Delhi High Court
Shree Ganesh Rolling Mills (India) Ltd. vs M/S Jindal Rolling Mill Ltd. on 10 June, 2020
Equivalent citations: AIR 2021 DELHI 13, AIRONLINE 2020 DEL 827
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 10th June, 2020
+ CS(COMM) 360/2016
SHREE GANESH ROLLING MILLS (INDIA) LTD..... Plaintiff
Through: Mr. Jayant Mehta, Ms. Geetanjali
Vishwanathan, Ms. Kruttika Vijay,
Ms. Vansha S. Suneja and Ms.
Kaveri Jain, Advs.
Versus
JINDAL ROLLING MILL LTD. ..... Defendant
Through: Mr. Tanmaya Mehta, Mr. Arjun
Narayan and Mr. Raghav
Wadhwa, Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
IA No.4680/2016 (of the plaintiff under Order XXXIX Rules 1&2
CPC) and IA No.7480/2016 (of the defendant under Section 10 of
the CPC).
1. The application of the plaintiff for interim injunction, in this suit
for permanent injunction restraining passing off and for ancillary
reliefs and the application of the defendant under Section 10 of the
Code of Civil Procedure, 1908 (CPC) for stay of further proceedings
in this suit, owing to pendency of a previously instituted suit in the
Court at Hyderabad, are for consideration.
2. The plaintiff has instituted this suit, pleading that (i) the plaintiff
is the successor-in-interest of Shree Ganesh Rolling Mills, a
partnership firm constituted in the year 1972 and engaged in the
business of manufacturing and selling iron and steel re-rolling
CS(COMM) No.360/2016 Page 1 of 23
products, girders, channels, bars etc; (ii) the said partnership firm, on
1st November, 1990 was converted into the plaintiff company and all
the assets and liabilities of the partnership firm including the trade
mark 'JINDAL' of the partnership firm, as a going concern, were
taken over by the plaintiff company; (iii) the members of family of
O.P. Jindal have been partners or Directors or shareholders of the
partnership firm and the plaintiff company, with Naveen Jindal, P.R.
Jindal, Sajjan Jindal, being sons of O.P. Jindal and Savitri Jindal,
being the wife of O.P. Jindal, being the shareholders of the plaintiff
company; (iv) the trade mark 'JINDAL' was adopted in the year 1974
for the goods in which the partnership firm was dealing, because the
partnership firm was a part of O.P. Jindal Group and members of
Jindal family were partners therein; (v) the partnership firm, in the
year 1984 applied for registration of 'JINDAL' in Class 6 of the
Classification of Goods & Services under the Trade & Merchandise
Marks Act, 1958 and registration for use of the mark for girders
included in Class 6, for sale in the states of Haryana, Rajasthan and
Uttar Pradesh, was granted to the partnership firm; (vi) over the years,
other registrations also of the mark 'JINDAL' have been obtained;
(vii) in or about the year 2001-02, the plaintiff closed down its
manufacturing plant located at Hisar but continued its trade and
business of selling iron and steel re-rolling products, girders and bars,
etc. under the trade mark 'JINDAL' through licensees who are reputed
manufacturers of the said goods; (viii) the registrations in favour of
the plaintiff of the mark 'JINDAL' for girders as well as for M.S.
