Delhi High Court - Orders
Jindal Industries Private Limited vs Jindal Sanitaryware Private Limited & ... on 9 May, 2023
Author: C. Hari Shankar
Bench: C. Hari Shankar
$~16
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 251/2023 & I.As. 8128-8132/2023, I.As. 8887-
889/2023 & I.A. 8816/2023
JINDAL INDUSTRIES PRIVATE LIMITED ..... Plaintiff
Through: Mr. Chander M. Lall, Sr.
Adv.with Mr. Sarad Kumar Sunny, Mr.
Rohan Dua, Mr. Keshav Mann and Ms.
Ananya, Advs.
versus
JINDAL SANITARYWARE PRIVATE LIMITED & ANR.
..... Defendants
Through: Mr. Abhishek Grover and Mr.
Rakesh Tiwari, Advs.
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
ORDER
% 09.05.2023 I.A. 8889/2023 (Exemption)
1. By this application, the plaintiffs seek exemption from the requirement to filing original/certified as well as translated copies of the documents.
2. Subject to the plaintiff filing original/certified documents during the course of the proceedings, exemption is granted for the present.
3. The application stands disposed of accordingly.
I.A. 8916/2023 (under Order VI Rule 17 of the CPC)
4. This is an application by the plaintiff under Order VI Rule 17 Signature Not Verified CS(COMM) 251/2023 Page 1 of 13 Digitally Signed By:KAMLA RAWAT Signing Date:10.05.2023 12:04:57 of the CPC seeking amendment of the plaint.
5. As the amendment has been sought at the initial stage, even before summons have been issued in the suit, the application is allowed.
6. The amended plaint is taken on record.
I.A. 8128/2023 (Order XXXIX Rules 1 and 2 of CPC)
7. Mr. Lall, learned Senior Counsel for the plaintiff, does not press this application as, consequent to the plaintiff amending the suit, a fresh application under Order XXXIX Rules 1 and 2 of the CPC, being IA 8888/2023 has been filed.
8. This application is therefore disposed of as not pressed.
I.A. 8129/2023 (Order XXIX Rule 9 of CPC) and I.A. 8887/2023 (under Order XXVI Rules 4, 9 & 10 of CPC)
9. As the defendants are represented by counsel and are aware of the order passed today, there is no necessity of appointing a Local Commissioner.
10. As such, these applications are disposed of.
I.A. 8130/2023 (under Order XI Rule 1(4) of the CPC)
11. By this application, the plaintiffs seek permission to file additional documents.
12. The plaintiffs are permitted to place additional documents on Signature Not Verified CS(COMM) 251/2023 Page 2 of 13 Digitally Signed By:KAMLA RAWAT Signing Date:10.05.2023 12:04:57 record in accordance with Order XI Rule 1(4) of the Code of Civil Procedure, 1908 (CPC) as amended by the Commercial Courts Act within 30 days from today.
13. The application stands disposed of accordingly.
I.A. 8131/2023 (Exemption)
14. Mr. Lall, learned Senior Counsel for the plaintiff, does not press this application as a fresh application seeking similar relief, being IA 8889/2023 has been filed.
15. This application is therefore disposed of as not pressed.
I.A. 8132/2023 (u/S 12A of the Commercial Courts Act, 2015)
16. In view of the judgment of the Division Bench of this Court in Chandra Kishore Chaurasia v. R.A. Perfumery Works Pvt Ltd1, exemption is granted from the requirement of pre-institution mediation under Section 12A of the Commercial Courts Act, 2015.
