Delhi District Court
By This Order vs M/S Trokoot Iron & Steel Casting Ltd. & ... on 30 November, 2016
IN THE COURT OF SH. MUKESH KUMAR, ADJ02 & WAQF TRIBUNAL, NEW
DELHI DISTRICT, PATIALA HOUSE COURTS, NEW DELHI.
Trade Mark No. 13826/2016
M/s Jindal Rolling Mills Limited
Vs.
Trikoot Iron & Steel Casting Limited & Ors.
Order
1. By this order, I shall dispose the application under Order 39 Rule 1 and 2
CPC moved by the plaintiff and under Order 39 Rule 4 CPC r/w Section 151
CPC moved by the defendant no. 3 for vacation of the interim order dated
01.09.2016 passed by this Court.
2. I have heard the arguments of counsels for the parties and have gone
through the record carefully.
3. Brief facts of the case are that plaintiff is engaged in the business of
manufacturing and marketing of joists, angles, channels, flats and TMT Steel
Bars and allied and cognate products and Sh. Ayush Jaindal is authorized to
institute this suit. It is further submitted that plaintiff has been using the
mark/label 'JINDAL' for around 44 years in relation to said goods and business.
The plaintiff's said trademark JINDAL are duly registered in India under the
Trade Mark Act, 1999. It is further stated that plaintiff is the owner and
proprietor of the copyright involved in the said trademark/label and has been
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using the said trademark in artistic manner also. It is further stated that the
plaintiff has earned a good reputation by its high standards of quality, safety,
innovation and reliability and product manufactured by the plaintiff are well
known in trade and business. It is further submitted that plaintiff has widely
advertized the abovesaid trademark/Label through different modes and also
through Email ID and Domain Name viz. www.jindaltmt.in.,
www.jindalrollingmills.com. and has already spent a substantial sum of money
on the publicity of the said trademark/label.
4. It is further stated that the defendant is engaged in the same business as that
of the plaintiff i.e. manufacturing and marketing the steel and iron products and
related products. It is further stated that the defendant has adopted and started
using the trademark/label JINDAL in relation to their impugned goods and
business without the consent and approval of the plaintiff. It is further stated that
the goods of the defendant are confusingly and deceptively similar in artistic
features as well as outlook as of the plaintiff and all the ingredients of the
products of the plaintiff has been infringed by the defendant. It is further stated
that the adoption and use of impugned trademark of the plaintiff is just to
deceive the market and trade at the cost of the plaintiff.
5. It is further stated that the plaintiff is suffering huge losses in respect of
business and reputation on account of such malafide and deceptive adoption of
the plaintiff's words /marks/ labels. The plaintiffs have no access to the
defendant's accounts, due to which defendant is liable to render his accounts to
the plaintiffs, in order to ascertain the profit earned by him at the cost of the
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plaintiff.
6. Therefore plaintiff filed the present suit under Section 134 and 135 Trade
Marks Act, 1999 and Copy Right for permanent injunction restraining passing
off, infringement, rendition of accounts and delivery up.
7. After service of summons to the defendants, defendant no. 3 has filed an
application under Order 39 Rule 4 CPC for vacating the interim order passed, in
favour of the plaintiff by this Court and in the application, it is submitted that the
plaintiff has made three entities as parties to the suit and defendant no. 3 by the
name of Tehri Iron and Steel Casting Limited was earlier known as Trikoot Iron
and Steel Casting Limited and there is no such company by the name of Trikoot
Industries (P) Ltd. being defendant no. 2. It is further submitted that this fact is
well within the knowledge of the plaintiff and particularly Sh. Ayush Jindal who
has signed the plaint and other papers in the present suit. It is further
submitted that defendant is the permitted user of registered trade marks Jindal
of Shree Ganesh Rolling Milla (India) Limited (hereinafter referred as 'SGRM')
which is the owner of the prior registered and prior user trade marks Jindal. It is
further submitted that SGRM had entered into a license agreement with M/s
Hanumant Commodeal (P) Ltd., 111, Urban Estate II, Hissar, Haryana who is
trader for the manufacture and marketing of iron and steel products under the
trade mark Jindal of SGRM. It is further submitted that defendant has got the
permission from Hanumant Commodeal (P) Limited and from SGRM, to use the
trade mark Jindal of which SGRM is the owner. It is further submitted that the
said Hanumant Commodeal (P) Ltd. is valid subsisting and in force and the said
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permission by SGRM and Hanumant Commodeal (P) Limited in favour of
defendant is also valid and subsisting and Hanumant Coomdeal (P) Ltd. have
entered into the agreement for the manufacture of the goods by defendant for
and on behalf of Hanumant Commodeal (P) Limited. It is further submitted that
M/s Hanumant Commodeal (P) Ltd and the defendant are the permitted users of
the registered trade mark Jindal of SGRM and as per Section 29 of the Trade
Marks Act, any use of the trade mark by the defendant does not amount to
infringement.