Girders and strips, M.S. Channels and Angles and C.T.D. bars, in
CS(COMM) No.360/2016 Page 2 of 23
Class 6 were subsisting till the date of institution of the suit on 18th
April, 2016; (ix) the defendant company was incorporated in 1986 and
is engaged in the business of manufacturing and selling structural steel
and re-enforcement bars; (x) the defendant is a habitual infringer and
the plaintiff had earlier filed CS(OS) No.979/1996 in this Court to
restrain the defendant from infringing the plaintiff's trade mark
'JINDAL' and from passing off its goods as that of the plaintiff; (xi)
the defendant at that time was using the marks 'Y.R. Jindal' and
'Jindal Co.'; (xii) during the pendency of the said suit, the defendant
as a counterblast, sought cancellation of the first registration in favour
of the plaintiff and which was contested by the plaintiff and the
Intellectual Property Appellate Board (IPAB) vide order dated 1st
October, 2004 dismissed the defendant's rectification / cancellation
petition inter alia holding that the defendant had failed to establish a
case for cancellation / rectification; the said order has attained finality
and was not challenged by the defendant; (xiii) in or about the year
2001-02, the plaintiff was led to believe that the defendant had closed
its business and had stopped using the marks 'Y.R. Jindal' and 'Jindal
Co.' and had abandoned the said marks; (xiv) however in August-
September, 2015, the plaintiff learnt that the defendant had now
adopted the mark 'JINDAL' per se for goods manufactured and sold
by the defendant; (xv) soon thereafter in October, 2015, the plaintiff
learnt that the defendant had obtained an ex parte injunction against a
licensee of the plaintiff by filing a suit before the Hyderabad Civil
Court; (xvi) the said suit was subsequently settled on the defendant
herein, making the licensee of the plaintiff who was impleaded as the
CS(COMM) No.360/2016 Page 3 of 23
defendant in the Hyderabad suit terminate the licence under the
plaintiff; (xvii) the defendant filed yet another suit in Hyderabad Court
against the plaintiff for trade mark infringement and passing off but no
interim injunction was granted to the defendant in the said suit and the
plaintiff was contesting the very maintainability of the said suit; (xviii)
the plaintiff and the defendant, in March, 2016 made attempts for
amicable settlement but without any fructification; (xix) through the
aforesaid suits, the plaintiff also learnt that the defendant is claiming
proprietary rights over the trade mark 'JINDAL' by claiming to have
adopted the marks 'Y.R. Jindal' and 'Jindal Co.' in 1972; (xx) the said
claim of the defendant is obviously false since the defendant was
incorporated only in 1986; (xxi) though the defendant claims that its
predecessor-in-interest Goyal Steel Industries was using the said
marks since 1972 but no document had been produced to show Goyal
Steel Industries to be the predecessor-in-interest of the defendant;
(xxii) the defendant's registration of the marks 'Y.R. Jindal' and
'Jindal Co.' stood abandoned in or about 2002; (xxiii) the defendant
presently had the registrations of (a) word mark 'JINDAL' in Class 6
for Tor Steel, Flate & Angle, applied on 19th June, 1997, claiming use
since 1st January, 1972; (b) device mark 'JINDAL' in Class 6 for iron
& steel products including T.M.T. bar, S.A.P. bar, stainless steel bar,
coated steel bar, alloy steel bar and M.S. Rod, applied on 26th
September, 2005 on proposed to be used basis; (c) 'JINDAL' device
in Class 6 for girders and channels, applied for on 5th December, 2006
claiming use since 1st January, 1972; (d) word mark 'JINDAL' in
Class 6 claiming use since 1st January, 1972; and, (e) device mark
CS(COMM) No.360/2016 Page 4 of 23
'JINDAL' in Class 35 for advertising business, applied for on 18th
September, 2007 claiming use since 1st January, 1972; (xxiv) the
applications of the plaintiff for rectifications / cancellations of the
registrations obtained by the defendant in Class 6 are pending; (xxv)
the plaintiff is the prior user and registered proprietor of the mark
'JINDAL' for various goods in Class 6; and, (xxvi) the defendant is
deceiving the unwary public and inducing them into purchasing its
products as that of the plaintiff.
3. The suit came up first before this Court on 19th April, 2016 and
thereafter on 22nd April, 2016 when though summons of the suit were
issued taking note of Indian Bank Vs. Maharashtra State Co-
operative Marketing Federation Ltd. (1998) 5 SCC 69 relied upon by
the counsel for the plaintiff but no ex parte ad-interim relief sought
granted.
