Sant Ram Mangat Ram Jain Jewellers vs Sant Ram Mangat Ram Jain

Dr. Raghbir Singh, J

The respondent/applicant filed an application bearing No. 427921 for the registration of the trade mark 'Sant Ram Mangat Ram Jain' in respect of

gold and diamond jewellery under Class 14. The mark was advertised in the trade marks journal No. 1009 dated 16th June, 1991 at page 403. The

appellant/opponent filed a notice of opposition to oppose the registration on the following grounds:-

(i) That 'Sant Ram Mangat Ram Jain' is the trade mark of the opponent and they have been continuously using the same for more than 50 years in

respect of gold and diamond jewellery. The mark has by virtue of extensive use and publicity acquired valuable reputation among the traders and

consuming public;

(ii) That Shri Sant Ram is the name of the opponent's late grand father worked under the name and style of M/s. Sant Ram Mangat Ram Jain,

Jewellers, Sarafa Bazar, Ambala City;

(iii) That the applicant's impugned mark is likely to deceive or cause confusion within the meaning of section 11(a) of the Act;

(iv) That Shri Pawan Kumar Jain is not in any way lineally related to Shri Sant Ram or Shri Mangat Ram. Thus, the mark applied for is not registrable

under sections 11(a), 11(e) and 18(1) of the Act.

The respondent/applicant filed the counter-statement on 5th October, 1992 denying the averments in the notice of opposition. They submitted that

they are in the business of manufacturing and marketing of gold and diamond jewellery since 1960 under their trade mark 'Sant Ram Mangat Ram

Jain' and thus the said trade mark enjoys goodwill and reputation throughout India and the said trade name/trade mark is distinctive of the goods of the

applicants. They also filed certain evidences in support of registration of the said mark.

The appellant/opponent filed evidences of the user by way of an affidavit dated 25th February, 1993 on 26th February, 1993 from Shri Kuldip

Chand Jain, partner of the firm and they also filed a few more evidences in support of the opposition. The respondent applicant filed evidence of user

and reputation on 17th November, 1993 which included some affidavits, licence issued under the Gold Control Rules, 1968, copy of deed of lease of

building dated 4th May, 1968 between the President of India and the applicants, copy of the dissolution deed of partnership dated 30th July, 1980, copy

of order dated 30th September, 1991 of the Court of Additional District Judge, Chandigarh and photocopy of invoices since the year 1981 onwards.

Appellant/opponent filed evidence under Rule 55 on 25th April, 1994.

Learned Deputy Registrar of Trade Marks heard the matter on 19th August, 1994. He by his order dated 25.8.1994 had disallowed the opposition.

The present appeals is against the above order. The same came up for hearing before the Intellectual Property Appellate Board (IPAB) on 23rd

January, 2004. Shri A.K. Goel, Advocate appeared for the appellant and Shri M.K. Miglani, Advocate appeared for the respondent. The learned

counsel for appellant/opponent argued that the opponents are using the trade mark 'Sant Ram Mangat Ram Jain Jewellers' since the year 1945

regularly and thus they are prior user of their mark. He submitted that the use of the trade mark should be restricted to the Union Territory of

Chandigarh as all India registration would affect the interest of the appellant. The arguments of the learned counsel for the respondent/applicant were

based upon the evidences which they have filed in support of their claim. They argued that they are carrying the business of jewellery under the trade

mark 'Sant Ram Mangat Ram Jain' since 1960 at SCO 40, Sector 17-E, Chandigarh regularly and they have filed sufficient trade related evidences in

the nature of invoices, Government licence etc. In the meantime there had been the dissolution of the partnership with the exit of a few partners. It

shall be material to draw support from the facts related to the dissolution deeds. It leads us to the circumstances of formation of the partnership

business way back in 1960 at Chandigarh and the participants therein. The dissolution deed had been executed between Shri Pawan Kumar Jain, son

of Shri S.K. Jain and Smt. Swaran Kanta Jain wife of late Shri Raj Kumar Jain. It reveals that the two persons responsible for establishing the

partnership firm at Chandigarh to start with are lineally descendants of Shri Sant Ram and Shri Mangat Ram and hence they adopted the trade mark

and name of the firm as 'Sant Ram Mangat Ram Jain'. The firm 'Sant Ram Mangat Ram Jain' at Chandigarh was started in the year 1960 as a

partnership firm consisting of S/Shri Pawan Kumar Jain, Jai Kumar Jain, Raj Kumar Jain and Kasturi Lal Jain. Shri Kasturi Lal Jain was the adopted

son of Late Shri Sant Ram and Shri Raj Kumar was the son of late Shri Mangat Ram Jain. Also Shri Sant Ram and Shri Mangat Ram Jain were

partners from 1958 at Ambala. As such, the name and the trade mark 'Sant Ram Mangat Ram' was adopted, being the names of the fathers of the

two partners. The partnership business had been continuing since 1960. In 1972 when Shri Raj Kumar died, in his place his wife Smt. Swaran Kanta

Jain was admitted into the partnership. Simultaneously, Shri Jai Kumar Jain retired from the firm and the firm Sant Ram Mangat Ram Jain Jewellers

fell into the lap of two partners, namely, Shri Pawan Kumar Jain and Smt. Swaran Kanta Jain. In 1980 Smt. Swaran Kanta Jain retired from the firm

leaving the assets, goodwill, gold licence and the business with Shri Pawan Kumar Jain who continues till date as the proprietor of that firm. There is

nothing in law which can deny him use of the trade mark 'Sant Ram Mangat Ram Jain' which devolved to him by the successive exit of certain

partners which included lineal descendants of Sant Ram and Mangat Ram.

It is abundantly clear from the above that the firm in the name and style of Sant Ram Mangat Ram Jain at Chandigarh through its existence since

1960 in the same business and at the same premises has been trading in the business of diamonds and gold jewellery in a bona fide manner under the

impugned trade mark. The firm had been started with two out of four partners having been direct descendants of late Shri Sant Ram and Shri Mangat

Ram who had their business in Ambala. Thus, the initiation of the name of the firm had been done in a bona fide manner and the mark was honestly

adopted with the consent of Shri Kasturi Lal Jain and Shri Raj Kumar Jain, who were partners. However, the course of events have taken a shape

that with the successive retirement of the descendants of late Shri Sant Ram and Mangat Ram the firm bearing the name and style without any

change has fallen into the lap of Shri Pawan Kumar Jain who of course is not the direct descendant of either Shri Sant Ram or Shri Mangat Ram. It is

again pertinent to mention that the name and style of Sant Ram Mangat Ram Jain which has come to the ownership of Shri Pawan Kumar Jain has

been done only with the consent of the original partners or their descendants who initiated the firm in 1960.

We find that there is no substance in the submission of the counsel for the appellant that the registration of the respondent's mark should be registered

restricting the sale of goods to the Union Territory of Chandigarh. In the present case, the respondent has been using the mark honestly with the

consent and support of Shri Kasturi Lal Jain and Shri Raj Kumar Jain, who are the lineal descendants and who were also partners of the respondent's

firm. In view of the honest adoption, they are entitled to the same right as the appellant's and they are also the proprietors of the trade mark.

Accordingly the appeal is dismissed. No order for costs.