‘Right to use one’s name on one’s goods cannot be compromised’; Delhi HC denies injunction to Jindal Industries for mark ‘JINDAL’ against mark ‘RN JINDAL SS TUBES’

Delhi High Court: Plaintiff seeks an order of interim injunction, restraining defendants from using the mark , or ‘JINDAL’ per se, in any manner as would infringe plaintiff’s registered trade marks. C. Hari Shankar, J.*, opined that the right of a person to use her, or his, own name on her, or his, own goods, could not be compromised; else, it would compromise the right to use one’s name as an identity marker, which would ex facie be unconstitutional. The Court thus held that plaintiff’s prayer for injunction therefore failed even on the sole anvil of Section 35 of the Trade Marks Act, 1999 (‘the Act’) and no case of infringement or passing off was made out as the word mark ‘JINDAL’, and the logo , seen as whole marks, were neither identical nor deceptively similar.

Background

Plaintiff was the registered proprietor of the word mark ‘JINDAL’ since 2014, in Class 17; the word mark ‘JINDAL’ since 2007, in Class 6; and the word mark ‘JINDAL COR’ since 2007 in Class 6. Defendants used the composite mark by combining the initials of the wife of the Manager of SSPL with ‘JINDAL’, defendants had ingeniously infringed plaintiff’s registered trade marks. Defendant 2, the wife of Nitin Kumar Jindal, the Manager of SSPL applied for registration of the impugned mark as a sole proprietor of RN Jindal SS Tubes.

It was submitted that defendants’ mark was clearly similar, if not identical, to plaintiff’s registered ‘JINDAL’ word mark. Plaintiff’s registered word mark had entirely been subsumed in the impugned mark of defendants. ‘JINDAL’ was clearly the most prominent part of the impugned mark. A prima facie case of infringement, within the meaning of Section 29(2)(b) of the Act, therefore, existed.

Defendants submitted that they could not be injuncted from using the impugned mark as ‘JINDAL’ was a common surname. It might be registerable but was not enforceable, in view of Section 35 of the Act. Plaintiff’s attempt was to entirely monopolize use of the common surname ‘JINDAL’, either by itself or with any other words or images. This was clearly impermissible, inasmuch as the name of Defendant 2, who markets the product, was Rachna Nitin Jindal, the use of the impugned mark, by her, was perfectly legitimate. The use of one’s own surname as a trade mark was prima facie bona fide.

Plaintiff’s Mark	Defendants’ Mark

Analysis, Law, and Decision

The Court opined that in view of Section 35, plaintiff could not interfere with the use, by Defendant 2 of her own name, provided, of course, the use was bona fide. The Court observed that Section 2(2)(b) of the Act ordained that “unless the context otherwise requires, any reference, in the Act, to the use of the mark shall be construed as a reference to the use of the printed or other visual representation of the mark”. The Court thus opined that there was no reason for not extending the benefit of Section 35 of the Act to the use of the name in the form of initials either. Therefore, Defendant 2 would be entitled to the benefit of Section 35, in respect of the use, by her, of ‘Rachna Nitin Jindal’, or for that matter, ‘RN Jindal’ or even ‘RNJ’.

The Court opined that in the impugned mark, the most prominent feature was, undoubtedly ‘RNJ’ with the sun symbol alongside. The name below was the name of Defendant 2 herself, R.N. Jindal. The mark did not highlight, or emphasize, in any manner, ‘JINDAL’, over ‘RN’. It was not possible, therefore, to read the mark as ‘JINDAL’, ignoring the ‘RNJ’ or the ‘RN’ which preceded ‘Jindal’ in the small print. The Court also opined that to tear out from the impugned composite mark the word ‘JINDAL’, and allege, on that basis, that the mark infringed plaintiff’s registered ‘JINDAL’ marks was not justified by any provision of the Act.

