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[Section 35[1] and the use of personal names as a defence for trademark infringement in light of the judgement- Jindal Industries Private Limited v Suncity Sheets Private Limited[2]]
Section 35 of the Trade Marks Act, 1999 (hereinafter referred to as “the Act”), limits the rights of a registered proprietor to interfere with use by a person of name, address or description of goods or services. One such defence established by Section 35 is that it disentitles the proprietor of a registered trade mark to interfere with any bona fide use by a person of his own name. The major parameter for the applicability of this defence is “bona fide use”.
Recently on March 7, 2024, Justice C. Hari Shankar of the Hon’ble Delhi High Court scrutinized the said provision in the case of Jindal Industries Private Limited v Suncity Sheets Private Limited as he refused to grant an interim injunction for use of the mark JINDAL as part of a device mark being used by the Defendants.
In the instant case, the Defendants were using a device mark which contained the initials of Defendant No.2- Mrs. Rachana Nitin Jindal. The impugned device depicted Defendant No. 2’s initials as , including the initial “RNJ” with a device of sun and the words “RN JINDAL SS TUBES” written underneath. The Plaintiff challenged the adoption and use of the mark being the registered proprietor of the wordmark, “JINDAL” under classes 6 and 17.
It was argued by the Plaintiff’s counsel that their registered mark, “JINDAL” has been subsumed in its entirety in the impugned mark and such use amounts to infringement under Section 29(2)(b) of the Act. The counsel further argued that the Plaintiff is the registered proprietor of the mark JINDAL in class 6 for steel poles etc., which is identical to the goods of the Defendants who are using the impugned marks for SS tubes.
Meanwhile, it was submitted by the Defendants’ counsels that “JINDAL” is a common surname and while the same may be registered, it cannot be enforced in view of Section 35 of the Act. Further, it was argued that such use of the mark was bona fide in this instance as the initials of Defendant No. 2 were in use and that one cannot be precluded from using their own surname as a trade mark. It was further argued that use in this instance was bona fide as the nature and appearance of the impugned mark as a whole was clearly distinguishable from the Plaintiff’s mark. The counsel also argued that the Plaintiff had never sold and was not selling the goods, SS tubes and therefore the plaintiff could not be permitted to squat over the JINDAL mark, preventing its use by others for goods not part of the Plaintiff’s portfolio.
The Hon’ble Court assessed the arguments made by the learned counsels of both sides and was of the opinion that an interim injunction could not be granted in the instant case as on a prima facie view, adoption and use of the impugned mark by the Defendants appeared to be bona fide.
The learned judge was of the view that the word “JINDAL”, could not be isolated from the impugned mark and the marks must be compared as a whole in order to determine infringement. The Hon’ble Court relied on the case of Amritdhara Pharmacy[3] which lays emphasis on consideration of the overall similarity of the composite words in a mark. In the instant case, the Plaintiff’s mark JINDAL was compared to the Defendants’ composite mark and it was determined that the rival marks are distinctive from one another by the Hon’ble Court.
The Plaintiff’s counsel, in his argument, had also cited passages from the case of Parker Knoll[4] which outright disallows the use of one’s name (even innocently) in a manner liable to suggest that the goods of a person may be those of another. The Hon’ble Court was of the opinion that the abovementioned case cannot be applied in the instant case for a myriad of reasons. Firstly, the Parker Knoll case was decided in the context of passing off and the court in this instance was determining if infringement is occurring on a prima facie basis. Secondly, the learned judge also pointed out that the abovementioned case could not be applied in an Indian context as the Indian statute specifically provides for the use of one’s name as a defence to infringement as encompassed under Section 35 of the Act. However, since there is no parallel provision in the US statute, the Parker Knoll case cannot be applied mutatis mutandis to the instant case.
Lastly, the learned judge relied upon the Hon’ble Supreme Court’s view in the cases of National Legal Services Authority v. Union of India[5], Navtej Singh Johar v. Union of India[6], and K.S. Puttaswamy (Privacy- 9J.) v. Union of India[7]. The learned judge specifically analysed the case of Navtej Singh Johar where it was determined by the Hon’ble Supreme Court that:
“Identity, therefore, is an amalgam of various internal and external including acquired characteristics of an individual and name can be regarded as one of the foremost indicators of identity. And therefore, an individual must be in complete control of her name and law must enable her to retain as well as to exercise such control freely “for all times”.”
In light of the above findings of the Hon’ble Supreme Court, the learned judge deduced that the right of a person to use their own name on their goods, cannot be compromised. The refusal of such right to use one’s name as an identity marker, would ex facie be unconstitutional.
Thus, the present judgement provided a comprehensive interpretation of what qualifies as “bona fide use” of one’s own name under section 35 of the Trade Marks Act.
Authors: Naval Kastia and Nirali Hamirwasia
Footnotes
[1] Trade Marks Act 1999, S 35
[2] Jindal Industries Private Limited v Suncity Sheets Private Limited and anr. [2024] CS(COMM) 679/2023
[3] Amritdhara Pharmacy v Satya Deo Gupta AIR 1963 SC 449
[4] Parker Knoll Ltd. v Knoll International Ltd. [1962] 10 RPC 265 (278)
[5] National Legal Services Authority v. Union of India [2014] 5 SCC 438
[6] Navtej Singh Johar v. Union of India [2018] 10 SCC 1
[7] K.S. Puttaswamy (Privacy- 9J.) v. Union of India [2017] 10 SCC 1