) ………. M/s.Khimji & Sons … v. M/s.Khimji Ramdas India Pvt. Ltd
Case Details
Signature Not Verified Digitally Signed Signed by: CHITTA RANJAN BISWAL Designation: A.R.-Cum-Sr.Secretary Reason: Authentication Location: Orissa High Court, Cuttack Date: 30-Jun-2025 19:56:50 IN THE HIGH COURT OF ORISSA AT CUTTACK FAO No.558 of 2023 (Form the order dated 8th September 2023 passed by the learned District Judge, Khurda at Bhubaneswar in I.A.No.1 of 2023 (arising out of C.S.No.7 of 2023) ………. M/s.Khimji & Sons …… Appellant Versus M/s.Khimji Ramdas India Pvt. Ltd. ….… Respondent Advocate(s) appeared in this case:- For Appellant For Respondent : : Mr.G.Mukherji, Sr.Advocate Mr.M.Wright, Advocate
Legal Reasoning
“KHIMJI” in India. Therefore as explained earlier a prima facie case is established in favour of the Appellant. 11. So far as the contention of the Respondent that the Plaintiff has approached the Court with delay, the same is not found convincible. The contention that the suit is barred by limitation on the ground that one of the partners of the Plaintiff had purchased a watch from Respondent’s store on 31st January, 2020 and thus having the knowledge of FAO No.558 of 2023 Page 8 of 10 Signature Not Verified Digitally Signed Signed by: CHITTA RANJAN BISWAL Designation: A.R.-Cum-Sr.Secretary Reason: Authentication Location: Orissa High Court, Cuttack Date: 30-Jun-2025 19:56:50 Respondent’s business in India, and the suit being filed on 4th August 2023 is beyond the period of limitation of 3 years. It needs to be answered here that in terms of the direction issued by the Hon’ble Supreme Court in Suo Motu Writ Petition No.3 of 2020 the period of limitation from 15th March, 2020 till 28th February, 2022 has been excluded from computing the periods of limitation. That apart, the allegation of infringement of trademark is a continuous cause of action. 12. What is submitted by the Respondent that the business of watches not being one of the business of the Appellant do not cause any irreparable loss in favour of the Plaintiff-Appellant. The admitted trademark of “KHIMJI” / “KHIMJI & SONS” registered in favour of the Plaintiff and its continued business in jewellery and other sectors weighs the scale of balance in favour of the Plaintiff for temporary injunction against the Respondent (Defendant). When the alleged infringement of trademark is established, as held earlier, keeping in view the nature of business continued by the Respondent regarding sale of luxury watches, it is very much apprehensible that the Respondents are banking upon the reputation and good will earned by the Plaintiff for use of the term “KHIMJI” to improve their business. But the question is, did it so happen in the given facts of instant case? FAO No.558 of 2023 Page 9 of 10 Signature Not Verified Digitally Signed Signed by: CHITTA RANJAN BISWAL Designation: A.R.-Cum-Sr.Secretary Reason: Authentication Location: Orissa High Court, Cuttack Date: 30-Jun-2025 19:56:50 Unfortunately the facts do not speak in favour of the plaintiff. It is because the Appellant has no selling point outside the State of Odisha and Respondent has no outlet or exclusive shop in Odisha. The Respondent has the sale points only at Ahmedabad and Hyderabad. Secondly, the Appellant does not sale any luxury watch for the present. Therefore it would be wrong to conclude now that the Respondent would cause any irreparable loss to the reputation and good will earned by the Plaintiff by using the term “KHIMJI”. 13. In result the appeal is thus rejected and it is made clear that no such observations made in this judgment shall affect the merit of the suit. Judge (B.P. Routray) C.R. Biswal, Sr. Secretary FAO No.558 of 2023 Page 10 of 10
Arguments
Mr.P.K.Mallick & Mr.A.Chatterjee, Advocate CORAM : JUSTICE B.P. ROUTRAY JUDGMENT 3rd June,2025 B.P. Routray,J. 1. Present appeal is directed against refusal of temporary injunction by the learned District Judge, Khurda at Bhubaneswar in FAO No.558 of 2023 Page 1 of 10 Signature Not Verified Digitally Signed Signed by: CHITTA RANJAN BISWAL Designation: A.R.-Cum-Sr.Secretary Reason: Authentication Location: Orissa High Court, Cuttack Date: 30-Jun-2025 19:56:50 I.A.No.1 of 2023 (arising out of C.S.No.7 of 2023). In the impugned order dated 8th September 2023, the prayer of the Appellant to restrain the Respondent from using the mark “KHIMJI” (in Word and Logo) has been refused. 2. The Appellant is the plaintiff and the suit has been filed for a decree of permanent injunction against the Respondent (defendant) restraining them from using trade mark “KHIMJI” (in Word and Logo) “KHIMJI & SONS” (Logo) or any other mark deceptively similar to the Appellant’s registered trade mark in relation to their impugned goods and business. 