The Court relied on Amritdhara Pharmacy v. Satya Deo Gupta, 1962 SCC OnLine SC 13 and opined that “the marks had to be compared as whole marks”. Thus, the Court opined that plaintiff’s mark ‘JINDAL’ and defendants’ mark was as alike as chalk and cheese. The benefit of Section 35 of the Act was certainly available to Defendant 1 as it was Defendant 1 who had applied for registration of the impugned mark as its proprietor.

The Court noted plaintiff’s contention that “the benefit of Section 35 of the Act would be available only if the name were used as a source identifier, and not if it was used ‘in the trade mark sense’ or ‘as a trade mark’” and opined that there was no such caveat, or condition, in Section 35 of the Act.

The Court opined that “it would stretch the limits of credulity, to hold that the use of ‘JINDAL’, by defendants, as a mere part of the total composite impugned mark , was likely to deceive a consumer of average intelligence and imperfect recollection that the goods of defendants, on which the mark was used, were those of plaintiff. The Court also opined that “Section 35 of the Act protected bona fide use of one’s own name and proscribed any interference therewith. No exception was created in a case where the name was used as a trade mark, or otherwise”.

The Court stated that the manner in which defendants printed the impugned mark on their furniture was completely different from the manner in which plaintiff used its JINDAL mark , the goods were clearly distinguished.

The Court observed that “one who obtained registration of a common name, or surname, like ‘JINDAL’, as a trade mark in his favour, did so with all the risks that such registration entailed. It was open to anyone, and everyone, to use his name on his goods, and, therefore, the possibility of there being several JINDAL’s looms large. Plaintiff could not, by obtaining registration for ‘JINDAL’ as a word mark, monopolize the use of ‘JINDAL’ even as a part and not a very significant one at that of any and every mark, even in the context of steel, or SS pipes and tubes. The Trade Marks Act, 1999, and the privileges it conferred, could not be extended to the point where one could monopolize the use of a common name for goods, and, by registering it, foreclose the rest of humanity from using it”.

The Court opined that “the right of a person to use her, or his, own name on her, or his, own goods, could not be compromised; else, it would compromise the right to use one’s name as an identity marker, which would ex facie be unconstitutional”.

The Court opined that the interpretation that “the use of one’s name as an identity marker was permissible under Section 35 of the Act, but the instance it spilled over into trade mark territory, it was rendered impermissible” would mean to read a non-existent proviso into Section 35 of the Act and, in effect, would lead to rewriting the provision. The proscription under Section 35 of the Act was absolute and would extend to infringement and passing off actions. The restraint against interference with the bona fide use, by a person, of his own name, was not dependent on whether the action was one for infringement or passing off.

The Court thus held that plaintiff’s prayer for injunction therefore failed even on the sole anvil of Section 35 of the Act and no case of infringement or passing off was made out as the word mark ‘JINDAL’, and the logo , seen as whole marks, were neither identical nor deceptively similar. Further, there was no prima facie likelihood of confusion or deception resulting from the use by defendants of the mark. Seen as a whole mark, it possessed several features of distinction, vis-à-vis the bare word mark ‘JINDAL’ of plaintiff, such as the bold and prominent ‘RNJ’ logo, the sun symbol, and the words ‘RN JINDAL SS TUBES’ prominently written below it.

[Jindal Industries (P) Ltd. v. Suncity Sheets (P) Ltd., 2024 SCC OnLine Del 1632, decided on 7-3-2024]

*Judgment authored by: Justice C. Hari Shankar

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Advocates who appeared in this case :

For the Plaintiff: Chander M. Lall, Senior Advocate; Sarad Kumar Sunny, Rohan Dua, Keshav Mann, Yashi Dubey, Advocates

For the Defendants: Vaibhav Agnihotri, Harshit Kiran, J. Sai Deepak, Kishore Kunal, Abhishek Avadhani, Runjhun Pare, Advocates

Buy Trade Marks Act, 1999   HERE