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What’s in a name? Shakespear revisited.

IN THE HIGH COURT OF DELHI AT NEW DELHI

CS(COMM) 679/2023

JINDAL INDUSTRIES PRIVATE LIMITED .... Plaintiff

versus

SUNCITY SHEETS PRIVATE

LIMITED AND ANR.

 

“What’s in a name?”  The Single Bench of the Delhi High Court used this line from the immortal play, Romeo and Juliet written by Shakespear when it passed a judgement on a trademark matter listed before it.


In a case before the Delhi High Court, the plaintiff sought an Interim Injunction restraining the defendants from using the mark  , or JINDAL per se, in any manner as it would infringe the plaintiff’s registered trademarks.


The Plaintiff is the registered proprietor, in terms of Section 18 of the Trade Marks Act, 1999, of the word mark JINDAL, in different Classes.


Defendant 1 is Suncity Sheets Pvt. Ltd. (“SSPL”) and Defendant 2 is Rachna Jindal, the proprietress of RN Jindal SS Tubes has applied for registration of the impugned mark and is the wife of Nitin Kumar Jindal, who is the Manager of  Defendant No. 1.


The Plaintiffs case:  

It was the Plaintiff’s case that the defendants have infringed the plaintiff’s registered trademarks by combining the initials of the Defendant No.2 and with the registered mark of the plaintiffs. 


The Defendant 2 has applied for registration of the impugned mark in her capacity as a sole proprietor of RN Jindal SS Tubes and the address provided in the application filed in the Registry for registration of the mark is the same as the address of the Defendant No.1, it is obvious that the Defendant Nos. 1 and 2 are in collusion.


The plaintiff’s registered word mark has entirely been subsumed in the impugned mark of the defendants and it is a clear case of infringement, within the meaning of Section 29(2)(b)3 of the Trade Marks Act, 1999. 


It is not the defendants case that the registration of the plaintiff’s mark “JINDAL” is invalid.

The plaintiff is entitled to an injunction on the aforesaid grounds.


The Defence


The Defendants argued that the “JINDAL” is a common surname and it is prima facie bona fide to use one’s own surname as a trademark. According to Sec. 35 of the Trademark Act, the same is registerable, however cannot be enforced. 


The plaintiff’s attempt to monopolize the use of the common surname, either by itself or with any other words or images, cannot succeed.     

                                                   

The defendant added that the defendants’ mark is distinctive as it combines “RNJ” with the image of the sun and the complete name of the defendant-concern “R N Jindal SS Tubes”.  It is, therefore, permitted by law and entitled to the protection of Section 35 of the Trademarks Act. 


There is no confusion between the mark of the defendant and the plaintiff.  The plaintiff’s word mark JINDAL and the defendants’ device mark are completely dissimilar when viewed as whole marks and the “added matter” in the impugned mark is sufficient to obviate any possibility of confusion and there is no case of passing off. 


Additionally, the plaintiff and the Defendants are in completely different businesses and the plaintiff cannot squat over the ‘JINDAL’ mark and prevent others from using it.


The Plaintiffs’ rejoinder :


During rejoinder, the plaintiff submitted that the Defendant 1 was an ex-licensee of the plaintiff who along with the defendant No. 2 has infringed the mark of the plaintiff. The Defendant No. 2 is the wife of one Mr. Nitin Jindal, who is also a former employee of the plaintiff.  


The Defendant is not entitled to claim the benefit of Section 35 of the Trademarks Act, by way of a “personal name defence”, as it is a corporate entity and therefore, the principle cannot apply here.


The court cannot ignore or overlook the aspects of infringement, deception, confusion because the surname of the Defendant 2 happens to be the same as that of the Plaintiffs name mark, as the Defendant 1 is seeking to do. 


The Plaintiffs are trying to do indirectly through Defendant 2, that which Section 35 does not permit it to do directly. 


According to the Plaintiffs, as a surname is also a “mark” within the meaning of Section 2(m)21, ergo, the bona fide use of the name of the defendant, as envisaged by Section 35(1), cannot include use of the name as a trademark. 


The Plaintiff added that the transactions between Defendant No. 1 and Defendant 2 are sham. The defendant No. 1 sells the goods to Defendant 2, who then sells it further to the final supplier, on the same truck and on the same day. Defendant 2 is, therefore, only a via media, with no experience in selling SS sheets or pipes. Both the Defendants have the same address and are situated in the same premises.


If the defendants are allowed the use of the impugned mark, it would wipe out the statutory right created in the plaintiff’s favour by virtue of the registrations obtained by it.


The defendants’ plea of lack of confusion, or of difference between the rival marks, is devoid of merit as the JINDAL word mark stands registered in favour of the plaintiff in Class 6 for steel poles etc., and the JINDAL COR word mark stands registered for steel pipes and tubes. The goods are, therefore, identical to those made and sold by the defendants.