17. The application stands allowed accordingly.
CS(COMM) 251/2023
18. The plaintiff is the proprietor of the following registrations, granted under the Trade Marks Act, 1999:
12022 SCC OnLine Del 3529 Signature Not Verified CS(COMM) 251/2023 Page 3 of 13 Digitally Signed By:KAMLA RAWAT Signing Date:10.05.2023 12:04:57 Trade Mark Class Description Of Date Of Trade Marks No. Goods Application 384816 06 Galvanised Iron 31.12.1981 Pipes & Tubes. User Detail 01.05.1972 673902 06 Galvanised Iron 20.07.1995 Pipes & Tubes. User Detail 01.04.1961 1532084 06 C.I. Soil Pipes, 19.02.2007 ACL Cast Iron Pipes, User Detail M.S. Pipes, C.I. 01.04.2006 Pipe And Fittings, Galvanised Corrugated Steel Sheet, Galvanised Iron Pipes, Galvanised Plain Steel Sheet, Steel Strips, Steel Pipes And Tubes And Fitting And Parts Thereof, Mild Steel Pipes And Tubes Both Black And Galvanised And Parts And Fitting Thereof And Other Articles, Pipes Fitting (Galvanised Iron And Metal), Steel Tubular Poles, Steel Poles, Back And Galvanised E.R.W. Pipes Seamless Steel Pipes And Tubes Signature Not Verified CS(COMM) 251/2023 Page 4 of 13 Digitally Signed By:KAMLA RAWAT Signing Date:10.05.2023 12:04:57 1483835 17 P.V.C. Pipes 01.09.2006 And Fittings, User Detail P.V.C. Casing "Proposed to And Caping be used" P.V.C. Flexible Pipe, Arcylie Sheet, Agricutural Rigid P.V.C. Pipes, HDFC Pipes 1522446 06 C.I Soil Pipes, 08.01.2007 Cast Iron Pipes, User Detail M.S. Pipes, C.I. 01.04.2006 Pipe And Fittings, Galvanized Corrugated Steel Sheet, Galvanised Iron Pipes, Galvanised Plain Steel Sheet, Steel Strips, Steel Pipes And Tubes And Fitting And Parts Thereof, Mild Steel Pipes And Tubes Both Black And Galvanized And Parts And Fitting Thereof And Other Articles, Pipes Fittings (Galvanized Iron And Metal), Steel Tubular Poles, Steel Poles, Back And Galvanized Pipes Seamless Steel Pipes And Tubes.Signature Not Verified CS(COMM) 251/2023 Page 5 of 13 Digitally Signed By:KAMLA RAWAT Signing Date:10.05.2023 12:04:57
1522445 17 PPR Pipes, PEX 08.01.2007 Pipes, PVC User Detail Pipes & Fittings, 01.04.2006 PVC Flexible Pipes, Acrylic Sheet, Agricultural Rigid PVC Pipes, HOPE Pipes & Coils, PVC & UPVC Rigid Pipes 1532085 17 PPR Pipes, PEX 19.02.2007 Pipes, PVC User Detail Pipes & Fittings, ACL 01.04.2006 PVC Flexible Pipes, Acrylic Sheet, Agricultural Rigid PVC Pipes, Hope Pipes & Coils, PVC & UPVC Rigid Pipes 1522443 06 Steel Tubular 08.01.2007 JINDAL WORD Poles, Steel User Detail MARK Poles, Pole SOF 01.04.2006 Metal, For Electric Lines.
1522444 06 Cast Iron Pipes, 08.01.2007 JINDAL
WORD M.S. Pipes, COR
User Detail MARK Galvanized
01.04.2006 Corrugated Steel
Sheet,
Galvanised Iron
Pipes,
Galvanised
Plain Steel
Sheet, Steel
Strips, Etc.
1483834 17 P.V.C. Pipes 01.09.2006 JINDAL
WORD And Fittings,
User Detail - MARK P.V.C. Casing "Proposed to And Caping, be used" P.V.C. Flexible Pipe, Arcylic Sheet, Agricutural Rigid P.V.C. Pipes, HDFC Pipes Signature Not Verified CS(COMM) 251/2023 Page 6 of 13 Digitally Signed By:KAMLA RAWAT Signing Date:10.05.2023 12:04:57 1843432 35 Advertising, 24.07.2009 Business User Detail Administration 01.04.2006 And Business Management Activities.
Wholesale And
Retail Outlets
Including
Services
Relating To
Trading,
Distribution
And Marketing
Of PPR Pipes,
PEX Pipes. PVC
Pipes & Fittings.
PVC Flexible
Pipes, Acrylic
Sheet.
