Delhi High Court - Orders
Jindal Stainless (Hisar) Ltd vs Suncity Sheets Private Limited And Anr on 26 November, 2021
Author: C. Hari Shankar
Bench: C. Hari Shankar
$~23
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 604/2021 & I.A. 15428/2021, I.A. 15429/2021,
I.A. 15430/2021, I.A. 15431/2021, I.A. 15432/2021
JINDAL STAINLESS (HISAR) LTD. ..... Plaintiff
Through Ms. Manmeet Arora, Mr. Sarad
S. Sunny, Ms. Samapika Biswal and Mr.
Arjun Sujewala, Advs.
versus
SUNCITY SHEETS PRIVATE LIMITED AND ANR.
..... Defendants
Through Mr. Kishore Kunal, Mr. Manish
Rastogi, Ms. Akansha Mehta and Ms.
Shubhi Panwar, Advs. for D-1 and D-2
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
ORDER
% 26.11.2021
1. This plaint is predicated on a claim for exclusivity in the word "Jindal". The plaintiff is the proprietor of the registered device mark " "
2. The registration clearly refers to the registered mark filed, as a "device mark." The Certificate of Registration contains, further, the following recital:
"TM Applied For: Jindal (Device of Square Containg (sic) letter J)."Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 604/2021 Page 1 of 4 Signing Date:30.11.2021 12:53:23
3. Prima facie, therefore, the registration held by the plaintiff is not of the word mark 'Jindal' per se, but of the device mark 'Jindal' containing the word 'Jindal' represented in a particular fashion, as reproduced in Para 1 supra.
4. The defendant is dealing with products similar to those dealt with by the plaintiff, i.e. Stainless Steel tubes and associated goods.
The defendant uses the mark " ".
5. The plaintiff alleges that the defendant is infringing the plaintiff's registered trademark and passing off its goods as those of the plaintiff.
6. Before any injunction can be granted, several issues would have to be answered by the plaintiff. The plaintiff does not possess any registration in the word mark 'Jindal'. All it possesses is the registration in the device mark ' ' which includes the word 'JINDAL' represented in a particular fashion.
7. Section 17 of the Trade Marks Act, 1970 clearly states that, in the case of a composite mark, exclusivity cannot be claimed in respect of a part of the mark. This statutory principle has been explained by a Division Bench of this Court in South India Beverages v. General Mills Marketing Inc 1, by stating that exclusivity can be claimed in 1 2014 SCC OnLine Del 1953 Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 604/2021 Page 2 of 4 Signing Date:30.11.2021 12:53:23 respect of part of a registered mark where such part is shown to be a dominant part of the mark and that the part has attained secondary meaning consequent on use.
8. This Court has taken a view, in various cases - including matters decided by this Bench - that the aspect of acquisition of secondary meaning can only be decided consequent on trial and that ordinarily, a prima facie view in that regard cannot be taken at the Order XXXIX stage.
9. Insofar as the device mark is concerned, prima facie, this Court does not find any similarity at all between the mark of the plaintiff and the mark being used by the defendant. The plaintiff uses the mark "JSL" with the device mark which is registered in its name. The defendant, on the other hand, uses the mark "RNJ" with a distinctive logo and its name written below the logo.
10. At a plain glance, the mark of the defendant comprises the word "RN Jindal". The format and the lettering in which the defendant's mark is used, are also, prima facie, different from that of the plaintiff. The aspect of deceptive similarity, between the mark of the plaintiff and the defendant is also, in my view, arguable.
11. It is difficult, therefore, prima facie, for this Court to take a view that one would confuse the mark of the defendant with that of the plaintiff.
Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 604/2021 Page 3 of 4 Signing Date:30.11.2021 12:53:2312. It is clarified that the above opinions are merely prima facie in nature and that the Counsel for the plaintiff is at liberty to produce material or judicial decisions, which would disabuse the Court of this notion.
13. The Court has expressed its prima facie view only so that the learned Counsel for the plaintiff is aware of the point on which she would have to address her arguments the prayer for interim injunction could be decided, this way or that.
14. Ms. Arora, learned Counsel for the plaintiff, seeks a short adjournment in order to enable her to produce material in favour of her case.
15. Accordingly, re-notify on 1st December, 2021.
C. HARI SHANKAR, J NOVEMBER 26, 2021 dsn Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 604/2021 Page 4 of 4 Signing Date:30.11.2021 12:53:23