Sections 2 & 29
Dispute as to use of Trademark/trade name ROLEXby the Defendant No. 2 who is carrying on business in the name and style of 'ROLEX Jewellery House' whereas Rolex watches have acquired a status as enjoyed by the jewellery.
HELD The application of the plaintiff for interim relief restraining the defendants from dealing in artificial jewellery or in any other product bearing the trademark /trade name ROLEX or any deceptive variation thereof is allowed. Over the years and very quickly in recent times, the international boundaries are disappearing. With the advent of the internet in the last over ten years it cannot now be said that a trademark which is very well known elsewhere would not be well known here. The test of a well known trademark in Section 2(zg) is qua the segment of the public which uses such goods. In my view any one in India, into buying expensive watches, knows ofROLEX watches and ROLEX has a reputation in India. Not only so, to satisfy the needs Idemands 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 I semi precious jewellery. In fact, the attraction to gold is confined to this part of the world only. In India also today there are several brands of artificial jewellery I semi precious jewellery whose brand value and I or prices are quite comparable to the gold jewellery of the conventional gold smiths. [Para 20]
The plaintiff has in reply to the additional affidavit of the defendant stated that jewellery and watches are allied/cognate, more so since both are items of adornment and are typically sold to customers through common trade channels of retail, etc. The affidavit on behalf of the plaintiff also cites TITAN, HARRY, WINSTON, SEIKO and CHOPARD which though originally engaged in the business of watches have ventured into jewellery or vice versa. Even otherwise, in my view watches Iclocks have ceased to be an item merely for knowing the time or a utility or a necessity. A large cross section of the population is today carrying on their person cell phones all the time. The cell phone invariably shows the time also. The need, if any, of the watch/clock for knowing the time is thus met. However, the watches continue to be marketed and sold. The reason being that over the years the watches have acquired a status as enjoyed by the jewellery. The watches are worn and clocks adorn the houses as a symbol of status. The watch / clock has metamorphosed from a simple instrument comprising of two needles I heads in a metallic case to intricate designs I shapes and which can besides on the wrist be worn as a locket, arm band and designer watches. This is quite evident from the advertising of watches and clocks. Today the stress in marketing I advertising thereof is more on its looks and ornamental value rather on its machinery. Gone are the days when before procuring a watch its longevity was enquired. Today watches are increasingly being used as a gift/novelty/ souvenir. The purpose for which jewellery is worn is being met by watches also. In fact, watches are one of the few pieces of jewellery available to the male, half of the population. In the city of Delhi also, many expensive brands of watches are sold through retail outlets of jewellers. The jewellers incorporate a watch in designs of their jewellery. [Para 21] The goods of the plaintiff may lose their sheen to the strata of the society for which they are intended if such strata finds the goods in the same brand name even though not from the house of the plaintiff being available for a much lower price. The goods of the plaintiff would then cease to be a status symbol or a fashion statement. Undoubtedly, the same would be to the detriment of the plaintiff. Having found a prima facie case in favour of the plaintiff and irreparable injury to be caused to the plaintiff by allowing the defendant to continue using the trademark, I also find the element of balance of convenience to be satisfied in the present case. The registration of the mark of the plaintiff is over 90 years prior to the claimed commencement of the use by the defendant. Even if the defendant, at the time of commencing the use, did not know of the inherent risk in adopting the well known trade mark, the defendant, at least, immediately on applying for registration and on opposition being filed by the plaintiff became aware of the perils in such use. Thus, use by the defendant of the mark is for short time only and use during the period of opposition is of no avail. The mark has got no relation to the jewellery being marketed by the defendants. Unless the defendant is deriving any advantage of the goodwill /brand value of the plaintiff and which it is not entitled to, it ought not to make any difference in the business of the defendants if the said jewellery is sold under a mark other than ROLEX. [Para 24]
With respect to arguments of the defendants of the claim being barred by time, infringement is a continuing cause of action and the defence of Limitation Act is not available. Similarly, there can be no estoppel against the statute. With respect to latches, acquiescence and waiver, such defence is available only when some positive act of encouragement is shown on the part of the plaintiff. Not only no such positive act shown in the present case but the opposition filed by the plaintiff to the application for registration of the defendant ought to have warned the plaintiff that the plaintiff is not allowing the defendant to use the mark. The case of infringement having been made out, the said pleas have no meaning. As aforesaid nothing to show any sales by defendant under the mark ROLEX, for prior to 2002 has been filed. Since then, the opposition is pending. The said period cannot be relied upon by the defendant for pleading acquiescence and waiver. [Para 25]