 36 of the Indian Partnership Act and their contention is that respondents are not entitled to use the similar, identical or deceptively similar trade name.
7. The court below has held that the trademark of the appellant firm is not similar with that of respondents trade name. It is also not in dispute that respondents Company is registered under Section 20 of the Companies Act and documents have also been placed on record which shows that respondents are issuing invoice in the name of Kasliwal Gem Palace Pvt. Ltd. The contention of the appellant is that the respondents are trying to start a website in the name and style of Gem Palace, but it is a matter of evidence and nothing has been placed on record to show that any such website has in existence and it has been launched by the respondents. Per contra, the certificate issued from Ministry of Corporate Affairs, Government of India shows that Companys name is "Kasliwal Gems Palace Pvt. Ltd." and it has been incorporated on 19.10.2012.
8. The counsel for the appellant has also stated that visiting card similar to that of appellant firm is also used by the respondents Company and a document has been placed on record which bears the name of Ankit Kaslilwal and contention of the appellant is that it contains the similar address on which the appellant firm is working in U.K. Admittedly, Ankit Kasliwal is not a party to the litigation, hence for his acts, the present appellant could not be blamed. Dispute regarding using of packing style has also been raised but it has no bearing at present in case of passing off under Section 27 sub-clause (2) of Trade Marks Act. It has also been pointed out by the respondents that firm was using trade name as it was a family business and when he get retirement from the firm, he has started his company in totally different name using trade name as "Kasliwal Gem Palace Pvt. Ltd." which is not similar with that of trade name of firm. His company has been registered under the Registrar of Companies and there is a prescribed scheme for registration. The Registrar of companies clearly searches out whether any similar name is used by any other company. His other contention is that Gem Palace is a generic word and nobody can claim exclusive domain on the same. Many other companies as narrated in Para 6 of the reply to the application is using these words and Para No.6 of legal objections raised by the respondents clearly speaks that many other firms are using words Gems Palace like Pinkcity Gem Palace, New Maharaja Gem Palace, Oriental Gem Palace and Jwells Gem Palace all are carrying on the business in Jaipur and that too in Gems and Jewelley and reliance has been placed by the respondents on Skyline Education Institute (India) Pvt. Ltd. v. S.L. Vaswani & Anr., (2010) 2 SCC 142 where court has held that Skyline is a generic word and cannot be treated as trade-name and held as under:
"In our opinion, the findings recorded by the learned Single Judge and Division Bench on the crucial factors like prima facie case, balance of convenience and equity are based on a correct and balanced consideration of various facets of the case and it is not possible to find any fault with the conclusions recorded by them that it is not a fit case for restraining the respondents from using the word `Skyline' in the name of the institute established by them. It has not been disputed on behalf of the appellant that the word `Skyline' is being used as trade name by various companies/organizations/business concerns and also for describing different types of institute/institutions. The voluminous record produced by the respondents before this Court shows that in India as many as 117 companies including computer and software companies and institutions are operating by using word `Skyline' as part of their name/nomenclature. In United States of America, at least 10 educational/training institutions are operating with different names using `Skyline' as the first word. In United Kingdom also two such institutions are operating. In view of this, it is not possible to agree with the learned counsel for the appellant that the Skyline is not a generic word but is a specific word and his client has right to use that word to the exclusion of others."
9. The contention of the appellant is that whether Gem Palace words are generic or not is the question of evidence and cannot be decided at the primary stage of the litigation and reliance has been placed on Heinz Italia (supra). It is true that in Heinz Italia (supra), it has been held that word Glucon D was generic or not is a matter of evidence but here in the present case, the respondents has categorically stated that many other business are running using the same words "Gem Palace" hence the court below has rightly held that no case is made out in favour of appellant to use these words to the exclusion of others and to the detriment to the respondents.
10. The court below has rightly assessed the similarity and dissimilarity of the two trade names. The contention of the appellant is that in the case of passing-off action, the court below should be guided by the similarity of the two trade-names rather than the dis-similarity and reliance has been placed on Heinz Italia (supra) and further reliance has been placed on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.., (2001) 5 SCC 73. There is no dispute about the fact that in passing off actions, test for determination is the similarity and not the dissimilarity between the competitive marks. The court below has rightly held that the respondents company trade name is "Kasliwal Gems Palace Pvt. Ltd." he has not used the word `The'. The word Kasliwal is prefix to the Gem Palace and Pvt. Ltd. is also the suffix to the Gem Palace, hence there are no similarities between the two trade names.
