Trademarks Act| Restricting The Right Of A Person To Use Their Own Name On Their Goods Is Unconstitutional: Delhi HC
The Delhi High Court has held that under the Trademarks Act, the right of a person to use their name on their own goods cannot be compromised; otherwise, it would compromise the right to use one’s name as an identity marker, which would ex facie be unconstitutional.
In that context, the Bench of Justice C Hari Shankar observed that, "To the extent it protects against interference with the use of one’s name, Section 35 has to be understood in the context of the law enunciated in the above decision, and those cited within it. 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. In the absence of any such caveat to be found in Section 35, 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."
Senior Counsel Chander M Lall, among others, appeared for the plaintiff, while Counsel Vaibhav Agnihotri, among others, appeared for the defendants.
In a trademark infringement suit, Jindal Industries Private Limited had taken legal action against Suncity Sheets Pvt. Ltd. and its manager. The objective was to prohibit the defendants from utilizing the "RN Jindal SS Tubes" mark or the term "Jindal" in any form.
The Court observed that Jindal's prayer for injunction would fail on the sole anvil of Section 35 of the Act.
On merits, the Court observed that, "there is no prima facie likelihood of confusion, or deception, resulting as a consequence of the use, by the defendants, of the mark. Seen as a whole mark, it possesses several features of distinction, vis-à-vis the bare word mark JINDAL of the plaintiff, such as the bold and prominent “RNJ” logo, the sun symbol and the words “R N JINDAL SS TUBES” prominently written below it."
It was observed that the mark of the defendants possessed 'added matter', which is sufficient to distinguish it from the mark of the plaintiff, and therefore, no passing off could be made out.
Resultantly, the petition was dismissed.
Appearances:
Plaintiff: Senior Counsel Chander M Lall, Counsels Sarad Kumar Sunny, Rohan Dua, Keshav Mann, Yashi Dubey
Defendants: Counsels Vaibhav Agnihotri, Harshit Kiran, J Sai Deepak, Kishore Kunal, Abhishek Avadhai, Runjhun Pare
Cause Title: Jindal Industries Private Limited vs Suncity Sheets Private Limited & Anr.
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