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The Delhi High Court’s decision on 9th May 2017, has, asserted the scope of deceptive similarity in infringing a registered trademark and the defence incurred on the ground of ‘honest and concurrent use’ and ‘prior use’, while deciding the case, Tarun Jain v. Manoj Jain. In this case, plaintiff instituted the suit for permanent injunction in order to restrain the defendants from infringing the trademark of the plaintiff. Both the parties were associated with the business on the basis of family relationship, and used the same trademark/name, although the trademark was registered in the name of the plaintiff. When they both got parted, the defendants started a new business on the same goods and in the same area as that of the plaintiff with a trade name similar to that of the plaintiff. A case restraining the defendants from using the similar mark /name which can be deceptively similar to the mark of the plaintiff arose, in which, defendants offered to deposit a sum of Rs.5 Lakhs to compensate the loss suffered to the plaintiff, if any, in order to enable the defendants to continue using the marks and thus interim injunction was not granted at that stage. Later, the issue arose, as to whether the use of the names/marks similar to that of plaintiff, by the defendants, amounts to infringement of the plaintiff’s trademark and passing off goods / business of the plaintiff.
The plaintiff argued that, he is the registered proprietor of the business and that the defendant was allowed only on account of relationship. Contradicting the same, the defendants contended that, the business was built and developed by him and that, plaintiff was only a trainee under him and that since he is a person behind conceptualising the Trade mark, he should not be left out. The defendants also claimed defence under ‘honest and concurrent use’ and ‘prior use’.
The Delhi High Court, taking into consideration the contention of both the parties opined that, the use by the defendants of NIKKY FASHION and NIKKY GIRLS WEAR or any other mark with the word ‘NIKKY’ in relation to the same goods/business and in the same or from a premises in close proximity to the premises with that of the plaintiff being carried on, will amount to infringement of trademark and defendants passing off their business goods. The Court also opined that, since defendants did not plead any prior or concurrent user of NIKKY FASHION and NIKKY GIRLS WEAR along with NIKKY POINT, cannot invoke the provisions ’honest and concurrent use’ and ‘prior use’. Accordingly, the application was allowed and defendants were restraint from using the impugned trademark/ name, which is deceptively similar to that of the plaintiff.
The Delhi High Court decided to prohibit the use of the impugned mark, as it comes within the grounds of infringement under section 29 of the Act. Since the impugned mark is similar and identical to that of the plaintiff, it is likely to create confusion among the public. For a mark to be deceptively similar, the overall creation of confusion has to be looked into, which means that, it should be capable of causing confusion to the substantive portion of the public having an average intelligence. Herein, since the impugned mark is similar and identical to that of the plaintiff, it is likely to create confusion among the public which causes deception. It is not only the mark which is identical, even the goods of both the parties are identical and they carry business which is in proximity with the other, which ensure high chances of confusion among the public and thus on the ground of deceptive similarity, there is infringement caused by the defendants.
Also, while considering the defence under honest and concurrent use under section 12 of the Act, it depends on 5 factors which was laid down in the case, John Fitton and Co. case, they are;
The extent and use in time and quantity and area of the trade.
Degree of confusion likely to ensure from the resemblance of the marks which is to a large extent indicative of the measure of public convenience.
Honesty of concurrent use.
Whether any instances of confusion have in fact been proved.
The relative inconvenience which would be caused if the mark was registered.
Substituting the facts of the above case to the aforesaid conditions, since, the defendant have not claimed priority to be concurrent user, who carried down the business with regard to identical goods, in the place which is near to that of plaintiff, will show the degree of confusion and the level of honesty of the concurrent use and that, it is clear from the facts that, it will cause relative inconvenience to the plaintiff and so the defence of honest and concurrent use cannot be invoked.
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