TaxTMI 
TaxTMI 
2009 (4) TMI 1072
X X X X Extracts X X X X
X X X X Extracts X X X X
....ants 2 and 3 carrying on business at Delhi of retailing of the said artificial jewellery; of these the defendant No. 2 is carrying on business in the name and style of ROLEX Jewellery House. 3. The plaintiff claims adoption of the trade mark ROLEX and the first registration thereof in Switzerland in 1908. It is further the case of the plaintiff, that the plaintiff has since then been using the trademark ROLEX in respect of its distinguished products and business and has been trading under the said name extensively across the world; that ROLEX is a coined and distinctive name having no dictionary meaning; that it is registered in 140 jurisdiction across the world; that in India also it is registered in class 14 relating to horological and chronometric instruments and watches and clocks of all types since 1949; that the plaintiff on 24th April, 2001 also got ROLEX in Hindi registered in class 14 with respect, inter alia, to chains (Jewellery), charms (Jewellery), diamond earrings, jewel cases of precious metal Jewellery, medallions (Jewellery), necklaces (Jewellery), ornament (Jewellery), Pearl (Jewellery) etc. The plaintiff claims having used the trademark ROLEX in India since 19....
X X X X Extracts X X X X
X X X X Extracts X X X X
....decessor-in-interest had on 2nd March, 1995 and 10th June, 1998 applied for registration of the trademark ROLEX in class 14 in respect of artificial Jewellery; the said application had been opposed by the plaintiff vide opposition filed on 10th October, 2003 - that the suit was instituted in 2008 falsely stating that the plaintiff became aware of the actions of the defendants impugned in the suit in November, 2007 only. ii. that the plaintiff had, by its inaction, allowed the defendants to develop their business in and around the trademark ROLEX in respect of artificial Jewellery and are now estopped from restraining the defendants. The principle of delay/latches and acquiescence are also invoked. iii. that the plaintiff is not engaged in the business of Jewellery in which the defendants are engaged; the trade channels are different and there is no possibility of confusion/deception. iv ROLEX is a common word with over 25 parties having registrations thereof in their names in different classes for different goods from the year 1953 onwards. Besides the said registrations, there are large number of other parties using the mark ROLEX in respect of different....
X X X X Extracts X X X X
X X X X Extracts X X X X
....thereof by the defendants and there could be no question of the defendants attempting to take any advantage of the mark of the plaintiff. iv. Sections 33 and 34 of the Trademarks Act, 1999 were stated to have come into play in the facts of the present case. v. even otherwise it was argued that there is a huge difference in the price at which the goods of the plaintiff and the goods of the defendants were sold and owing to the sale of the plaintiff's goods from exclusive outlets, there could be no possibility of any confusion. vi. the mark of the plaintiff is known only to the affluent inasmuch as for 40 years there were import restrictions in this country as a result whereof the plaintiff could not have acquired any reputation in India. vii. it was offered that the defendants shall not use the said trademark for goods other than artificial Jewellery and defendants also offered to maintain the accounts during the pendency of the suit, to, in the event of the plaintiff ultimately succeeding, compensate the plaintiff. viii. reliance was placed on 1998 PTC 18 as well as on the judgment dated 2nd February, 1988 of a Single Bench of the Bo....
X X X X Extracts X X X X
X X X X Extracts X X X X
....h that person or a predecessor in title of his has continuously used that trade mark from a date prior - (a) to the use of the first-mentioned trade mark in relation to those goods or services be the proprietor or a predecessor in title of his; or (b) to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his; Whichever is the earlier, and the Registrar shall not refuse (on such use being proved), to register the second mentioned trade mark by reason only of the registration of the first mentioned trade mark." 10. On the basis of the above, it follows that the plaintiff inspite of being a registered proprietor of the trademark ROLEX with respect to Jewellery would not be entitled to restrain the use by the defendant of the same trademark in relation to Jewellery if the defendant has used the trademark ROLEX in relation to Jewellery since prior to the registration of the plaintiff with respect thereto i.e., 24th April, 2001. The plaintiff does not claim user since prior to 24th April, 2001 in respect of jewellery, or for that matter, even now. 11. The parties are at issue as....
