No infallible principle that God’s name is not registrable as trademark

Kosha Doshi | Symbiosis Law School, Pune | 2nd April 2020

Shyam Steel Industries limited v. Shyam Sel & Power Ltd. and Anr. [APO No. 9 of 2019 with CS 63 of 2019; Calcutta High Court]

Facts:

            Shyam Steel Industries limited and Shyam Sel & Power limited both the companies are manufacturers of thermostatically treated bars. While the company Shyam Sel & Power limited generated power as well. The plaintiff Shyam is the registered owner of the word ‘Shyam’. The registered owner of the word featuring prominently filed a suit for infringement of trademark and passing it off. 

            On the 19^th of April, 1999 the appellant applied for trademarking the ‘label’ mark as Shyam steel in the registry. The user got the mark on 23^rd of December 2005 and was a user of the mark since 30^th April 1994. The company renewed it till the 19^th of April, 2029. On the 2^nd of February 2001, the ‘word’ Shyam was claimed for trademarking with its usage prevalent since 1^st April, 1994. In addition to this, a certificate regarding the same dated the 24^th of March 2008 was shown. 

A learned judge at the ad-interim stage denied granting an injunction and the retainment of the use of the registered mark. The defendant was allowed time to file an affidavit in opposition within duration of 2 weeks with no prayer for extension. The appellant and respondent manufactured products having identical character, composition, size, shape, feature and look. On the bar, one company had engraved Shyam Steel while the other had engraved Sel. The wrapper of the companies had Shyam Steel and Shyam typed respectively. Therefore, a case was filed for infringement of the trademark usage in the Calcutta High Court. 

Issue-

The current issue being that whether word ‘Shyam’ is an alternate name for Lord Krishna and no exclusive right can be claimed for this name word.

Judgment:

            The judgment resolving the dispute of infringement of the trademark was passed on the 24^th of December 2019. The bench comprised of Justice IP Mukerji and Justice Md Nizamuddin who heard the case and passed a judgment in the plaintiff’s favor. This interlocutory application suit was file by Shyam Steel Industries Ltd. for infringement of the trademark “Shyam”. 

            Section 17 of the Trademarks Act, 1999 along with Section 28 was looked into which stated that the trademark when registered has the exclusive rights to use it. Section 31 provides that the trademark shall be prima facie evidence of its validity. In addition to these sections, Section 29 regarding infringement of registered trademarks is looked into. The exceptions in these aspects were also seen by the court officials. A case reference to the Lupin v. Johnson and Johnson was also made to shed light on the principles. Additional case references were made to: Midas Hygiene Industries Ltd. V. Sudhir Bhatia, Patel Field Marshal Agencies v. PM Diesels ltd, Wander Ltd v. Antox India Ltd and a few others. 

The court stated that no authority or no authority which could be proved that the word ‘Shyam’ referred to the God’s name and was not for the registration as a trademark. Reference was made to the case of Lal Babu Priyadarshi v. Amritpal Singh AIR 2016 SC 461 where the Supreme Court stated that names of holy and religious books such as Bible, Quran, Ramayana, Guru Granth Sahib could not be trademarked. 

The Court could not say it as an infallible principle of registering ‘Shyam’ was invalid. The registration cannot be cancelled. If the respondent is able to prove that ‘Shyam’ refers to God only, by producing some convincing evidence, then only will it be accepted. The respondent was unable to prove the same and was not able to produce before the Board any powerful evidence not even at prima facie. Therefore, the plaintiff who is a registered owner was considered the owner of the trademark ‘Shyam’. 

            The registered trademark infringement suit was pleaded that the word was a substitution for the God Lord Krishna. Since the defendant was unable to prove and provide the sufficient evidence that the word ‘Shyam’ was only in regard to the God and nothing else the court ordered that the petitioner was the sole registered owner of the label ‘Shyam’. The Calcutta High Court stated that no infallible principle that God’s name is not registrable as a trademark.