Jindal Industries Private Limited vs Suncity Sheets Private Limited And Anr.

Summary

In the legal proceedings of Jindal Industries Private Limited versus Suncity Sheets Private Limited and Another, presented before the Delhi High Court, a contentious issue arises. This pertains to a disagreement between Jindal Industries Private Limited, referred to as the ‘Plaintiff’, and Suncity Sheets Private Limited, denoted as ‘Defendant 1’, alongside Rachna Jindal, identified as ‘Defendant 2’. The Plaintiff has filed for an interim injunction against the Defendants, alleging trademark infringement due to their utilization of the mark “JINDAL” in connection with their merchandise. The Defendants, however, counter the allegations by contending that “JINDAL” is a commonplace surname and thus, their usage of it is justifiable.

Procedural History

• The Plaintiff sought to restrain the Defendants from using the mark ‘JINDAL’ in a manner that would infringe the Plaintiff’s registered trademarks.
• The Defendants were accused of ingeniously infringing the Plaintiff’s trademarks by combining initials with ‘JINDAL’ and applying for registration of the impugned mark.
• The Defendants argued that ‘JINDAL’ is a common surname and thus, they should not be injuncted from using the mark.
• The Plaintiff contended that the Defendant’s use of the mark was not bona fide and they cannot seek protection under Section 35 of the Trade Marks Act, 1999 (the ‘Act’).

Issue Raised

1. Whether the Defendants’ use of the mark ‘JINDAL’ constitutes infringement of the Plaintiff’s registered trademarks?
2. Whether the Defendants are entitled to the protection of Section 35 of the Act for using their name as a mark?
3. Whether the Plaintiff is entitled to an interim injunction against the Defendants?

Arguments Advanced

Plaintiff’s Arguments

• The Plaintiff argues that it holds valid registrations for “JINDAL” covering various classes related to pipes, steel poles, and related products.
• It asserts that the Defendants’ use of a composite mark including “JINDAL” infringes on its trademarks.
• The Plaintiff further contends that the Defendants’ actions are orchestrated and lacking in bona fides, aiming to unfairly benefit from the Plaintiff’s established brand.

Defendants’ Arguments

• The Defendants argue that “JINDAL” is a common surname and thus not exclusive to the Plaintiff under trademark law.
• They claim that their use of the mark is legitimate, especially as it includes additional elements distinguishing it from the Plaintiff’s mark.
• The Defendants assert that the Plaintiff’s attempt to monopolize the use of “JINDAL” is impermissible and would stifle competition.

Judgment

• The Court held that the Defendants’ use of the mark ‘JINDAL’ did not constitute passing off their goods as those of the Plaintiff.
• The Court found that the Defendants were entitled to the protection of Section 35 of the Act for using their name as a mark.
• Consequently, the Court denied the Plaintiff’s request for an interim injunction.

Analysis

As per the Court, the central conflict lies between trademark rights and the right to identity. The Plaintiff’s ownership of the registered trademark “JINDAL” grants them exclusive rights to use it for its goods.

However, Section 35 of the Act protects the bona fide use of one’s name as a trademark. This allows individuals to identify their businesses using their names, even if there’s some overlap with existing trademarks. The Court discussed the case of Parker Knoll Ltd. v. Knoll International Ltd.,[1] where the House of Lords granted an injunction against a company using its name on its goods without distinguishing them from those of the Plaintiff. However, the Court found that the Defendants’ use of the mark is different from the Plaintiff’s, thus distinguishing their goods.

The Court acknowledged the Plaintiff’s ownership of “JINDAL” but recognised the importance of upholding the Defendants’ right to use their name “R N JINDAL” for their business.  While the presence of “JINDAL” in both marks creates a potential for confusion, the Court came to the conlusion that the defendant’s use be bona fide due to several factors:

• The Court emphasized the Defendants’ distinct use of their initials “RNJ” alongside “JINDAL.” Per the Court, it created a visually differentiated mark compared to the Plaintiff’s single-word mark.
• The Defendants’ mark incorporates other elements such as a sun symbol and the full name “R N JINDAL SS TUBES.” These additional features further minimize the risk of consumers mistaking the defendant’s goods for those of the Plaintiff.

The Court also discussed constitutional principles regarding identity and freedom of expression, emphasizing the significance of an individual’s name as an intrinsic element of identity. It stated that any interpretation of trademark law must respect these constitutional principles as held in cases like Navtej Singh Johar v. Union of India[2].

It also recognized scenarios where using one’s name in a particular way could be considered bona fide use despite some overlap with a registered trademark with reliance on cases like Amritdhara Pharmacy v. Satya Deo Gupta[3] and Zydus Wellness Products Ltd v. Cipla Health Ltd.[4]

It also referred to the case of Kaviraj Pt Durga Dutt Sharma v. Navaratna Pharmaceuticals[5] to clarify the distinction between trademark infringement and passing off. It was concluded that infringement focuses on the similarity of the marks themselves while passing off hinges on the likelihood of consumer confusion regarding the origin of the goods.

Conclusion 

This case serves as a significant precedent for future trademark disputes involving personal names. It highlights the importance of considering both trademark rights and the right to identity when evaluating the permissibility of using a name within a mark. The Court’s emphasis on the defendant's distinct use of “RNJ” and additional elements offers valuable guidance for businesses seeking to navigate this legal intersection.  

[1] Parker Knoll Ltd. v. Knoll International Ltd, (1962) 10 RPC 265 (278).

[2] Navtej Singh Johar v. Union of India , 2018) 10 SCC 1: (2019) 1 SCC (Cri) 1.

[3] Amritdhara Pharmacy v. Satya Deo Gupta AIR 1963 SC 449.

[4] Zydus Wellness Products Ltd v. Cipla Health Ltd., 2023 SCC OnLine Del 3785.

[5] Kaviraj Pt Durga Dutt Sharma v. Navaratna Pharmaceuticals (AIR 1965 SC 980).