The Delhi High Court while deciding an application for interim injunction, held that the defendants did not infringe the plaintiff’s registered trademarks or pass off its products as those of the Plaintiff.
The Plaintiff, instituted a civil suit, against Defendant 1, Suncity Sheets Pvt. Ltd. (“SSPL”), and Defendant 2, Rachna Nitin Jindal, wife of Nitin Kumar Jindal, Manager of SSPL, based on its rights over the word mark “JINDAL” registered in classes 6 and 17. The Plaintiff’s case was that the Defendants were using the composite mark, ‘
’ RN Jindal SS Tubes subsuming the registered mark, “JINDAL” in the impugned mark thereby infringing the Plaintiff’s trademarks and passing off its goods. During the pendency of the civil suit, the Plaintiff also sought an order of interim injunction under IA 18962/2023 restraining the Defendants from using the impugned mark, or JINDAL per se, in any manner as it would infringe the Plaintiff’s registered trademarks.
The Defendants argued that the impugned mark combines the initials of Defendant 2, RNJ along with the image of a sun and the Defendant’s concern, “R N Jindal SS Tubes”. In this regard, a Memorandum of Understanding (MoU) entered into by Defendant 2 for manufacturing SS pipes and tubes under the brand name RNJ was also relied upon. Thus, under the provision of Section 35 of the Trademarks Act, it was held that the use of one’s own surname as a trademark is prima facie bona fide and is permitted by the law within the meaning of Section 2(m).
The Court observed that the most prominent feature in the impugned mark is “RNJ” with the sun symbol alongside and the name below it is the name of Defendant 2 herself, viz. R.N. Jindal in small print. To dissect the word “JINDAL”, from the impugned composite mark is against the principle, of comparing marks as a whole. The distinctive nature and appearance of the impugned mark of the Defendants as a whole clearly distinguishes it from the JINDAL marks of the Plaintiff.
Thus, the Court held that grounds under Section 29 of the Trade Marks Act did not exist in the case. Also, there was no case of passing off since there was no prima facie likelihood of confusion, or deception, resulting as a consequence of the use of the impugned mark, by the Defendants.
It was also held that registration obtained over a common name or surname, like JINDAL, as a trademark, cannot be monopolized since it lacks inherent distinctiveness. Thus, it was held that the Plaintiff is not entitled to interim injunction as sought.
Citation: Jindal Industries Private Limited vs Suncity Sheets Private Limited And Anr. CS(COMM) 679/2023
Authored by Ms. Benita Alphonsa Basil, Trademark Team, BananaIP Counsels.
Reviewed and confirmed by Ms. Naika Salaria, Trademark Team, BananaIP Counsels.
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