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February 11, 2020

No absolute bar on registration of a God’s name as a trademark

In the matter of Shyam Steel Industries Limited v. Shyam SEL and Power Limited and Another [APO No. 91 of 2019 With CS 63 of 2019], the Calcutta High Court (I.P. Mukherjee, J., Md. Nizamuddin, J.), vide its order dated December 24, 2019, held that there is no absolute bar on registration of a God’s name as a trademark, and allowed the Appellant’s interim injunction application.

The Appellant and Respondents are all involved in the business of manufacturing TMT bars under different variants of the trademark ‘SHYAM’. The Appellant had filed the instant suit seeking injunction against the Respondents to restrain them from using the mark ‘SHYAM’ in respect of their goods and services. The single judge had refused to grant an interim injunction to the Appellant, who accordingly filed the instant appeal.

The Appellant argued that it is the prior user and registered proprietor of the mark SHYAM, and the Respondents should therefore be injuncted from using an identical mark in respect of the same goods. The Respondents claimed that they were bona fide users of the mark and also challenged the validity of the Appellant’s registration on the ground that no exclusivity could be claimed over SHYAM under Section 9(2)(b) of the Trade Marks Act, 1999, as it is Lord Krishna’s (a Hindu deity) other name. Section 9(2)(b) mandates that a mark shall not be registered as a trademark if it contains any matter likely to hurt religious susceptibilities of any class or section of the citizens of India.

The Court observed that “there is no authority or at least no authority was shown to us, which laid down that God’s name was not registrable as a trademark.” It was held that “this court cannot say as an infallible principle of law that registration of the word ‘Shyam’ was invalid and its registration should be cancelled. The respondent has to prove, by leading cogent evidence, before the Board, that indeed the name ‘Shyam’ refers to God only, is not distinctive of the appellant, is generic and common. The respondent has not been able to establish this, even prima facie.”. Accordingly, the Court granted an interim injunction against the Respondents.

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