Defence of Section 35 of Trademarks Act 1999 and Bonafide Use of Name:
In a recent trademark dispute between the plaintiff's mark "JINDAL" and the defendant's mark "RNJ RN JINDAL SS TUBES LABEL," the question of whether the plaintiff was entitled to relief of interim injunction arose. The defendants invoked Section 35 of the Trademarks Act 1999 and argued for the bonafide use of their surname.
Defendant's Defence:
The defendants argued that "JINDAL" is a common surname and, therefore, while it may be registerable, it should not be enforceable under Section 35 of the Trademarks Act. They contended that the use of one's own surname as a trademark is prima facie bona fide. Since Defendant 2's name is Rachna Nitin Jindal, her use of the mark "RNJ RN JINDAL SS TUBES LABEL" is legitimate.
Court's Observations:
The Hon'ble High Court of Delhi refused to grant relief of interim injunction to the plaintiff. It observed that the defendant's trademark prominently featured "RNJ" with a sun symbol alongside, followed by the name of Defendant 2, R.N. Jindal. The mark did not excessively highlight "JINDAL" over "RN" or "RNJ." Therefore, it was not justified to interpret the mark as infringing the plaintiff's registered "JINDAL" marks. The Defendant was given the benefit of Section 35 of Trademarks Act 1999 as the Defendant 2's name is Rachna Nitin Jindal, her use of the mark "RNJ RN JINDAL SS TUBES LABEL" was held to be bonafide.
Analysis:
This case highlights the application of Section 35 of the Trademarks Act 1999, which allows for the bonafide use of one's own name, including surnames, in trademarks. The court emphasized that the defendant's mark did not unduly emphasize "JINDAL" and that tearing out "JINDAL" from the composite mark to allege infringement was unjustified.
Conclusion:
The defence of bonafide use of one's own surname as a trademark, as provided under Section 35 of the Trademarks Act 1999, can be a potent argument in trademark disputes involving common surnames. This case underscores the importance of considering the overall composition and prominence of elements in a trademark when assessing likelihood of confusion and infringement.
Case Title: Jindal Industries Pvt.Ltd. Vs Suncity Sheets Pvt.Ltd.
Order Date: 07.03.2024
Case No. CS COMM 679 of 2023
Neutral Citation:2024:DHC:1883
Name of Court: Delhi High Court
Name of Hon'ble Judge: C Harishankar, H.J.
Disclaimer:
Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.
Written By: Advocate Ajay Amitabh Suman,
IP Adjutor - Patent and Trademark Attorney,
Email: ajayamitabhsuman@gmail.com,
Ph No: 9990389539
