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M/s Bikanervala v.

M/s Aggarwal
Bikanerwala
Case facts:
The respondent was running a sweet shop in with the name of AGGARWAL BIKANERVALA
and the plaintiff was using the name BIKANERVALA from 1981 the same was registered by him
in the year 1992. The plaintiff applied for permanent injunction over the use of the name
AGGARWAL BIKANERWALA by the defendants for their sweet shop.

Arguments on behalf of the Plaintiff:


Once the word Bikaner is suffixed with Vala, the combined word becomes a coined
and innovative word and the Plaintiff has an exclusive right to use it.

The Plaintiffs trade has been a runaway success for more than two decades having
goodwill and reputation. The trademark is so famous that it has acquired secondary
significance and is highly distinctive.

The Plaintiff contends that although the trade mark is a geographical name of a city,
under the common law of passing off there are no exceptions by way of any geographical
and/or descriptive names, which may constitute disqualification for statutory registration.

The trade mark BIKANERVALA has to be considered as a whole and it is not correct to
split up the trade mark into its constituent parts and, therefore, the use of the trade mark
AGGARWAL BIKANERWALA results in passing off.

Arguments on behalf of the Defendant:

Plaintiffs suit for the relief of passing off is not maintainable. Bikaner is a
geographical city in Rajasthan and it does not qualify as a trade mark. The expression
Bikanervala conveys definite and specific meaning in ordinary language so as to
indicate the origin of the person or the product from Bikaner.

The expression Bikanervala is neither innovative nor original.

The word Bikanervala for Bikaner sweets, nankeens, etc. is common as a generic
expression and cannot acquire any degree of distinctiveness.

No person is entitled to claim an exclusive right to the use of the word either BIKANER
or WALA either independently or in conjunction. In this connection, provisions of
Section 9 of the Trade marks Act, 1999 are relied upon which prescribe registration of the
trade mark in the nature of geographical names or which have direct reference to the
character and quality of the goods.
Verdict:

The Court granted an injunction in favor of the plaintiff and stopped the defendant from
manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in food
articles for human consumption under the impugned trade mark/trade name/infringing artistic
label 'AGGARWAL BIKANER WALA' or from using any trade mark/trade name/infringing
artistic work containing the name/mark 'BIKANER WALA/BIKANERVALA' or any other
name/mark/artistic work which is identical or deceptively similar to the plaintiff's trademark
'BIKANERVALA'.

Principle of law dealt in the case:

The principle of law used in this case is Infringement of a Trade Mark.

Infringement occurs when someone else uses a trademark that is same as or similar to your
registered trademark for the same or similar goods/services. Trademark infringement claims
generally involve the issues of likelihood of confusion, counterfeit marks and dilution of marks.
Likelihood of confusion occurs in situations where consumers are likely to be confused or
mislead about marks being used by two parties. The plaintiff must show that because of the
similar marks, many consumers are likely to be confused or mislead about the source of the
products that bear these marks.

Similar case:

Apple Corps v Apple Computer

In 1978, Apple Corps, the Beatles-founded holding company and owner of their record label,
Apple Records, filed a lawsuit against Apple Computer for trademark infringement. The suit was
settled in 1981 with an undisclosed amount being paid to Apple Corps.

http://news.bbc.co.uk/2/hi/entertainment/4750533.stm
https://indiancaselaws.wordpress.com/2015/08/29/bikanervala-v-new-bikanerwala/
https://indiankanoon.org/doc/1848362/
http://www.legalservicesindia.com/article/print.php?art_id=1244

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