3. The Plaintiff’s (Appellant’s) case is that it is a partnership firm registered under the Indian Partnership Act, 1932, having its registered office at Shri Ambica House, Lewis Road, Bhubaneswar, Khurdha with Registration no.235 of 1999. The plaintiff having its jewellery business owns and manages the Trademarks of “KHIMJI” brand. It has registered its trademark “KHIMJI” / KHIMJI & SONS JEWELLERY” along with all kinds of logo “KHIMJI” on 9th July 1999 vide trade-mark no.864806 in Class 14 and 35 for jewellery items including chronometry. The Appellant is a leading brand in India and has been promoting jewellery amongst other goods under the brand FAO No.558 of 2023 Page 2 of 10 Signature Not Verified Digitally Signed Signed by: CHITTA RANJAN BISWAL Designation: A.R.-Cum-Sr.Secretary Reason: Authentication Location: Orissa High Court, Cuttack Date: 30-Jun-2025 19:56:50 “KHIMJI” / “KHIMJI & SONS”. The Trademark Certificate of the plaintiff is valid till the year 2029. During passage of time great reputation and good-will have been acquired with the brand name “KHIMJI” / “KHIMJI & SONS”. The Appellant has been continuously promoting their business in different modes including advertisements, publicity, hoardings etc. by spending huge amount of money. 4. The Respondent-Defendant is a company incorporated under the Companies Act, 1956 having its registered office at Ahmedabad, Gujrat. The Respondent Company was incorporated on 23rd February 2009. It came to the notice of the plaintiff that defendant’s company has started for selling luxury watches under the name and style of “KHIMJI’S WATCHES”, which is identical and deceptively similar to the plaintiff’s registered trade-mark. The word “KHIMJI” used by the Respondent is identical to the registered trade-mark of the plaintiff “KHIMJI” (in Word and Logo). As per the plaintiff, such unauthorized use of word “KHIMJI” by the Respondent infringes upon Appellant’s right and the same is likely to cause confusion, mistake and deception about the source of goods and services. Such use of the word “KHIMJI” is also misleading to the public. FAO No.558 of 2023 Page 3 of 10 Signature Not Verified Digitally Signed Signed by: CHITTA RANJAN BISWAL Designation: A.R.-Cum-Sr.Secretary Reason: Authentication Location: Orissa High Court, Cuttack Date: 30-Jun-2025 19:56:50 5. The Respondent’s case is that, it is a duly constituted private limited company incorporated in India on 23rd February, 2009 having its registered Office at Ahmedabad, Gujarat. It is a part of Khimji Ramdas Group of Companies (“Khimji Ramdas Group”), a reputed conglomerate established in 1870 having headquarter in Muscat, Sultanate of Oman. Further, Khimji Ramdas LLC is a Company incorporated in Muscat on 3rd December, 1975. Khimji Ramdas Group has been conducting its business using the term and style of “Khimji” for all its ventures since the date of inception and the name of “Khimji” was used being the surname of the founder of the Group. The brand “Khimji Watches” in Oman was originally led by Mr. Gokaldas Khimji in early 1960s facilitating different brand of watches including Rolex, Cartier and Piaget, Oris and Chopard etc. By the passage of time, Khimji Ramdas Group has established a potent foothold in India through alliances like Rolex, Procter & Gamble, Kelloggs etc. and therefore, the term and word “Khimji” has assumed secondary significance in the use of Khimji Ramdas Group. As a matter of fact, the word “Khimji” is used by Khimji Ramdas Group from very early date even before the incorporation/constitution of Appellant conglomerate though the Indian venture of Khimji Ramdas Group was set up in 2009. In the year 2018, FAO No.558 of 2023 Page 4 of 10 Signature Not Verified Digitally Signed Signed by: CHITTA RANJAN BISWAL Designation: A.R.-Cum-Sr.Secretary Reason: Authentication Location: Orissa High Court, Cuttack Date: 30-Jun-2025 19:56:50 the Indian venture of Khimji Ramdas Group entered into luxury watches distribution and was appointed as the official retailer of Rolex and Tudor watches in India in different cities. In the year 2023, Rolex SA executed two selective distribution agreements with the Respondent for retail sale of Rolex watches in Hyderabad and Ahmedabad. 6. According to the Respondent, “Khimji Watches” is a global brand that operates different boutiques and stores offering luxury brand watches building its own reputation over the years. It is their further case that, on 31.1.2020 and 5.6.2020, two Rolex watches were purchased by one of the partners, namely, Mr. Mitesh Dinesh Khimji, of the Appellant firm and that being so the Appellant was aware of the trade name used by the Respondent and the present suit which was filed more than three years thereafter is barred by limitation. Secondly, there is implied waiver on the part of the Appellant in respect of the trade name by the Respondent. 