Whether the Registration of the Mark Shyam being a God's name, is valid or not: The Conundrum
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 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
Shyam being Lord Krishna's another name cannot be registered as an
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
Decoding the validity of the registration of appellant's markPreviously 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
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
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.
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