This post analyses an order passed by a division bench of Calcutta High Court on 24th December, 2019 in Shyam Steel Industries Limited vs Shyam Sel And Power Limited & Anr; APO No. 91 of 2019 With CS 63 of 2019; wherein it allowed the respondent company to clear their existing stock by manufacture and sale of their products with the mark Shyam or with a label or device containing the mark Shyam till 30th April, 2020 and imposed an order of injunction restraining them from manufacturing, selling or advertising their goods with such mark or label in any way from 1st May, 2020 till the disposal of the suit.

The bench through the Hon'ble Justice I P Mukherji, dealt with crucial points of law including, whether the use of the label Shyam on goods manufactured by the respondent company in spite of being a prefix to their name amounted to trademark infringement of the appellant? and whether the delay in filing of this suit, in spite of being aware of its use amounted to acquiescence of the appellant?

Shyam being Lord Krishna's another name cannot be registered as an exclusive right.

What's interesting about this case is that the respondents argued that Shyam being another name of Lord Krishna cannot be claimed by someone as their exclusive right, thus challenging the validity of its trademark registration as the appellant's trademark under the mark type word; in the year of 2008.

The appellant had applied for the same in the year of 2001 and claimed the use of this mark since the year 1994. The validity of such registration was also renewed over time till 2nd February, 2021.To this the counsel on behalf of the respondent company further argued that they had applied before the appellate board for cancellation of this registration and rectification of the same by the register, and that they are likely to succeed.

The court's take on its power to adjudge and consider the validity of the registration of the mark
Due to the pending status of the aforementioned application and at this interim stage the bench reiterated some crucial observations, and held that in lieu of Section 125 r.w. Section 57 by which under normal circumstances, the question of validity of a trademark is to be decided by the tribunal; herein, �The court retains its powers to decide the question of validity on a prima facie basis, �

When this question of validity is raised and referred to the tribunal or it is pending before the tribunal, the interlocutory application can be disposed of but the suit has to remain stayed till the disposal of the lis by the Appellate Board� as has been previously pronounced in the case of Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia reported in (2004) 3 SCC 90 by the Supreme Court.

Decoding the validity of the registration of appellant's mark

Previously Supreme Court in Lal Babu Priyadarshi v. Amritpal Singh, (2015) 16 SCC 795; had held that the names of holy scriptures which can have an undue influence in misguiding customers cannot be trademarked, also because they lack the criteria of distinctiveness, in lieu of Section 9 of The Trademarks Act, 1999.

This case is also different from the instant one because the company wanting to register Ramayan as their trademark, also used the pictures of Gods and Goddesses on their packaging to make profit. The court to that said ��the photographs of Lord Rama, Sita and Lakshman are also shown on the label, which is a clear indication that he is taking advantage of gods and goddesses, which is otherwise not permitted,�.

Further, it is to be noted here that, report of the Parliamentary committee was also discussed here, that expressed that any symbol of God's, Goddesses, places of worship although are not encouraged to be registered, but it did not want to disturb the ones that are already done so, given the unrest it will cause in the market.

The case of Reddy Pharmaceuticals Ltd. v. Dr. Reddy's Laboratories Ltd, ILR (2008) I Delhi 1223; where in the court had adjudged that registration of the surname �Dr. Reddy� was valid, given the reputation that it identified exclusively with the respondent manufacturer and was very distinctive is also of prime importance here.

In the present case, the bench thus held that in absence of any law or principle it cannot hold the registration of the word Shyam null and void, It also mentioned that the respondent company had failed to establish that 'Shyam' indeed referred to God is generic and common.

Also, since the respondent was unable to show any subsequent evidence of that it carried on business using the subject trademark by sales figures, prior to registration of the appellant's mark or prior to that date from which the appellant claimed first user of the mark; it makes the appellant an unquestionable registered owner of Shyam.

Lastly, on the question of whether inaction on the part of the appellant to restrain the respondent from using the mark, amounted to acquiescence; the bench answered in negative as the Supreme Court had also adjudged in the case of Power Control Appliances v. Sumeet Machines Pvt. Ltd. (1994) 2 SCC 448 wherein it enumerated that acquiescence only arises out of the positive acts and not merely by silence or inaction.

The bench also ordered that in case the Appellate Board thereafter decides the rectification proceedings before it in favor of the respondent, an application can be made before the trial court for vacation of this order of injunction.

A Special Leave Petition had been filed against this order in the Supreme court of India, and had been left defective and the aforementioned order dated 29th December, 2019 is still in effect until expressly vacated as recently upheld on 12th May, 2020.