X X X X Extracts X X X X
X X X X Extracts X X X X
....registered in favour of the plaintiff with respect to watches etc since much prior to the user claimed by the defendants from 1995. If the plaintiff satisfies the test of Section 29(4)(c), the plaintiff even on the basis of its registrations other than with respect to jewellery, would be entitled to maintain an action of infringement against defendants with respect to jewellery. The only question to be determined at this prima facie stage is whether the registered trademark ROLEX of the plaintiff, in relation to watches, has a reputation in India and the use of the mark by the defendants is without due cause and takes unfair advantage of and/or is detrimental to the distinctive character or repute of the registered trademark. 15. Section 2(4)(c) defines a well known trademark as the one which in relation to any goods, means a mark which has become so to the substantial segment of the public which uses such goods that the use of such mark in relation to other goods would be likely to be taken as indicating a connection in the course of trade between those goods and a person using the mark in relation to the first mentioned goods. In my view the segment of the public which uses th....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... " used in connection with cars. The defendant in that case was restrained from using the name "Benz" with reference to underwear. The Senior counsel for the plaintiff also relied upon (i) Hamdard National Foundation v. Abdul Jalil application for interim relief in suit No. 1240/2004 decided on 13th August, 2008 where use of name Hamdard in relation to processing and marketing of rice was injuncted notwithstanding plaintiff till then not dealing in the same and diversity in the goods and considerable delay in bringing the action. It was held that the consumer was likely to believe that the goods of defendant, though dissimilar, originate from the plaintiff. (ii) General Motors Corporation v. Yplon SA decided by the court of Justice of European Communities and Premier Brands UK Ltd. v. Typhoon Europe Ltd. Fleet Street Reports (2000) 767 on the aspect of deception and dilution respectively. iii) Order of Assistant Registrar of Trade Marks, Singapore holding that watches have over the years evolved from their traditional function as being merely time keepers to being distinguished as items of fashion/fashion accessories. iv) Cartier International B.V. v. Choosy Corner (2003) 26 PTC 16....
X X X X Extracts X X X X
X X X X Extracts X X X X
....e in India, into buying expensive watches, knows of ROLEX watches and ROLEX has a reputation in India. Not only so, to satisfy the needs/demands of consumers in different countries, the well known international brands which were earlier available at prices equivalent to prices in country of origin and which owing to the exchange rate conversion were very high, have adapted to the Indian situation and lowered prices. A large number have set up manufacturing facilities here and taken out several variants. Thus, merely because today the price of a ROLEX watch may be much higher than the price of items of jewellery of the defendants as argued, cannot come in the way of the consumer still believing that the jewellery is from the house of the plaintiff. Also, there can be no ceiling to the price at which the defendants will continue to sell their jewellery. The defendants have claimed to be selling rolled gold jewellery; with the price of gold soaring, there is no certainty that the pieces of artificial jewellery of the defendants would not also be in the same range as the watches of the plaintiff. Even otherwise, the trend in modern times has been towards artificial/semi precious jewell....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... believing the same to be true. In my view, the same would be immaterial. Firstly, nothing has been shown that any of the said users has any significant presence. Secondly, it is now well settled in Honda (supra) in turn relying upon Indian Shaving Products Ltd. v. Gift Pack that merely because the plaintiff who is otherwise found entitled to the interim injunction is shown to have not taken any step against other infringers is no ground to deny relief to the plaintiff. It cannot also be said that the plaintiff's trademark has lost its distinctiveness for the said reason. The reply affidavit of the plaintiff lists the orders of the Trade Mark Registry from 1964 to 2000, where plaintiff's mark has been protected inter alia for reason of having great reputation. It also shows that the plaintiff has been enforcing its rights. Though the list filed by defendant No. 1 in this regard is long but a perusal thereof shows a number of applicants to have abandoned or withdrawn their applications. This is a vast country. Mere long list of applicants/registrants of mark, without any extensive use of the mark, cannot dent the distinctive character or repute of the mark. 23. I therefor....