Use of the mark/name ‘Jindal’ is the bone of contention between the parties before the Delhi High Court. The Plaintiff, Jindal Industries Private Limited (JIPL), relying on its rights in the registered trademark JINDAL filed the suit against the Defendants, Suncity Sheets Private Limited (Suncity) and Ors, alleging trademark infringement, passing off, etc. The injunction application filed by the Plaintiff is being considered by the Court.

Plaintiff/JIPL in the suit contends:

1. The mark JINDAL is registered in various classes covering “PPR Pipes, PVC Pipes & Fittings, Steel Tubular Poles, Steel Poles, Poles of Metal, Cast Iron Pipes, M.S. Pipes, etc.
2. Defendant is using the mark containing the mark JINDAL in its entirety which amounts to trademark infringement.
3. Defendant no.2 allegedly claiming connection with the first Defendant has applied for registration of the mark . There are discrepancies in the documents filed by the Defendants which shows that they are fabricated.
4. Defendants have not challenged the JINDAL mark which is valid and thus entitled for injunction.
   Being a corporate entity, Defendant cannot rely on the personal name defence under Section 35 of the Trademarks Act.

Defendants/ Suncity counter the injunction on the following:

1. No injunction can be granted against the Defendants from using the mark Jindal as it is a common surname. Rachna Nitin Jindal is the name of Defendant no. 2, thus, use of the name is prima facie bonafide.
2. Though the mark JINDAL may be registrable it is not enforceable against the Defendants in view of Section 35 of the Trademarks Act. The Plaintiff’s effort to monopolize the common surname ‘Jindal’ is not permissible.
3. The rival marks Jindal and are entirely different compared as a whole and no case of passing off is made out.
4. The Defendants’ mark is distinctive as it combines “RNJ” with the image of the sun and the name of the Defendant-concern “R N Jindal SS Tubes”. The added matter makes the mark entirely different from the Plaintiff’s and no passing off is made out.

The Court after considering the pleadings, arguments and case laws held:

1. In the instant case Defendants reliance on Section 35 of the Trademarks Act do have merits. Section 35 which starts with a non obstante clause takes precedence over any other provision. It thus prohibits the Plaintiff from interfering with the use by the Defendants of its own mark, provided such use is bonafide.
2. In the impugned mark “RNJ” with the sun symbol alongside is the prominent part. R N Jindal is the name of the second Defendant and the impugned mark does not emphasize the ‘Jindal’ portion of the mark disentitling the Plaintiff to claim trademark infringement of its registered mark JINDAL.
3. The argument 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 trademark sense” or “as a trademark” is not likely to succeed. The case laws relied on by the Plaintiff is not applicable to the facts and circumstances of the instant case. The use of ‘Jindal’ in the impugned mark is unlikely to deceive consumers into believing an association with the Plaintiff, more so considering the differences in representation of the rival marks.
4. If one registers a mark which lacks inherent distinctiveness, there is always the possibility of others using similar mark for their goods and the proprietor being unable to restrain such use is something which the proprietor has to live with. Moreover, the restraint against interference with the bona fide use, by a person, of his own name is the same whether the action is one for infringement or passing off.
5. As the impugned mark contains added features which makes it different from the Plaintiff’s mark negating any chances of confusion, no case is made out under passing off as well.

In light of the above findings, the Court dismissed the injunction application filed by the Plaintiff.

Comments

The case highlights that own name use defense requires use of the complete name or its abbreviation without highlighting the portion that would convey that the adoption is to take advantage of a registered mark. Therefore, the use is in “bad faith” or does not pass the parameter of being a bonafide use.