Citation	AIR1983DELHI161, ILR1981DELHI592
Court	Delhi High Court
Decided on	September 11, 1981
Judges	G.C Jain, J
Parties	Plaintiff: Kala Niketan, a firm dealing in Sarees under the name “Kala Niketan” Defendant: A firm also dealing in Sarees under the name “Kala Niketan”

 

Introduction 

– This case involves a trademark infringement case filed by Kala Niketan against another business using the same name. 

– The plaintiff in this case is seeking a permanent injunction to prevent the defendant from using the same trade name.

– The defendant claims that the name is descriptive of the goods sold and is not unique to the plaintiff. 

– The court ultimately ruled in favor of the plaintiff and granted a permanent injunction against the defendant. 

 – The judgment emphasizes the significance of trade names in establishing brand identity and consumer trust.

– It also illustrates the legal standards applied to assess the distinctiveness of a trade name versus its descriptiveness.

– The ruling serves as a precedent for similar cases involving trademark disputes and the protection of intellectual property rights.

 

Facts of the case 

The plaintiff, Shrimati Momi Devi,  started a business selling sarees under the trade name “Kala Niketan” in 1957. 

The plaintiff brought her two sons Shambhoo Nath Khanna and Krishan Lal Khanna into the partnership in 1958

Shambhoo Nath Khanna  retired from the firm in 1966 and Shrimati Momi Devi retired in 1972.

Krishan Lal Khanna took over the business as the sole proprietor.

The defendant started a similar business under the same trade name “Kala Niketan” in 1975.

The plaintiff claimed that the defendant was using the trade name with the intention of passing off their business as that of the plaintiff and causing confusion in the market.

The plaintiff claimed that the defendant’s actions were unfair competition and had caused them loss of business.

The plaintiff sought a permanent injunction to restrain the defendant from using the trade name.

Legal Issues

The primary legal issue in this case revolves around trademark infringement and the distinctiveness of the trade name “Kala Niketan.”

The court had to determine whether the name was descriptive or distinctive enough to warrant protection under trademark law.

Another significant issue was whether the defendant’s use of the name constituted passing off and unfair competition.

The court also considered the history of the trade name’s use and the reputation it had garnered over the years.

The plaintiff’s long-standing use of the name and its association with quality sarees played a crucial role in the court’s deliberation.

The defendant argued that the name was generic and commonly used in the industry, which raised questions about the validity of the trademark claim.

Arguments by the Parties

Plaintiff’s Arguments:

The plaintiff, who runs a business under the name “Kala Niketan” since 1957, had established a reputation and goodwill throughout Delhi and its suburbs.

The defendant was aware of the plaintiff’s rights and interests and adopted the same trade name to earn illegal profits. 

The defendant was passing off his goods as those of the plaintiff by using the same name.

This created confusion in the trade as customers believed they were purchasing from the plaintiff.

This resulted in losses for the plaintiff.

The defendant did not have any right or interest to use the trade name “Kala Niketan.”

The plaintiff had invested a significant amount of money in advertising their trade name.

The plaintiff’s business was profitable.

Defendant’s Arguments:

The word “Kala Niketan” is descriptive of the trade of selling sarees.

The word “Kala” is common in the saree trade.

There were other businesses in India that used the name “Kala Niketan.”

The defendant did not intend to cause any confusion or injury to the plaintiff’s business.

The defendant’s business was located in a different market at a considerable distance from the plaintiff’s.

The defendant’s shop was distinctly identifiable because it was in a different location and the defendant used the words “South Extension” on its signboard.

The defendant had been using the words “South Extension” since 1978.

The defendant was not intentionally misrepresenting itself as the plaintiff.

Analysis of the court 

The court discusses the legal principle that a trade name cannot be used to merely describe the goods or their characteristics. If the trade name is merely descriptive, it cannot be protected from being used by others.

The court cites the case of Office Cleaning Services Limited v. Westminster Window & General Cleaners Limited (1946) 63 R.P.C. 39, where Lord Simonds states that a trader adopting commonly used words for their trade name risks confusion.  However, the court also clarifies that this risk is acceptable as long as the first user does not unfairly monopolize the words.