11. The appellant has relied upon Mahendra & Mahendra Paper Mills Ltd. v. Mahindera & Mahindra Ltd., AIR 2002 SC 117 where two names were identical only with the difference of the spelling. Further reliance has been placed on Satyam Infoway Ltd. (supra), where both the trade names are similar, only a slight difference between the spelling that is 'Siffy' and `Sify'. Further reliance has been placed on Time Incorporated v. Lokesh Srivastava & Anr., 2005 (30) PTC 3 (Delhi) where trade name `Time' has been used in identical type, script and font which is not the case here. Further reliance has been placed on Tata Sons Ltd. & Anr. v. Arno Palmen & Anr., 2013 (54) PTC 424 (Del.) where trade mark `Tata' has been used by the defendants. Here admittedly, the appellant firm has no registered trade-mark. The contention of the appellant is that respondents could use any other word for his business barring the word "Gem Palace". This argument is not acceptable. It is not the right of the appellant to use the word "Gem Palace" to the exclusion of others. The only criteria are that where similar or deceptive similar trade name has been used by the respondents and the appellant firm has miserably failed to prima facie establish the case. Reliance has been placed on National Garmers, Kaloor, Cochin v. National Apparels, Ernakulam, Cochin, AIR 1990 Kerala 119 where plaintiff had established prima facie case for passing off which is not the case here. Further reliance has been placed on Laxmikant V. Patel v. Chetanbhat Shah & Anr., AIR 2002 SC 275 where injunction has been refused on the ground that the defendant business is 3-4 Kms. away from the plaintiff house which was not found to be proper. This is not the case of the appellant here. In the present case, the appellant could not prima facie show that the respondents are using the similar trade-name with that of appellants firm. The appellant has also relied on M/s Power Control appliances & Ors. v. Sumeet Machines Pvt. Ltd., (1994) 2 SCC 448 where the issue was of consent, quite different from the present issue, hence this has no bearing on the present case. Further reliance has been placed on Dwarka Industries v. Adithya Aromatics, 2013 (54) PTC 309 (Mad.) where the partner after living the partnership firm has used the firm's trade mark which is precisely not the case here. Further reliance has been placed on Satya Infrastructure Ltd. & ors. v. Satya Infra & Estates Pvt. Ltd., 2013 (54) PTC 419 (Del.) where the plaintiff carrying on business with the registered trade-name and under Section 20 of the Companies Act, company has also prohibited registration of name which is identical or in resemblance with the company in existence which has been previously registered. Here the case is just converse. Respondent company name has been registered under Section 20 of the Companies Act, meaning thereby that the registration has not been denied by the Registrar of Companies on the ground that trade name used by the respondent is identical or having resemblance with the appellant.
12. The contention of the appellant is that two names are similar and there are chances that customers of appellant company get confused, they have credited a huge goodwill over the years and Prince Charles, (late) Maharani Gayatri Devi of Jaipur, Prince of Japan, Prince of Sweden, Prince of Morocco, Sheiks of Gulf, Steel Tycoon Laxmi Mittal are their customers. It goes without saying that if such high celebrities are the customers of the appellant firm, there cannot be any chance of confusion to the customers who are well acquainted with the trade name of the appellant firm and respondent is not using a similar name. Further reliance has been placed on Sivaramkrishna Traders v. Kamal Traders, 2003 (2) ALT 626 where retired partners were using the same trade name for projecting the firm business. This is not the case here. Further reliance has been placed on Procter & Gamble Company v. Joy Creators & ors., 2011 (45) PTC 541 (Delhi) where trade mark of Olay total effect has been fraudulently used by the defendants and it was held that it is a well-known registered trade mark and the defendant is using it dishonestly. This is not the case here.
13. In view of the above, the court below has rightly held that there are no similarities between the two trade names. There cannot be a chance for confusion to the customers who are dealing with the appellant or the respondents and other many business are running using the same words "Gem Palace". The respondents are registered under the Companies Act under an enactment and it is ongoing concern could not be restrained by an injunction.
14. In view of the above, there is no infirmity or perversity in the impugned order of the court below and it has rightly been held that no prima facie case for injunction is made out in favour of appellants.
There is no merit in this appeal and it is liable to be dismissed.
Consequently, the appeal is dismissed.
Appeal dismissed.
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