Delhi High Court - Orders
Mr. Tarun Jit Tejpal And Ors vs Ms. Nandini Lall on 16 February, 2023
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~2
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.O. (COMM.IPD-TM) 125/2021
MR. TARUN JIT TEJPAL AND ORS. ..... Petitioners
Through: Mr. Apoorv Agarwal, Ms. Divya
Verma and Mr. Atul Shekhar,
Advocates.
versus
MS. NANDINI LALL ..... Respondent
Through: Mr. Saikrishna Rajgopal, Ms. Savni
D. Endlaw, Mr. Devrat Joshi and
Ms. Ramya Aggarwal, Advocates for
R-1.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 16.02.2023
1. The instant petition is concerned with the mark "JILLING", registered under application No. 3603130 in class 43 in the name of the Respondent [hereinafter, "impugned mark"]. The impugned mark is associated with homestay business which is being run by Respondent in a village/ town named Jeeling State/ जील िंग स्टेट. For the sake of record, it be noted that Respondent also holds registrations of two other "JILLING" formative marks namely, "JILLING ESTATE" and "STEVE LALL'S JILLING ESTATE" in the same class.
2. Petitioners, owners of unregistered mark "JILLING TERRACES", are Signature Not Verified Digitally Signed By:NITIN KAIN Signing Date:18.02.2023 12:56:58 conducting the same business as that of Respondent, in the same location. They are aggrieved with the above registration and assert that no monopoly can be claimed on the name of a place. Parties are also litigating in a suit for infringement filed by the Respondent herein, which was instituted subsequent to the present petition.
3. In absence of the lead counsel for Petitioner, who has joined the proceedings much later, the Court has heard Mr. Saikrishna Rajgopal, counsel for Respondent. As per Mr. Saikrishna, "JILLING" is a derivative of the name of village/ town of Jeeling State/ जील िंग स्टेट, situated in the district of Nainital, where Respondent's property is also located. He states that Petitioner, who is also situated in the same neighbourhood, was earlier using the mark "Chestnut House" for its business and has dishonestly adopted the mark "JILLING TERRACES" in 2015, with an intent to ride upon Respondent's goodwill and reputation. He points out that the Petitioners, in their mark "JILLING TERRACES", have not mentioned the name of the place as "Jeeling", but have deliberately adopted "JILLING", which is a clear admission of the Petitioner's mala-fide intentions. Mr. Saikrishna further contends that Petitioner's primary ground for seeking cancellation that the names of geographical places are not registrable, is misconceived. Referring to the trademark manual, he asserts that as a matter of fact, geographical names are capable of functioning as a trademark. Additionally, Mr. Saikrishna strongly relies upon the proviso to Section 9(1) of the Trademarks Act, 1999 which entitles registration of generic words, if they have acquired a distinctive character/ secondary meaning from their use. He argues that copious documents on record, which include several Signature Not Verified Digitally Signed By:NITIN KAIN Signing Date:18.02.2023 12:56:58 social media listings and third-party articles suggest association of the impugned mark only with its proprietor - Ms. Nandini Lall. He states that he would cite case laws on this issue on the next date of hearing.
4. The Court would like to hear further submissions as to whether a trial is necessary to give a finding on the issue of whether a mark has acquired a secondary meaning or not.
5. The parties are directed to file their brief note of submissions, not exceeding three pages, along with relevant case law(s), in terms of IPD Rules, at least one week before the next date of hearing. The same shall also be handed over as well as e-mailed to the Court Master within the same timelines.
6. List on 6th March, 2023.
SANJEEV NARULA, J FEBRUARY 16, 2023 nk Signature Not Verified Digitally Signed By:NITIN KAIN Signing Date:18.02.2023 12:56:58