Amit Mahajan JUDGMENT
Amit Mahajan, J.
1. The appellant, M/s. Varun Gems, has filed the present appeal being aggrieved by the impugned judgment and decree dated 06.04.2018, whereby the suit filed by the appellant praying for restraining the respondent from using the name 'RAKYAN' and/or any other mark which is identical or deceptively similar to the appellant/plaintiff's registered trademark 'RAKYAN'S FINE JEWELLERY', was dismissed.
2. The appellant has been running its business of selling jewellery under the registered trademark 'RAKYAN'S FINE JEWELLERY' from the premises M-31 M-Block Market, Greater Kailash-I, New Delhi-110048.
3. Mr. Jitendra Kumar Rakyan is the managing partner of the appellant and is the paternal uncle of respondent No. 2 (defendant No. 2).
4. The facts in the present case relevant for deciding the present appeal are that, in the year 1951, one late Sh. Sital Dass Rakyan (Defendant No. 2's grandfather and father of Mr. Jitendra Rakyan) started a jewellery business in Connaught Place, New Delhi under the name of M/s. SITAL DASS & SONS. Subsequently, in the year 1961, Mr. Sital Dass Rakyan formed a partnership firm with four partners namely, Mr. Surendra K. Rakyan, Mr. Rajendra K. Raykan, Mr. Virendra K. Rakyan and Mr. Jitendra K. Rakyan as partners.
5. In the year 1962, Mr. Surendra K. Rakyan (now deceased) retired from the family business. He shifted to Jaipur, and opened "RAKYANS JEWELLERS" in partnership with his uncles. While the other partners remained in Delhi and continued with the same jewellery business under different names as each of them constituted different firms over a period of time.
6. In the year 1978, all the partners of M/s. SITAL DASS & SONS except Mr. Surendra K. Rakyan formed a new partnership firm named Virendra Kumar and Co., which and was subsequently re-constituted as SITAL DASS SONS in the year 1982. This firm was also dissolved in the year 1991. Thereafter each partner of newly constituted SITAL DASS SONS started separate businesses under the same name Sital Dass Jewellers and opened shops at various places within Delhi.
7. Mr. Jitendra K. Rakyan, in the year 2000, opened a shop at M-31 M-Block Market, Greater Kailash-I, New Delhi-110048 and in the year 2005, got the trademark 'RAKYAN'S FINE JEWELLERY' registered in the name of partnership firm 'Varun Gems'.
8. In the year 2011, Ravi Rakyan, son of Mr. Rajendra K Rakyan, opened a shop at M-32, M-Block Market, Greater Kailash-I, New Delhi-110048 under the name 'DIAMEZ'. Subsequently, in the year 2012, they changed the name from 'DIAMEZ' to 'NEENA & RAVI RAKYAN'.
9. Initially, an interim ex-parte injunction was granted in terms of the order dated 01.06.2012, whereby the respondents were restrained from using the name 'RAKYAN' or any other mark which is identical or deceptively similar to the registered trademark 'RAKYAN'S FINE JEWELLERY'.
10. The respondents appealed the said decision to the Division Bench and thereafter, to the Supreme Court. The said injunction was vacated by the Hon'ble Apex Court by an order dated August 4, 2014 passed in SLP(C) No. 9942 of 2013. The said order reads as under:
"11. We have perused, the hoardings of the shops where they are doing the business and upon perusal of the hoardings, we do not find any similarity between them.
12. In our opinion, looking at the provisions of Section 35 of the Act, there is no prima facie case in favour of the plaintiff and therefore, the defendants could not have been restrained from doing their business. We, therefore, quash and set aside the impugned order granting interim relief in favour of the plaintiff and the appeal is allowed with no order as to costs.
13. We clarify that we have only expressed our prima facie view and the obs........