The Delhi High Court recently invoked William Shakespeare's Romeo and Juliet in a trademark case to hold that the right of a person to use her/his own name for their own goods cannot be compromised by alleging trademark infringement [Jindal Industries Private Limited v Suncity Sheets Private Limited and Anr].Justice C Hari Shankar began his judgment by quoting from the 1597 play.“'What’s in a name?' queried Juliet, of her Romeo. Much indeed, as this litigation would disclose,” the Court said.The single-judge said that Section 35 of the Trade Marks Act cannot be interpreted in such a manner as to prohibit a person from using his own name for his goods.Section 35 provides that a proprietor or a registered user of a trade mark cannot interfere with any bona fide use by a person of his own name for his business.Any interpretation of Section 35 of Trade Marks Act prohibiting the use of a person of his own name for his goods would be “reading a non-existent proviso into Section 35 and, in effect, rewriting the provision”, the Court opined.“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 Court said.The Court returned these findings while rejecting an interim injunction application filed by Jindal Industries Private Limited against a company by the name of Suncity Sheets Private Limited.Jindal moved the Court to restrain the defendant (Suncity) from using composite mark “RN Jindal SS Tubes” or JINDAL per se in any manner as it infringes on Jindal’s registered trademarks.The owners of the Suncity were named Rachna Jindal and Nitin Kumar Jindal.The Court considered the case and held that one who obtains registration of a common name or surname like JINDAL as a trade mark does so with all the risks that such registration entails and there is always a possibility of there being several such 'Jindals.'“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 Court said.Justice Hari Shankar concluded there is no likelihood of confusion between the products of the two companies and no case for passing off is made out.“No one, much less a consumer of average intelligence, who reads the text on the defendants’ impugned mark, would regard it is a mark of the plaintiff. The defendants’ impugned mark is clearly a source identifier, and identifies the product, on which it is used, with the defendants, and with no one else,” the Court said.The interim injunction application was, therefore, dismissed.Senior Advocate Chander M Lall along with advocates Sarad Kumar Sunny, Rohan Dua, Keshav Mann and Yashi Dubey appeared for Jindal Industries.Suncity was represented by advocates Vaibhav Agnihotri and Harshit Kiran.Advocates J Sai Deepak, Kishore Kunal, Abhishek Avadhani and Runjhun Pare represented Rachna Jindal (owner of the Suncity).
TAGS: Delhi High Court trademark case Romeo and Juliet Jindal Industries Private Limited v Suncity Sheets Private Limited
