[Trademarks Act] Individual's Right To Use His Or Her Name For Own Goods Can't Be Compromised: Delhi High Court

Quoting Shakespeare “What's in a name?”, the Delhi High Court has observed that in terms of the Trade Marks Act, 1999, the right of a person to use his or her name on one's 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.“In the absence of any such caveat to be found in Section 35 (of Trade Marks Act), it may be arguable, at the very least, whether, while the use of one's name as an identity marker is permissible under Section 35, but the instance it spills over into “trade mark” territory, it is rendered impermissible. Any such interpretation, in my prima facie view, would be reading a non-existent proviso into Section 35 and, in effect, rewriting the provision,” Justice C Hari Shankar said. Section 35 states that nothing in the enactment shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name. The court observed that 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.Justice Shankar said that the proscription under Section 35 is absolute and would extend to infringement as well as passing off actions. The court said that 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 court made the observations while refusing to pass an interim injunction order in favour of Jindal Industries Private Limited in its trademark infringement suit against an entity, Suncity Sheets Pvt. Ltd. and its manager. Jindal sought to restrain the defendants from using the mark “RN Jindal SS Tubes” mark or “Jindal” per se in any manner. Justice Shankar said that there was no prima facie likelihood of confusion, or deception due to the use by the defendants of the impugned mark. The court said that when seen as a whole mark, the impugned mark possessed several features of distinction, vis-à-vis the bare word mark JINDAL, such as the bold and prominent “RNJ” logo, the sun symbol and the words “R N JINDAL SS TUBES” prominently written below it.“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 court said. It added that Jindal cannot, by obtaining registration for “JINDAL” as a word mark, monopolize its use even as a part of any and every mark, even in the context of steel, or SS pipes and tubes.“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 court said. Counsel for Plaintiff: Mr. Chander M. Lall, Sr. Advocate with Mr. Sarad Kumar Sunny, Mr. Rohan Dua, Mr. Keshav Mann and Ms. Yashi Dubey, AdvsCounsel for Defendants: Mr. Vaibhav Agnihotri and Mr. Harshit Kiran, Advs. for D-1; Mr. J. Sai Deepak, Mr. Kishore Kunal, Mr. Abhishek Avadhani and Ms. Runjhun Pare, Advs. for D-2Title: JINDAL INDUSTRIES PRIVATE LIMITED v. SUNCITY SHEETS PRIVATE LIMITED AND ANR.Citation: 2024 LiveLaw (Del) 277Click Here To Read Order

[Trademarks Act] Individual's Right To Use His Or Her Name For Own Goods Can't Be Compromised: Delhi High Court

Nupur Thapliyal

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