4. The defendant has contested the suit by filing a written
statement pleading, that (i) the suit covers matters that are directly and
substantially in issue in previously instituted suit filed by the
defendant against the plaintiff in the Court at Hyderabad; (ii) the
plaintiff in Transfer Petition No.823/2016 filed before the Supreme
Court has admitted the overlapping nature of the suit in Hyderabad
Court and the present suit; (iii) the said Transfer Petition was
dismissed on 29th June, 2016; (iv) the proceedings in the present suit
are liable to be stayed under Section 10 of the CPC; (v) the plaintiff
closed down its operations in 2003 and since then has not carried on
any activity of manufacture, sale and marketing of products subject
CS(COMM) No.360/2016 Page 5 of 23
matter of the suit; (vi) on a reference made by the plaintiff, the
plaintiff on 22nd January, 2001 was declared as a sick company within
the meaning of the Sick Industrial Companies (Special Provisions)
Act, 1985; (vii) the status of the plaintiff in the Ministry of Corporate
Affairs, Government of India was "dormant" and the Sales Tax
Certificate of the plaintiff was cancelled on 19th November, 2008;
(viii) the defendant filed opposition to the application made by the
plaintiff on 21st March, 2002 for registration of the mark 'JINDAL'
for manufacturing and trading of m.s. channels, m.s. angles, m.as. ctd
brass and to which no response was filed by the plaintiff and whereby
the plaintiff abandoned its claim to seek exclusive right to use the
mark 'JINDAL'; (ix) the plaintiff did not use the mark for over five
years and the registration of the mark 'JINDAL' in favour of the
plaintiff was liable to be cancelled and the defendant had applied
therefor and which application was pending; (x) the plaintiff had
falsely claimed to have entered into licence agreements with others;
the licence agreements were forged and fabricated; the plaintiff had
not been using the trade mark bona fide; (xi) in fact, the claim of
others to use of the mark 'JINDAL' as licensees of the plaintiff had
caused damage to the defendant; (xii) alternatively, the plaintiff is at
best engaged in the business of licensing without any intention to
directly manufacture or market goods or product and such use of the
mark is not bona fide; (xiii) the telephone number given on the
website www.jindalsteelbar.com is not of an employee of the plaintiff;
(xiv) the plaintiff did not oppose the applications filed by the
defendant for registration of the word mark 'JINDAL' or mark 'Jindal
CS(COMM) No.360/2016 Page 6 of 23
Co.' and device mark 'JINDAL' all in Class 6 or the device mark
'JINDAL' in Class 35; (xv) the defendant has also secured two
copyrights over artistic works which involve usage of the mark 'JRM'
and 'JINDAL'; and, (xvi) the defendant has been using the mark
'JINDAL' to the knowledge of the plaintiff continuously for around
44 years and the mark 'JINDAL' has become distinctive of the
defendant.
5. The plaintiff in its replication has inter alia pleaded, that (a) the
plaintiff had not been served with the application if any filed by the
defendant for removal of the registration in favour of the plaintiff on
ground of non user; (b) had the plaintiff not been using the mark
'JINDAL' through its licensees, the occasion for the defendant to
institute suits for infringement and passing off against the said
licensees would not have arisen; and, (c) the defendant has also
granted license for use of the mark 'JINDAL' and the business model
of the defendant is identical to that of the plaintiff.
6. The defendant, besides filing the written statement has also filed
the application aforesaid under Section 10 of the CPC.
7. Vide order dated 21st February, 2017, the statement of the
counsel for the defendant that the defendant shall not file any suit or
initiate any proceeding against the licensees of the plaintiff was
recorded and vide order dated 12th May, 2017, the said order was
continued and the statement of the counsel for the plaintiff was also
recorded to the effect that the plaintiff shall not write any letters or
issue any notices against the licensees of the defendant.
CS(COMM) No.360/2016 Page 7 of 23
8. The proceedings in the suit were adjourned for several dates
awaiting the outcome of the application qua territorial jurisdiction
filed by the plaintiff in the suit instituted by the defendant at
Hyderabad. On 22nd January, 2019, it was informed that the
application of the plaintiff under Order VII Rule 10 CPC in the
Hyderabad suit, objecting to the jurisdiction of the Hyderabad Court,
stood dismissed.
9. On 22nd January, 2019, it was the contention of the counsel for
the plaintiff (i) that the plaintiff has instituted this suit for permanent
injunction to restrain the defendant from passing off same goods as
that of the plaintiff by use of the same mark 'JINDAL', as of the
plaintiff; (ii) that the plaintiff was established by Mr. O.P. Jindal, as a
partnership firm and commenced using the trade mark 'JINDAL' on
1st January, 1974 and was also first granted registration in 1985; (iii)
that the defendant has been established by a member of the larger
family of Mr. O.P. Jindal and was initially using the mark 'Y.R.
JINDAL', to distinguish its goods from that of the plaintiff under the
mark 'JINDAL'; (iv) that the defendant has however now abandoned
the said mark and commenced using the mark identical to that of the
plaintiff i.e. 'JINDAL'; (v) that the defendant, over the years has also
obtained registration of the mark 'JINDAL'; (vi) that the plaintiff has
applied to the Intellectual Property Appellate Board for rectification of
the mark of the defendant; (vii) that the defendant instituted the suit
against the plaintiff at Hyderabad Courts to restrain the plaintiff from
using the mark 'JINDAL' and from passing off its goods as that of the
defendant herein as well as for infringement; (viii) that the plaintiff
CS(COMM) No.360/2016 Page 8 of 23
has applied under Section 124 of the Trade Marks Act, 1999 in
Hyderabad Courts and which application is pending; (ix) that though
the proceedings in the present suit may be stayed on account of
previously instituted suit at Hyderabad but the plaintiff is entitled to
hearing of its application under Order XXXIX Rules 1&2 of the CPC.