The Defendants’ response:


The defendant argued that as a non obstante clause is enshrined in Section 35, the right to use the name in business, also encompasses its use as a trademark.  


Additionally, the protection under Section 35 is lost only if the use of the impugned mark results in actual confusion, not merely ‘likelihood’ of confusion. Moreover, the protection under Section 35 is not contingent on the existence of a family relationship. And in any case, there was no likelihood of confusion as the defendants’ and plaintiff’s marks were totally different. 


It was also clarified that the Defendant No. 1 was not a licensee of the plaintiff but was merely the purchaser of the plaintiff’s raw material. 


Order of the Court:


After hearing the parties, the court held:


There is no dispute that R N Jindal is the name of Defendant 2 and as per the protection granted to her by virtue of Section 35, the plaintiff cannot interfere with the Defendant using her own name, provided, the use is bona fide.


In the impugned mark, the most prominent feature is “RNJ” with the sun symbol alongside and the name of the Defendant 2. The mark does not highlight, or emphasize, in any manner, “JINDAL”, over “RN” and one cannot read the mark as “JINDAL”, ignoring the “RNJ” or the “RN” which precedes “Jindal” in the small print.  


It is well settled law that marks have to be compared as whole marks and the Plaintiff cannot tear out the impugned composite mark the word  “JINDAL”, and allege, on that basis, that the mark infringes the plaintiff’s registered mark and a plain comparison between the plaintiff’s and the Defendant’s mark shows that they are like chalk and cheese.


According to the court, the Defendant No. 2’s knowledge or lack thereof for marketing and selling SS tubes is not a factor for the consideration of this Court for the purpose of the alleged infringement of trademark. She is the proprietress of the impugned mark as she has applied for it through the firm. 


There was no merit in the submission that the address of Defendants 1 and 2 are the same as the plaintiffs have not produced any documentary evidence in support thereof. 


The submission that the same truck transported the goods to the ultimate destination does not help the Plaintiffs case for infringement.


The Defendant can claim benefit of Section 35 as it was the Defendant No.1 who had applied for registration of the impugned mark as its proprietor.


The Court, prima facie, accepted the contention that Defendant 1 is only a contract manufacturer for Defendant 2.


The court found nothing illegal in the wife of Mr. Nitin Jindal being the proprietor of RNJSST and having adopted the impugned mark and to seek its registration.


The Court did not find any “caveat” or ‘condition’  in Section 35 that supported the contention of the plaintiff that the benefit of Section 35 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”.


The court noted: 

“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 “R.N. 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. “


The court accepted the Defendant No. 2’s contention that the goods are clearly distinguishable and the manner in which the defendants and the plaintiffs use the marks is completely different and there is no case of passing off. 


The court opined that 


“… 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 plaintiff’s submission that the plaintiff’s statutory rights in its registered JINDAL word mark would be jeopardized, if the defendants are permitted to use the impugned mark, is misplaced.  The plaintiffs took the risk of having others bona fide using “JINDAL” as a name for their products, and in the marks used on their products, when it obtained registration of the common name, or surname, like JINDAL, as a trade mark in his favour. 


“…..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”.


According to the court the right of a person to use her, or his, own name on her, or his, own goods, cannot be compromised; as it would amount to compromising the right to use one’s name as an identity marker, which is ex facie unconstitutional.

The court opined there the plaintiff had failed to prove a case of infringement on merits and in any event, the restraint against interference with the bona fide use, by a person, of his own name is absolute and is not dependent on whether the action is one for infringement or passing off. 


As the word mark “JINDAL”  and the logo  , seen as whole marks, are neither identical nor deceptively similar, there is no prima facie likelihood of confusion, or deception, resulting as a consequence of the use, by the defendants, of the mark.  


The tort of passing off connotes, in its essence, an attempt by the defendants to pass off its goods or services as those of the plaintiff. In trade mark jurisprudence, that would be by use of a mark which is so similar to that of the plantiff that the use of the mark results in the defendants’ goods or services, in or in connection with which the mark is used, being passed off, in the perception of the consumer of average intelligence and imperfect recollection, as the goods or services of the plaintiff. Where the mark of the defendants, therefore, possesses “added matter” which is sufficient to distinguish it from the mark of the plaintiff, no passing off is made out. ” 



The court held, the impugned mark of the defendants is easily distinguished from the mark of the plaintiff; and the defendants, have made effort to minimize any chance of confusion, by prominently using the initials “RNJ” along with the complete name of the proprietorship of Defendant 2, “RN JINDAL STAINLESS STEELS”, below it. A consumer of average intelligence who reads the text on the defendants’ impugned mark, would not regard it is a mark of the plaintiff.


The court further clarified that 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 and therefore cannot be regarded, even prima facie, as passing of their goods as those of the plaintiff.


The court did not grant any interim relief and dismissed the application of the plaintiffs. 

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