M/S JINDAL INDUSTRIES PRIVATE LIMITED Vs THE REGISTRAR OF TRADE MARK -Judgment by Delhi High Court

2024-04-22 Information

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* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 22nd April, 2022
+ C.A.(COMM.IPD-TM) 99/2021
M/S JINDAL INDUSTRIES PRIVATE LIMITED ….. Appellant
Through: Mr. Rishabh Srivastava, Ms. Radhika Arora, Advocates (M:9737708556)
versus

THE REGISTRAR OF TRADE MARK ….. Respondent
Through: Mr. Harish V. Shankar, CGSC
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
2. The present appeal has been filed challenging order dated 19th March, 2019 passed by the Senior Examiner of Trade Marks and the Statement of Grounds of Decision under Rule 36(1) of the Trademark Rules, 2017 issued by the Senior Examiner of Trade Marks, Delhi on 14th July, 2020.
3. The brief background of the present appeal is that the Appellant filed a Trademark Application bearing No.1522447 in Class-17, for the impugned mark depicted below:

4. The trademark set out above was applied for, by the Plaintiff, in respect of goods falling under Class-17 which are as under:
�Designation of Goods:
PPR pipes, PEX pipes, PVC pipes & fittings, PVC flexible pipes, acrylic sheet, agricultural rigid PVC pipes, HDPE pipes & Coils, PVC & UPVC rigid pipes & pipes fittings, HDPE SWR pipes & fittings. Polythene pipes, PRE-AL-PE (Polyethylene-Aluminium-Polyethylene) Composite pipes. PEX-AL-PE Composite-pipes. PEX-AL-PEX Composite pipes, PEX pipes (Cross linked polyethylene pipes). Poly proplyne random pipes & fittings�

5. Vide order dated 5th December, 2016 passed by the Senior Examiner of Trade Marks, the mark was abandoned. The said order reads as under:
�None appeared at the time of Hearing held on the above-said date, hence the above-said application is ordered as abandoned in lack of prosecution as per the provisions of Trade Marks Act and Rules.�

6. On 26th April, 2018, a review was filed against the above order dated 5th December, 2016, pursuant to which an order was passed on 19th March, 2019. In the said order, the Registrar of Trademarks has held as under:
�Present ADV APOORVA KAUR APPEARED SEC 9/11 OBJECTION HENCE REFUSED. THE MARK IS PROHIBITED.OBJECTION UNDER SECTION 9(2) D OF THE ACT. Advocate of M/s. INDIAN TRADE MARKS CO. for the petitioner

ORDER
An application for registration of trade mark consisting of word ” JINDAL (DEVICE OF INDIA MAP)” was filed by the aforesaid Applicant under application No 1522447 in respect of applied goods included in Class -17. The application was examined and examination report containing the objections to the acceptance of application for registration of trade mark was communicated to the Applicant. On the request of the Applicant, a hearing was fixed in this matter. Eventually on 02 November 2016, the application came up before me for hearing and the order was passed accordingly.
The present petition on form TM-M has been filed for review of the order dated 05 December 2016.
ADV APOORVA KAUR APPEARED SEC 9/11 OBJECTION HENCE REFUSED. THE MARK IS PROHIBITED.OBJECTION UNDER SECTION 9(2) D OF THE ACT.
The request on form TM-M is accordingly Allowed.
Sealed and signed at the Trade Marks Registry, Branch Delhi on dated : 19 March 2019.�

7. Thereafter, the Appellant asked for Grounds of Decision under Rule 36(1) of the Trademark Rules, 2017. The said Grounds of Decision were provided on 14th July, 2020, to the following effect:
�Statement of Grounds of decision under Rule 36(1) of the Trade Marks Rules ,2017.
Gentleman/Madam ,
With reference to the above and request on Form TM-M dated 10/09/2019. It has been decided by the Registrar of Trade Marks to Inform you that hearing in respect of above application was held on 06/06/2018 10:26:31 and the said application is refused on the following Grounds;
* ADV APOORVA KAUR APPEARED SEC 9/11 OBJECTION HENCE REFUSED. THE MARK IS PROHIBITED.OBJECTION UNDER SECTION 9(2) D OF THE ACT.
* 9(2)(d) – The trade mark:�Its use is prohibited under the Emblems and Name(Prevention of Improper Use)Act,1950 (12 of 1950)ADV APOORVA KAUR APPEARED SEC 9/11 OBJECTION HENCE REFUSED. THE MARK IS PROHIBITED.OBJECTION UNDER SECTION 9(2) D OF THE ACT.�

8. The above two orders dated 19th March, 2019 and 14th July, 2020 passed by the Senior Examiner are under challenge in the present appeal.
9. Ld. Counsel for the Appellant submits that the Registrar�s order is not tenable. Firstly, he submits that the use of the map of India has been permitted by the Survey of India. He relies upon the permission granted, vide letter dated 8th February, 1994, by the Survey of India in favour of the Appellant.
10. He also relies upon the other registrations granted in favour of the Appellant which use a similar device for the mark, for instance, Trademark No.2353390, Trademark No. 2353391, Trademark No. 2353393, Trademark No. 2353395, Trademark No. 2353401, Trademark No. 2353403, Trademark No. 2353405, Trademark No. 2353418, Trademark No. 2353392, Trademark No. 2353398, Trademark No. 2353400, wherein the map of India is depicted.
11. He further submits that the Emblems and Names (Prevention of Improper Use) Act, 1950 also does not prevent the use of the map of India or the outline of the map of India. Thus, it is submitted that the impugned orders are unsustainable.
12. Mr. Harish V. Shankar, ld. CGSC accepts notice in the matter and submits that the permission dated 8th February, 1994 granted by the Survey of India was not placed on record before the Registrar of Trademarks.
13. A perusal of the record shows that the Schedule to The Emblems and Names (Prevention of Improper Use) Act, 1950 does not, prevent the use of the outline of the map of India. Moreover, vide letter dated 8th February, 1994, as extracted hereinabove, the Survey of India has already given a �No-Objection� to the Appellant-M/s. Jindal Industries Pvt. Ltd., for use of the impugned mark �JINDAL� with the outline of the map of India, as set out above. Various other registrations which have been granted in favour of the Appellant also show that there are several marks wherein the outline of India has been depicted. Thus, the reasoning given by the Registrar of Trademarks is completely unsustainable. Moreover, the use of the outline of India signifies that the product originates from India, and thus, the use of the same cannot be held to be violative of Section 9 of the Trade Marks Act, 1999, or The Emblems and Names (Prevention of Improper Use) Act, 1950.
14. Accordingly, the impugned orders are set aside. The Registrar of Trademarks is directed to proceed for registration of the impugned mark. Let the impugned mark be advertised within a period of 3 months. If there is any opposition in respect to the impugned mark, the same shall be decided by the Registrar of Trademarks, in accordance with law, without being affected by the observations in the present order.
15. The present appeal is disposed of in the above terms. All pending applications are also disposed of.

PRATHIBA M. SINGH
JUDGE
APRIL 22, 2022/aman/AD

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