The court further states that when determining if a word is descriptive, it should be considered as a whole.The test is whether the word or phrase, when used, is reasonably indicative and descriptive of the thing intended. It does not have to be a complete, clear, or accurate description. Instead, the court should consider the impression and signification conveyed to the public. 

The court emphasizes that a trade name should not be suggestive or arbitrary, but rather descriptive of the goods. This means the trade name should convey information about the nature or character of the goods.

The court also examines the evidence presented regarding the reputation and goodwill of the plaintiff’s business.** It acknowledges that the plaintiff had established a significant presence in the market, which could be affected by the defendant’s use of a similar name.

The court considers the likelihood of confusion among consumers as a critical factor. It assesses whether the average consumer would mistakenly believe that the defendant’s goods were associated with or endorsed by the plaintiff due to the similarity in trade names.

The court notes the geographical distance between the two businesses but argues that this alone does not eliminate the potential for confusion. It highlights that consumers may not always be aware of the specific locations of businesses when making purchasing decisions.

The court ultimately concludes that the defendant’s use of the name “Kala Niketan” could lead to a misrepresentation of the source of goods. This misrepresentation could harm the plaintiff’s established reputation and result in unfair competition.

In light of these considerations, the court leans towards protecting the plaintiff’s rights to their trade name. It emphasizes the importance of maintaining fair competition and preventing consumer deception in the marketplace.

Key Issues:

The defendant’s right to trade under the name Kala Niketan.

Whether the plaintiff is entitled to relief.

 Whether the trade name Kala Niketan is descriptive and common to the trade.

Judgment

The plaintiff, who operated a saree business under the name “Kala Niketan” since 1957, filed a suit against the defendant for trademark infringement. The defendant also used the same trade name “Kala Niketan” for their saree business.  The plaintiff argued that the defendant’s actions were a violation of their trademark and were causing confusion among customers. 

   The judge held that the name “Kala Niketan” was not descriptive of the saree business and was therefore not available for use by the defendant.

 The plaintiff was entitled to a permanent injunction restraining the defendant from using the name “Kala Niketan”.

 The judge declined to grant the plaintiff’s request for an account of profits or for the destruction of dies, blocks, or labels because there was no evidence that the defendant had any such items. 

Reasoning:

The court found that the plaintiff had acquired a valuable goodwill and reputation among customers for its trade name, and that the defendant’s use of the same name was likely to cause confusion.

The court rejected the defendant’s argument that the name “Kala Niketan” was descriptive of the saree business, finding that it was not inherently suggestive of the quality or character of the goods.

The court also noted that the defendant had no evidence to support its claim that the name was commonly used by other saree businesses.

The court concluded that the plaintiff was entitled to injunctive relief to prevent the defendant from using the name “Kala Niketan”.

The court’s judgement was based on the principle that a trademark should be distinctive and not merely descriptive of the goods it represents. In this case, the court found that the defendant’s use of the same name as the plaintiff was likely to cause confusion among customers and harm the plaintiff’s business. The court’s decision demonstrates the importance of protecting trademark rights in order to prevent unfair competition and protect the goodwill of businesses.

Conclusion 

The plaintiff was successful in proving that the defendant was using the same name ‘Kala Niketan’ that the plaintiff had been using for more than 20 years. 

The Court found that the defendant’s use of the name was likely to cause confusion and injure the plaintiff’s reputation.

The court issued a permanent injunction restraining the defendant from using the name ‘Kala Niketan’ or any other similar name.

The plaintiff was also awarded costs.

This case underscores the importance of establishing distinctiveness in trade names and the protection afforded to businesses against unfair competition.

It highlights the court’s role in balancing the rights of businesses to protect their brand identity while considering the arguments of good faith use by defendants.

The ruling serves as a precedent for similar cases involving trade name disputes, emphasizing the need for businesses to be vigilant in protecting their trademarks.