7. From the analysis of facts as presented by both parties, it is found that admittedly the Plaintiff is the registered user of trademark “KHIMJI” (device), “KHIMJI” (Word) and “KHIMJI & SONS”. Their trademark has been registered in Class-14 and 35 in India since 1999 and valid till 2029. The Respondent is a company incorporated in India FAO No.558 of 2023 Page 5 of 10 Signature Not Verified Digitally Signed Signed by: CHITTA RANJAN BISWAL Designation: A.R.-Cum-Sr.Secretary Reason: Authentication Location: Orissa High Court, Cuttack Date: 30-Jun-2025 19:56:50 on 23rd February, 2009. It was initially using the term “KHIMJI RAMDAS” and for the first time in 2018, i.e. on 29th December 2018, coined the term “KHIMJI’S WATCHES”. The term “KHIMJI’S WATCHES” was not even used by the Respondent in Oman initially and as admitted by the Respondent the term (trademark) “KHIMJI’S WATCHES” was registered in Oman only on 3rd February, 2021. The Respondent continued the business in India as “KHIMJI RAMDAS” from 2009, but on 29th December, 2018 they used the term “KHIMJI’S WATCHES”. 8. The Appellant alleges infringement of trademark against the Respondent. The application for registration of trademark “KHIMJI’S WATCHES” applied by the Respondent has been objected by the Appellant and is pending decision before the Registrar. On the other hand the trademark “KHIMJI” (word and logo) and “KHIMJI & SONS” has been registered in favour of the Appellant in Class-14 and 35. A submission is made on behalf of the Respondent that the business of selling watches of different brands by the Respondent is no way connected to the jewellery business of the Appellant and so, no prima facie case of infringement arises in favour of the Appellant. FAO No.558 of 2023 Page 6 of 10 Signature Not Verified Digitally Signed Signed by: CHITTA RANJAN BISWAL Designation: A.R.-Cum-Sr.Secretary Reason: Authentication Location: Orissa High Court, Cuttack Date: 30-Jun-2025 19:56:50 9. Class-14 enumerates jewellery items and includes Chronometer. It is clarified by the Appellant that it has the business of jewellery having flagship jewellery stores at different places in Odisha, different outlets of motor bikes of different brands and also offices in financial sector. According to the Appellant it is a leading brand in jewellery sector and the sale of watches by the Respondent are purely luxury watches. Therefore the Respondent is creating confusion in the minds of the customers banking upon the reputation and goodwill earned by the Appellant by using the trademark “KHIMJI”. There seems force in the contention of the Appellant since it is admitted that the international brand like Rolex and Tudor etc. are not ordinary watches. The price of such watches speaks itself that they are the luxury watches and it is true that a luxury watch is associated with jewellery decoration. A trademark is for exclusive use and a party spends much to earn that good will for such trademark. When the Respondent initially started business with “KHIMJI RAMDAS”, it is not understood why it suddenly jumped to the word “KHIMJI” alone and this is a suspicious circumstance remained unexplained by the Respondent. 10. It is submitted here by the Respondent that Section 35 of the Trademark’s Act comes in protection of the Respondent since the word FAO No.558 of 2023 Page 7 of 10 Signature Not Verified Digitally Signed Signed by: CHITTA RANJAN BISWAL Designation: A.R.-Cum-Sr.Secretary Reason: Authentication Location: Orissa High Court, Cuttack Date: 30-Jun-2025 19:56:50 “KHIMJI” is a surname common in India and the founder’s name of Respondent conglomerate is Gokaldas Khimji. It is true that Section 35 gives protection to a bona-fide user of his name from interference by other registered user. But as stated earlier, it would have been an important factor if the Respondent had used the word “KHIMJI” alone from their inception, even in the sultanate of Oman instead of ‘KHIMJI RAMDAS GROUP’. It is not only that the Respondent used the term “KHIMJI RAMDAS” from their inception whether in Oman or in India, but also continued their business in India till 29th December, 2018 using the term “KHIMJI RAMDAS”. The registration of the trademark “KHIMJI’S WATCHES” in Oman on 3rd February, 2021 further fortifies the contention of the Appellant that the Respondents are trying best to bank upon the reputation and good will attached with the word