10. The counsels for the parties were further heard on the
application for interim relief as well as on the application under
Section 10 of the CPC on 7th May, 2019 and orders reserved giving
liberty to the counsels to file written submissions with copies of the
judgments relied upon.
11. Both counsels have filed written submission.
12. It is the contention of the counsel for the plaintiff, that (i) the
plaintiff is admittedly a prior user and registrant of the mark since 1st
January, 1974; (ii) the rectification petition filed by the defendant for
cancellation of the first registration of the mark in favour of the
plaintiff was dismissed on 1st October, 2004 holding the plaintiff to be
the prior user of the mark and the said order has attained finality; (iii)
though the defendant, in a suit before the District Judge, New Delhi
against a licensee of the plaintiff had obtained an ex parte injunction
against use of the mark by the licensee of the plaintiff but the said
order was vacated vide subsequent order dated 30th November, 2016,
finding the plaintiff to be the prior adopter of the mark and the said
order has also attained finality; (iv) the defendant has not produced
any document of prior use of the mark since 1972; (v) though the
defendant claims use since 1972 of the marks 'Y.R. Jindal' and 'Jindal
CS(COMM) No.360/2016 Page 9 of 23
Co.' by Goyal Steel Industries but no document has been produced to
show assignment of the said mark in favour of the defendant or of the
defendant being the successor in interest of Goyal Steel Industries;
(vi) adoption of the mark 'JINDAL' by the defendant was / is
dishonest, fraudulent and in bad faith; (vii) the defendant first applied
for registration of the mark on 19th June, 1997 i.e. after the institution
of the earlier suit by the plaintiff against the defendant and from which
the defendant was aware of adoption of the mark by the plaintiff on 1st
January, 1974; (viii) even otherwise, both the parties deal from the
town of Hisar in Haryana; the defendant was aware of prior adoption
of the mark 'JINDAL' by the plaintiff; (ix) the plaintiff has been
continuously using the mark since 1st January, 1974 till, 2002 by
manufacturing goods under the said mark and thereafter by licensing
of the mark 'JINDAL'; and, (x) Section 10 of the CPC only stays the
trial of the suit and does not bar the plaintiff from seeking a relief of
temporary injunction. Reliance is placed on Indian Bank supra and
Austin Nichols & Co. Vs. Arvind Behl ILR 2005 II Del 1007.
13. The counsel for the defendant has contended, that (i) the earlier
suit filed by the plaintiff against the defendant was dismissed for non-
prosecution on 5th February, 2002 and no interim relief was granted to
the plaintiff therein also; (ii) the plea of the plaintiff of having first
gained knowledge of the defendant's use of the mark 'JINDAL' in
August-September, 2015 is falsified from the documents on record;
(iii) the plaintiff, from as early as 1984, has knowledge of the
defendant's adoption of the mark 'JINDAL'; (iv) the plaintiff has
CS(COMM) No.360/2016 Page 10 of 23
failed to file invoices from 1974 and the documents filed by the
plaintiff show the plaintiff to have adopted the mark in 1985; (v) there
is not a shred of evidence to the claim of the plaintiff of being the
prior adaptor of the mark; (vi) the plaintiff has approached this Court
after considerable delay; (vii) in the earlier suit filed by the plaintiff
also, restraint was sought against the defendant from using the mark
'JINDAL' and issues were framed with respect to the defendant being
a prior user of the trade marks 'Y.R. Jindal' and 'Jindal Co.'; (viii) no
justification for not prosecuting the earlier suit filed against the
defendant has been pleaded; (ix) the documents filed by the defendant
falsify the claim of the plaintiff of the defendant having then stopped
its business or abandoned use of the mark 'JINDAL'; (x) the present
suit is a counterblast to the suit filed by the defendant against the
plaintiff in Hyderabad; (xi) substantive claims of the parties are
pending adjudication before the Trade Mark Registry and the IPAB;
(xii) the conduct of the plaintiff does not entitle the plaintiff to any
injunction; (xiv) the defendant has learnt that Jindal Infra Alloy Pvt.