Agricultural
Rigid PVC
Pipes Etc.
1787420 17 PPR Pipes, PEX 19.02.2009
Pipes, PVC
User Detail Pipes & Fittings,
01.04.2006 PVC Flexible
Pipes, Acrylic
Sheet,
Agricultural
Rigid PVC
Pipes, HOPE
Pipes & Coils,
PVC & UPVC
Rigid Pipes
2697386 17 PPR Pipes, PEX 12.03.2014 JINDAL
Word Pipes, PVC
User Detail Mark Pipes & Fittings,
01.04.2006 PVC Flexible
Pipes, Acrylic
Sheet,
Agricultural
Rigid PVC
Pipes, HOPE
Pipes & Coils,
PVC & UPVC
Rigid Pipes
19. Thus, it is clear that the plaintiff holds registrations for the word Signature Not Verified CS(COMM) 251/2023 Page 7 of 13 Digitally Signed By:KAMLA RAWAT Signing Date:10.05.2023 12:04:57 mark "JINDAL", for steel tubular poles, cast iron pipes, galvanised iron pipes and PVC pipes from 8th January 2007, 12th March 2014 and 1st September 2006.
20. Additionally, the plaintiff is the holder of a registration for the device mark , in respect of galvanised iron pipes and tubes since 31st December 1981.
21. In order to vouchsafe the goodwill and reputation of the plaintiff, the plaint has placed on record the turnover of the plaintiff which, during the year 2021-22, is to the tune of ₹ 2373 crores.
22. The plaintiff is aggrieved by the use, by the defendant, of the mark "JINDAL" for PVC pipes. It is pointed out, in the plaint, that insofar as the mark "JINDAL" is concerned, Defendant 1 possesses a trademark registration, for the device mark in Class 20, covering "PVC water storage tanks and PVC cabinet" with effect from 24th February 1998 and for the marks in Class 20 for mirror cabinet and mirror frame made of plastic with effect from 21st June 1999 and for the device mark in Class 11 covering cistern and cistern parts, floated balls, seat covers and bath tubs all made of plastic with effect from 21st June 1999. The plaintiff has filed applications under Section 57 of the Trade Marks Act before the Registry of Trade Marks, seeking rectification of the said registrations. The applications are presently pending.
23. The plaintiff is aggrieved by the fact that, though the defendant Signature Not Verified CS(COMM) 251/2023 Page 8 of 13 Digitally Signed By:KAMLA RAWAT Signing Date:10.05.2023 12:04:57 has no registration for the mark "JINDAL" in respect of PVC pipes, and is the holder of a registration for the mark "J PLEX" for such pipes with effect from 18th May 2020, the defendant has now started using the mark "JINDAL" for PVC pipes. Pictures of the PVC pipes manufactured by the defendant which use the mark "JINDAL" are thus provided in para 26 of the plaint:
Sl. PVC pipes of defendant containing JINDAL mark No. 1. 2. 3.
24. The plaintiff asserts prior user in respect of the mark "JINDAL" for PVC pipes, vis-a-vis the defendant. The plaintiff also holds registration of the registration of the word mark "JINDAL" for PVC pipes with effect from 1st September 2006.
Signature Not Verified CS(COMM) 251/2023 Page 9 of 13 Digitally Signed By:KAMLA RAWAT Signing Date:10.05.2023 12:04:5725. Mr. Abhishek Grover, learned Counsel for the Defendant 1 is unable to support the use, by the defendant, of the mark "JINDAL" for PVC pipes. He merely asserts that Defendant 1 has the device mark "JINDAL" registered in its favour.
26. As has already been noted earlier in this order, the registration of the JINDAL device mark, held by Defendant 1, does not cover PVC pipes. The plaintiff, on the other hand, holds a registration of the word mark JINDAL for PVC pipes with effect from 1st September 2006.
27. The plaintiff also enjoys priority of user of the mark JINDAL for PVC pipes, as it is the unrebutted statement of the plaintiff that the Defendant 1 was, till recently, using its registered mark "J PLEX" for PVC pipes and has recently started inscribing on the body of the pipes, the mark JINDAL.
