The Delhi High Court recently dismissed a suit filed by Jindal Industries Pvt Ltd seeking injunction against Suncity Sheets Pvt Ltd (defendants) restricting them from using the mark 'RN Jindal SS Tubes' or 'JINDAL' in any manner.
Justice Hari Shankar began the judgement with the famous quote from William Shakespeare's tragedy Romeo and Juliet –
"What's in a name?" queried Juliet, of her Romeo. Much indeed, as this litigation would disclose.
Rival Contentions
Senior Advocate Chander M Lall appeared on behalf of the plaintiff, he submitted that the defendants' mark is clearly similar, if not identical, to the plaintiff's registered JINDAL word mark. The plaintiff's registered word mark has entirely been subsumed in the impugned mark of the defendants. "JINDAL" is clearly the most prominent part of the impugned mark. A prima facie case of infringement, within the meaning of Section 29(2)(b)3 of the Trade Marks Act, 1999, therefore, exists, Mr Lall argued.
On the other hand, Advocate J Sai Deepak submitted on behalf of the defendants that the issue in controversy is largely covered by the judgment of the Delhi High Court in Jindal Stainless (Hisar) Ltd v. Suncity Sheets Pvt Ltd, in which interlocutory injunction was denied.
He further stated that the defendants could not be injuncted from using the impugned mark as JINDAL is a common surname. It may, therefore, be registerable, but is certainly not enforceable, in view of Section 355 of the Trade Marks Act. The plaintiff's attempt is to entirely monopolize use of the common surname JINDAL, either by itself or with any other words or images. This is clearly impermissible, Mr Deepak argued.
Judgement
Justice Hari Shankar referred to the landmark majority judgment in Parker-Knoll Limited vs Knoll International Limited rendered on passing off-
"It would be stretching the limits of credulity, in my opinion, to hold that the use of JINDAL, by the defendants, as a mere part of the total composite impugned mark, is likely to deceive a consumer of average intelligence and imperfect recollection that the goods of the defendants, on which the mark is used, are those of the plaintiff. The plaintiff, admittedly is not known as "RN Jindal" or "RNJ", and that, indeed, is not even the plaintiff's case. Besides, unlike the position that obtains in the US (as the extracts from Parker Knoll seem to suggest), Section 35 protects bona fide use of one's own name, and proscribes any interference therewith. No exception is created in a case where the name is used as a trade mark, or otherwise. Whereas innocent use is, therefore, as per Parker Knoll, impermissible, if the use is bona fide, the defendant, in India, is entitled to the benefit of Section 35. Whether Parker Knoll applies, mutatis mutandis, to India and the law in this country, may, therefore, be debatable. To the extent it does, however, it does not substantiate the plaintiff's case for injunction."
Furthermore, the Court observed-
"Indeed, one who obtains registration of a common name, or surname, like JINDAL, as a trade mark in his favour, does so with all the risks that such registration entails. It is open to anyone, and everyone, to use his name on his goods, and, therefore, the possibility of there being several JINDAL's looms large. The plaintiff cannot, 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, and the privileges it confers, cannot be extended to the point where one can monopolize the use of a common name for goods, and, by registering it, foreclose the rest of humanity from using it.
The risk of having others bona fide using JINDAL as a name for their products, and in the marks used on their products, is a risk that the plaintiff consciously took, when it obtained registration of the mark. If one registers a mark which lacks inherent distinctiveness, the possibility of others also using the same mark for their goods, and of the registrant being powerless to restrain such use, is a possibility that looms large, which the registrant has to live with."
Moreover, the bench surmised that the right of a person to use her, or his, own name on her, or his, own goods, cannot be compromised; else, it would compromise the right to use one's name as an identity marker, which would ex facie be unconstitutional. Finally, the Court said-
"The proscription under Section 35 is absolute, and would extend to infringement as well as passing off actions. The restraint against interference with the bona fide use, by a person, of his own name, is not dependent on whether the action is one for infringement or passing off. The plaintiff's prayer for injunction is, therefore, bound to fail even on the sole anvil of Section 35. That said, even on merits, no case of infringement or passing off is made out."
Thus, the suit was dismissed.
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