Ltd. is claiming title over the plaintiff's trade marks under various
agreements entered into with the plaintiff; (xv) the defendant has filed
documents to show use of the mark 'JINDAL' since the year 1972;
(xvi) Jindal is a key component of the defendant's corporate /
company name and is also the surname of the defendant's promoter;
(xvii) the plaintiff also admits the proprietors, shareholders and
directors of the plaintiff as well as the defendant being members of
Jindal family of Hisar; (xviii) the orders of the IPAB and the District
Judge, Delhi holding the plaintiff to be the prior user, do not
CS(COMM) No.360/2016 Page 11 of 23
substantially determine the issue of prior use; even if the plaintiff were
to be proved to be the prior adopter, the plaintiff had no reasonable
justification for acquiescence towards the defendant and its
predecessors' continuous and uninterrupted use of the mark 'JINDAL'
in various forms; (xiv) the plaintiff never dealt in TMT bars from the
time of its inception till September-October, 2015, when it attempted
to re-enter the business on the strength of licensee; and, (xv) the
proceedings in the present suit are liable to be stayed under Section 10
of the CPC.
14. The counsel for the plaintiff in rejoinder has contended that
since the very adoption of the mark 'JINDAL' by the defendant is
dishonest and fraudulent, the argument of delay on the part of the
plaintiff in instituting this suit is not available to the defendant; in fact,
in the written statement, delay is not even pleaded and the argument
has been raised for the first time without any pleading. Similarly, the
bar of Order IX Rule 9 of the CPC has not been pleaded; even
otherwise, infringement and passing off of a trade mark by the same
defendant from time to time furnishes a recurring cause of action to
the proprietor of the mark.
15. I may mention that both the counsels in their respective written
submissions have referred in detail to the documents filed and also to
a large number of judgments. However since the said written
arguments have been taken on record, the need to burden this
judgment with the said particulars is not felt as the present is not a
case which can be decided without trial.
CS(COMM) No.360/2016 Page 12 of 23
16. Supreme Court in order dated 31st July, 2017 in SLP(C)
No.18892/2017 titled AZ Tech (India) Vs. Intex Technologies
(India) Ltd. arising out of judgment dated 10th March, 2017 in
FAO(OS) No.1/2017 of this Court, observed as under:
"Having read the order of the High Court of Delhi dated
10th March, 2017 passed in FAO(OS) No.1/2017 we find that it
is virtually a decision on merits of the suit. We wonder if the
High Court has thought it proper to write such an exhaustive
judgment only because of acceptance of the fact that the interim
orders in Intellectual Property Rights (IPR) matters in the Delhi
High Court would govern the parties for a long duration of time
and disposal of the main suit is a far cry. This is a disturbing
trend which we need to address in the first instance before
delving into the respective rights of the parties raised in the
present case......."
Though subsequently vide order dated 16th August, 2018, the
Special Leave Petition was dismissed with a direction for expeditious
disposal of the suit but a suo motu proceeding started with respect to
the concern urged as aforesaid and which suo motu proceeding was
ultimately closed on 6th August, 2019. In deference to what was
observed by the Supreme Court and particularly when the proceedings
in this suit, as hereunder discussed, are to be stayed awaiting the
judgment of the Court at Hyderabad, it is not deemed apposite to
burden this judgment with all the documents referred to in the written
arguments of both the counsels or the judgments referred to therein.
CS(COMM) No.360/2016 Page 13 of 23
17. All that can be said, on going through the voluminous files, is
that at this stage, it is very difficult for this Court to take a prima facie
view of the respective claims of either of the parties. Though
ordinarily in such a situation when no prima facie case can be found in
favour of the applicant for interim relief, the application for interim
relief is to be dismissed, however what is clear from the records is that
both the parties are using the same mark i.e. 'JINDAL' in relation to
the same product / goods.
18. The plaintiff, at pages 20 and 21 of Part-IIIA file has filed
photograph of its own product as well as photograph of the product of
the defendant and which show identical product i.e. steel rods with
'JINDAL' embossed thereon in identical font and fashion, making the
goods of the plaintiff indistinguishable from the goods of the
defendant.
19. The purpose of the law of infringement and passing off is not
only to protect rights of the proprietors of the marks but also to protect
the consumers from being mislead into dealing with and/or buying the
goods of one for the other.
