What's New

Court-Case Bulletins
March 20, 2024

Court Case Bulletin (CCB): Proprietor Or Registered User Of A Registered Trademark Cannot Interfere With Bona Fide Use Of One’s Own Name As Trademark

Author: Priyanshi Rastogi

In the matter of Jindal Industries Private Limited v. Suncity Sheets Private Limited and Anr. [IA 18962/2023 in CS(COMM) 679/2023], a Single Judge (C. Hari Shankar, J.) of the High Court of Delhi vide judgement dated March 7, 2024, ruling in the favour of the defendants, has held that the bona fide use of one’s own name is protected against interference from the proprietor or registered user of a registered trademark.

Section 35 of the Trade Marks Act, 1999 (“the Act”) states that “Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services.” The issue was whether the protection against interference from proprietor or registered user of a registered trademark is available only when one’s name is used in a bona fide manner as a source identifier or is also available when the name is used as a trademark.

The Plaintiff contended that the benefit of Section 35 would be available only if a name were used as a source identifier, and not if it was used “in the trade mark sense” or “as a trade mark”. Defendant No. 2 contended that Section 35 of the Act encompasses the right to use the name of the predecessor in business, and therefore, it also encompasses the use of one’s name as a trade mark.

The Court rejected the Plaintiff’s contention and held that in the absence of any caveat found in Section 35 of the Act, while itmay be arguable that the use of one’s name is permissible only as an identity marker but not when it spills over into “trade mark” territory, such interpretation “…would be reading a non-existent proviso into Section 35 and, in effect, rewriting the provision”. The Court further held that Section 35 of the Act “…protects bona fide use of one’s own name, and proscribes any interference therewith. No exception is created in a case where the name is used as a trade mark, or otherwise.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.Copyright: ALG India Law Offices LLP

  • Non Solicitation
  • Data Privacy & Protection
  • Conflict of Interest Policy
  • Data & Document Retention Practice
  • Firm Management Policy
  • Liability
  • Disclaimer
  • Privilege
  • Copyright
  • Billing Policy
  • Pro Bono