Use Of Name 'RAKYAN' By Defendant Was Not Bonafide U/s. 35 Of TM Act- Delhi HC In TM Infringement Suit

The Division Bench of Justice Vibhu Bakhru and Justice Amit Mahajan while setting aside the judgment passed by the Single Judge observed that the Respondent, who started their business initially under the name 'DIAMEZ' and later on changed to 'NEENA & RAVI RAKYAN' coupled with the fact that the business was commenced from the adjoining premises, is sufficient to reach the conclusion that the respondent was not entitled to the benefit of Section 35 of the Act.

The Court thus observed -

"In view of the specific evidence being filed, which remain uncontroverted, it cannot be said that the use of the name 'RAKYAN' 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 that the business was commenced from the adjoining premises are sufficient to reach a conclusion that the defendants were not entitled to benefit of Section 35 of the Act."

*Section 35 of the Trade Mark Act 1991 entitles a person to use his own name even if that name is the registered trademark of some other person. However, the pre-condition is that the said person must be using his name bona fide and not deceive the public or create doubt or confusion in the mind of the public.

Advocate Pravin Anand appeared for the Appellant before the Court.

The issue dealt with by the Court was -

• Whether the use of its own name by the defendant is bona fide or is for the purpose of riding on the popularity of an established trademark.
  

The bonafide 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, said the Court.

The Court observed that "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." and that "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 Court also noted that in various cases 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 the likelihood of confusion and deception.

Accordingly, the Court set aside the judgment passed by the Single Judge which was based on the prima facie view of the Supreme Court that the respondent cannot be injuncted from using their own name in view of Section 35 of the Act and that "the principles laid down in relation to disposal of application under order XXXIX Rule 1 & 2 i.e., "(a) whether prima facie case has been made out; (b) whether balance of convenience is in their favour; and (c) whether plaintiff will suffer irreparable injury if the temporary injunction is not granted. Interlocutory orders do not, in that sense, finally decide the merits of the controversy involved in the suit. Some preliminary findings that may have been given in the interim orders do not impinge upon the legal rights of the parties on the principle of res judicata.", would not, notwithstanding the evidences led, continue to apply at the final stage."

Cause title- M/s Varun Gems vs. M/s Precious Jewels & Anr.

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