20. As far back as in Hindustan Pencils (P) Ltd. Vs. India
Stationery Products Co. AIR 1990 Del 19, Justice Kirpal, as his
loardship then was, held that though in an action for infringement of
trade mark if the interim injunction is not granted, the plaintiff when
ultimately suceeds can always be compensated by awarding damages
for the loss suffered but during the period the defendant is allowed to
continue to infringe the trade mark, it is the consumer or the purchaser
CS(COMM) No.360/2016 Page 14 of 23
who alone suffers and who ultimately cannot be compensated;
therefore, in order to curb the menace of manufacture, production and
sale of suprious goods and the blatant violation of intellectual
property, it will be proper for the Court to take into consideration the
interest of the general public. It was held that the right of the public
not to be decived or confused may turn the scales in favour of a
preliminary injunction. It was yet further held that even though there
may be some doubt as to whether laches or acquiescence can deny the
relief of permanent injunction, judicial opinion has been consitent in
holding that if the defendant acts fradulently with the knowledge that
he is violating the plaintiff's right, then in that case even if there is an
inordinate dely on the part of the plaintiff in taking action against the
defendant, the relief of injunction is not denied.
21. The aforesaid dicta of this Court in Hindustan Pencils (P) Ltd.
supra was followed by the High Court of Gujarat in Rupa & Co. Ltd.
Vs. Dawn Mills Co. Ltd. AIR 1998 Guj 247 and by this Court in
Ansul Industries Vs. Shiva Tobacco Company 2007 (34) PTC, 392,
Beiersdorf A.G. Vs. Ajay Sukhwani 2009 (39) PTC 38 and Apollo
Tyres Ltd. Vs. Pioneer Trading Corporation 2017 (72) PTC 253.
22. Mention may also be made of (a) Power Control Appliances
Vs. Sumeet Machines Pvt. Ltd. (1994) 2 SCC 448 laying down that it
is the settled principle of law relating to trade mark that there can be
only one mark, one source and one proprietor; it cannot have two
origins; (b) Synthes AG Chur Vs. Rob Mathys India (P) Ltd. 1996
SCC OnLine Del 222 holding that "in the interest of general public,
CS(COMM) No.360/2016 Page 15 of 23
the defendant cannot be allowed to use the trade marks and try to use
the name and reputation of the plaintiffs for its business"; and
consequently restraining the defendant from doing anything which
was likely to cause confusion, deception or amount to passing off of
the goods and business of the defendant for those of the plaintiff; (c)
Rob Mathys India Pvt. Ltd. Vs. Synthes Ag Chur (1997) 17 PTC 669
(Del) (DB) holding that a party cannot be permitted to bask in the
warmth and make illicit profit from a reputation built by another and
that it is necessary to protect the interest of the users; (d) Kedar Nath
Gupta Vs. J.K. Organisation 1998 (18) PTC 189 (Del) holding in the
context of Section 21 of the Trade Marks Act that the term "any
person" need not be only a prior registered trade mark owner; even a
customer, a purchaser or a member of the public likely to use the
goods may object to the registration of a trade mark in respect of
goods on the ground of possible deception or confusion; deception or
confusion is a matter of public interest which is an important concern
of the trade mark law; (e) Ramdev Food Products (P) Ltd. Vs.
Arvindbhai Rambhai Patel (2006) 8 SCC 726 holding (i) the purpose
of a trade mark is to establish a connection between the goods and the
source thereof which would suggest the quality of the goods; (ii)
ordinarily under the law there can only be one mark, once source or
one proprietor; ordinarily again, the right to user of a trade mark
cannot have two origins; (iii) if goods are sold which are produced
from two sources, the same may lead to confusion in the minds of
consumers; it may also amount to fraud on the public; and, (iv)
CS(COMM) No.360/2016 Page 16 of 23
ordinarily therefore two people are not entitled to the same trade mark,
unless there exists an express licence in that behalf.
23. The counsel for the plaintiff has not been able to urge any
ground for declining the application of the defendant under Section 10
of the CPC. Even otherwise, on perusal of the pleadings in the
Hyderabad suit and the present suit, the ingredients of Section 10 are
satisfied and the further proceedings in the suit in this Court are liable
to be stayed.
24. It is thus not as if this Court would be in a position to expedite
trial for arriving at an early decision, to prevent further confusion in
the market and to prevent the consumers from being so mislead and
while wanting to buy goods of either the plaintiff or the defendant,
being led into buying the goods of the other. The speed of the trial
will be governed by the defendant and by the Hyderabad Court where
the suit filed by the defendant against the plaintiff is pending.