28. I may note here that, though Mr. Grover, learned Counsel for the defendants, repeatedly states that his client is using the JINDAL mark since long, he is unable to make a statement either that the Defendant 1 has been using the JINDAL mark for PVC pipes since long, or to clarify the time since when the defendant has been using the mark JINDAL on PVC pipes.
29. In that view of the matter, at this prima facie stage, there is no reason for the court not to believe the assertion in the plaint that the defendant was, till recently, using its registered mark J PLEX for PVC pipes and has only recently started using the mark JINDAL on such pipes.
Signature Not Verified CS(COMM) 251/2023 Page 10 of 13 Digitally Signed By:KAMLA RAWAT Signing Date:10.05.2023 12:04:5730. Mr. Lall also points out that, on the website of the defendant, even as on date, the recital to be found is that JINDAL is the mother brand of Defendant 1, catering to its entire range of sanitaryware and plumbing products whereas J PLEX is another of the defendant's sub- brands, catering to its pipes and fittings range of products.
31. Prima facie, therefore, the user, by the Defendant 1, of JINDAL for its PVC pipes and fittings is recent and, in any event, later in point of time both to the registration and the user of the said mark in favour of the plaintiff for identical PVC pipes.
32. Moreover, even applying the principle of balance of convenience at this ad interim stage, the court does not find that the defendant would be subjected to any serious prejudice if it is restrained from using JINDAL on its PVC pipes, as it is already using the mark J PLEX, which is registered in the defendant's favour for PVC pipes.
33. The Court does not see how Defendant 1, while it has already obtained registration for the mark J PLEX for pipes, has chosen to include, on the body of the PVC pipes, the mark JINDAL, which stands registered for the PVC pipes in favour of the plaintiff.
34. A prima facie case of infringement is, therefore, made out.
35. In the circumstances, let the plaint be registered as a suit.
36. Issue summons in the suit.
Signature Not Verified CS(COMM) 251/2023 Page 11 of 13 Digitally Signed By:KAMLA RAWAT Signing Date:10.05.2023 12:04:5737. Summons are accepted, on behalf of defendants, by Mr. Abhishek Grover.
38. Written statement, accompanied by affidavit of admission/denial of the documents filed by the plaintiff be filed within 30 days with advance copy to learned Counsel for the plaintiff who may file replication thereto, accompanied by affidavit of admission/denial of the documents filed by the defendant within 30 days thereof.
39. List before the learned Joint Registrar (Judicial) for completion of pleadings, admission/denial of the documents and marking of exhibits on 11th July 2023.
I.A. 8888/2023 (under Order XXXIX Rules 1 and 2 of CPC)
40. This is an application by the plaintiff under Order XXXIX Rules 1 and 2 of the CPC.
41. The facts of the case, as stated hereinabove, disclose a prima facie case of infringement, by the defendants, by use of the mark JINDAL in respect of PVC pipes, for which the plaintiff holds registration w.e.f. 2006, whereas the Defendant 1 has no registration in its favour of the mark "JINDAL" for PVC pipes.
42. In the circumstances, issue notice.
43. Notice is accepted, on behalf of defendants, by Mr. Abhishek Signature Not Verified CS(COMM) 251/2023 Page 12 of 13 Digitally Signed By:KAMLA RAWAT Signing Date:10.05.2023 12:04:57 Grover.
44. Reply, if any, be filed within four weeks with advance copy to learned Counsel for the plaintiff who may file rejoinder thereto, if any, within four weeks thereof.
45. List this application before the Court on 1st August 2023.
46. Till the next date of hearing, the defendants as well as all others acting on their behalf shall stand restrained from using the marks , , and or any other mark deceptively similar to the Plaintiff's trademark "JINDAL" in any manner whatsoever on PVC pipes or any goods allied thereto.
C. HARI SHANKAR, J.
MAY 9, 2023 dsn Signature Not Verified CS(COMM) 251/2023 Page 13 of 13 Digitally Signed By:KAMLA RAWAT Signing Date:10.05.2023 12:04:57