25. I am therefore of the view that an interim arrangement ought to
be made to ensure clarity in the mind of consumers and others dealing
with the plaintiff and the defendant and to prevent chaos from
prevailing in the market by perpetuating the deception of the
customers for more time, till when trial in the Hyderabad suit is
concluded and various issues arising for adjudication adjudicated.
26. The question still arises, how such distinction between the
goods of the plaintiff and the goods of the defendant is to be
maintained in the market.
CS(COMM) No.360/2016 Page 17 of 23
27. In this respect, in my view, the determinative factors are, that (i)
the plaintiff, whether or not the prior user of the mark, is admittedly
the prior registrant of the mark, for the class of goods for which the
mark is presently being used; the same, in my view, is a very strong
indicator in favour of the plaintiff and against the defendant; even if
the plaintiff, on account of being sick at one stage, did not use the
mark, the non-use of the mark in such circumstances, in my view,
would not show an intent of the plaintiff to abandon the mark so as to
allow another to act on the premise of such abandonment and change
position so as to thereafter stop the plaintiff from using the mark
[reference in this regard may be made to Gold Star Co. Ltd. Vs. Gold
Star Industries Ltd. 1995 (15) PTC 18 (Del), Cycle Corporation of
India Ltd. Vs. T.I. Raleigh Industries Pvt. Ltd. (1996) 9 SCC 430,
Rob Mathys India Pvt. Ltd. Vs. Synthes Ag Chur (1997) 17 PTC
669(Del)(DB), Hardie Trading Ltd. Vs. Addisons Paint & Chemicals
Ltd. (2003) 11 SCC 92, Fedders Lloyd Corporation Ltd. Vs. Fedders
Corporation (2005) 30 PTC 353 (DB), Pfizer Products Inc. Vs.
Rajesh Chopra 2007 (35) PTC 59 (Del), Exide Industries Ltd. Vs.
Exide Corporation, U.S.A. 2013 (53) PTC 137 (Del) & Exide
Technologies Vs. Exide Industries Ltd. 2016 SCC OnLine Del 4326
(DB)]; it is not even the case of the defendant that it acted on the basis
of abandonment of the mark by the plaintiff; and, (ii) it is clear from a
reading of the pleadings in this suit as well as in the earlier suit filed
by the plaintiff against the defendant that while the plaintiff, since the
time of registration and claimed user, used the mark 'JINDAL' per se,
the defendant, though earlier was using the marks 'Y.R. Jindal' and
CS(COMM) No.360/2016 Page 18 of 23
'Jindal Co.', has along the way dropped the prefix and suffix to the
word 'JINDAL', to now make its mark identical to that of the
plaintiff.
28. I may in this context mention that though the grievance of the
plaintiff in CS(OS) No.979/1996 earlier filed by the plaintiff against
the defendant and which was dismissed for non prosecution, was
violation by the defendant of the mark 'JINDAL' of the plaintiff by
the defendant by using 'Y.R. Jindal' and 'Jindal Co.', the defendant in
its written statement in the said suit did not make a claim of using the
mark 'JINDAL' per se. Rather, the defendant, after the dismissal for
non prosecution of the said suit, has changed its mark from 'Y.R.
Jindal' or 'Jindal Co.' to 'JINDAL' per se, dropping the prefix/suffix
'Y.R.' and 'Co.' and thereby having the effect of obliterating whatever
little difference was there between the marks of the plaintiff and the
defendant owing to the prefix/suffix 'Y.R.' and/or 'Co', then being
used by the defendant. Such conduct of the defendant shows the
continuous effort and intent of the defendant to make his mark
identical to that of the plaintiff and obviously to derive benefit
therefrom. There is no explanation for the defendant dropping the
prefix / suffix 'Y.R.' and 'Co.' which the defendant then was using
along with the mark 'JINDAL'.
29. Paragraph 16 of the plaint in the earlier suit filed by the plaintiff
against the defendant is as under:
"16. That the defendants have recently started
manufacturing and marketing of Steel Girders under the
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trade mark "JINDAL" as of the plaintiffs, which is a clear
and flagrant violation of the legal vested rights of the
plaintiffs in their well-known and well-established trade
mark "JINDAL"."
And the plaintiff in the said earlier suit inter alia claimed the
following reliefs:
"22. It is therefore, most humbly and respectfully
prayed that decree be passed in favour of the plaintiff
against the defendant to the following effects:-
(i) For perpetual injunction restraining the
defendant, their servants, agents, representatives,
dealers and all other persons on their behalf from
infringing the trade mark of the plaintiff, carrying
on the business as manufacturers or vendors of
Steel Girders and fittings thereof under the trade
mark "JINDAL" or under any other trade mark
which may be identical with and / or deceptively
similar to the plaintiffs in respect of the aforesaid
goods.
(ii) For perpetual injunction restraining the defendant
from passing off their goods as the goods of the
plaintiff under the trade mark "JINDAL"."
CS(COMM) No.360/2016 Page 20 of 23
30. The defendant in its written statement to the earlier suit of the
plaintiff, in preliminary objections inter ala stated as under:
"2. The plaintiff has not given the true facts before this
Hon'ble Court. The true facts are:
(a) The predecessor of the defendant company, namely
M/S. GOEL STEEL INDUSTRIES adopted the trade
marks JINDAL CO and Y.R. JINDAL in the year 1972
honestly and bonafidely as one of the partners namely
Shri Janak Raj Jindal (then Minor, who was admitted to
the benefits of the partners) was JINDAL by surname.
The alphabets CO were added to the words JINDAL to
make it JINDAL CO to denote the association of the mark
with the then firm GOEL STEEL INDUSTRIES as a
company of JINDALS. The other trade mark Y.R.
JINDAL was adopted from the name of the present
Managing Director of the defendant company namely
Shri Y.R. Jindal who at that time was also a minor. He is
son of Shri M.L. Jindal. Thus to give the affections to the
minor children, the trade marks were thus
coined/adopted as explained above.
(b) Shri M.L. Jindal and Shri O.P. Jindal are the real
brothers who are managing the defendant and the
plaintiff companies respectively by themselves or through
their kiths and kins.
(c) The defendant company was incorporated in 1986
by certificates of incorporation dated 25/2/1986 as a
CS(COMM) No.360/2016 Page 21 of 23
private limited company and later on in 1993 converted
into a limited company.
(d) The defendant (which then was a private limited
company) in the year 1986 was taken as a partner in
M/S. GOEL STEEL INDUSTRIES who carried on the
business and also used the trade marks JINDAL CO and
Y.R. JINDAL.
(e) The said firm was later on taken over by the
defendant company in 1986.
(f) Thus the defendant and its predecessors have been
continuously using the trade marks JINDAL CO and Y.R.
JINDAL since 1972."
31. In my view, a direction by way of interim arrangement, to the
defendant, to till the disposal of the suit, not use the mark 'JINDAL'
per se and to use the same in conjunction with the acronym 'Y.R.' and
which is indicative of the faction of the Jindal family from which the
goods originate, would serve the purpose. The defendant, who in the
past has been using the mark 'Y.R. Jindal', cannot claim to suffer any
prejudice from now using the same mark and which would to some
extent distinguish its goods from that of the plaintiff.
32. I accordingly dispose of IA No.4680/2016 of the plaintiff under
Order XXXIX Rules 1 and 2 CPC, by restraining the defendant from,
with effect from 60 days of today, using the mark 'JINDAL' per se in
any manner whatsoever and in any media whatsoever including as a
domain name or as a e-mail or in advertising or for embossing the
CS(COMM) No.360/2016 Page 22 of 23
same on the goods or on the letterheads, but clarifying, that the
defendant shall be entitled to use the mark 'Y.R. Jindal' and use by the
defendant of the mark 'Y.R. Jindal' shall not constitute violation of
the injunction against the defendant from using the mark 'JINDAL'.
It is further clarified that it will be open to the defendant to, in the said
period of 60 days, give publicity to the forthcoming change, to inform
and familiarize its customers and others dealing with it, of the same.
33. As far as IA No.7480/2016 under Section 10 of the defendant is
concerned, the same is allowed. The further proceedings in this suit
are stayed awaiting the outcome of the suit instituted by the defendant
against the plaintiff at Hyderabad.
34. IA No.4680/2016 and IA No.7480/2016 are disposed of.
CS(COMM) No.360/2016
35. Resultantly, the further proceedings in this suit are adjourned
sine die with liberty to the parties to apply as and when need arises.
RAJIV SAHAI ENDLAW, J.
JUNE 10, 2020 'gsr'..
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