8. It is further submitted that SGRM is a limited company incorporated in the
year 1990 under the Indian Companies Act having its office at 17, Maruti
Complex, Industrial Area, Delhi Road, Hisar, Haryana. It is further submitted
that SGRM has been engaged in the business of manufacturing and selling iron
and steel rerolling products, angles, girders, channels, steel bars, rounds etc
and SGRM either through itself and its predecessor in interest or its licensees
has since the year 1974 regularly and continuously been using the trade mark
Jindal with relation to the products which are sold across the country. It is
further submitted that SGRM is also the prior adopter, prior user and prior
registered proprietor of the trade mark Jindal. It is further submitted that
SGRM traces its origin to a partnership firm established in the year 1972 which
was engaged in the business of manufacturing and selling iron and steel re
rolling products, girders, channels, bars etc under the name and style of M/s
Shree Ganesh Rolling Mills and the said partnership firm had obtained Sales
Tax license No. HIS/IV/12712 on 01.08.1972 and had its own factory premises,
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plant and machinery etc situated at Hisar, Haryana. It is further submitted that
SGRM's predecessor in interest adopted the trade mark Jindal sometime in the
year 1974 for the goods and the mark Jindal was adopted as the firm was a part
of the O.P. Jindal Group and members of the Jindal family were partners in the
said erstwhile partnership firm. It is further submitted that in order to protect its
trade mark, the SGRM took recourse to statutory protection and in the year
1984 filed a trademark application bearing no. 375928 in Class 6 for the mark
Jindal and the said application was duly granted by the Registrar of Trade Marks
after due scruitny and examination for the description of goods as 'girders
included in class 6 for sale in the states of Haryana, Rajasthan and Uttar
Pradesh'. It is further submitted that over the years due to various efforts
expended by SGRM its product under the trade mark Jindal garnered
impressive sales. It is further submitted that in or about 2001/2002 due to a
slump in the iron and steel market and collective decision of the management of
SGRM, SGRm closed down its manufacturing plant located at Hisar, SGRM,
however, continued its trade and business of selling iron and steel rerolling
products, girders, angles, channels and bars under the trade mark Jindal
through its licenses who are reputed manufactures by the SGRM's licensees.
9. It is further submitted that SGRM is the proprietor of the trade mark Jindal in
Class 6 and the registrations of SGRM are valid and subsisting having been
duly renewed in compliance with statutory requirements. It is further submitted
that SGRM through itself and/or its licensees has been using the mark Jindal
extensively and continuously throughout the country since the past 42 years and
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the the public and the trade demand, recognize and purchase the said goods
sold under the SGRM's trade mark Jindal due to their high and excellent quality.
10. It is further submitted that plaintiff is a habitual offender who infringing and
illegal activities are not new and in the year 1996 on account of the plaintiff's
illegal infringing activities SGRM had filed a civil suit being CS (OS) No. 979 of
1996 titled as Shree Ganesh rolling Mills (India) Ltd Vs. Jindal Rolling Mill Ltd in
the Hon'ble High Court of Delhi seeking permanent injunction restraining the
plaintiff herein from infringing the SGRM's trade mark Jindal with respect to
steel Girders and passing off its goods as that of SGRM. It is further submitted
that the said suit was later on dismissed for non prosecution as there was slump
in the business of not only SGRM but also the plaintiff and the other players. It
is further submitted that during the pendency of the aforementioned suit, the
plaintiff as a counter blast had also filed rectification petition before the Hon'ble
Delhi High Court which was later transferred to the Hon'ble Intellectual Property
Appellate Board under No. TRA/104/2004 seeking cancellation of the SGRM's
trade mark Jindal bearing registration no. 375928 on various grounds. The
Hon'ble Intellectual Property Appellate Board vide its order dated 01.10.2004
dismissed the plaintiff's rectification petition stating that the plaintiff had
miserably failed to establish a case of rectification and had merely made vague
averments which were insufficient to consider the plaintiff's claims. It is further
submitted that the plaintiff never appealed against the said order which is now
final inter se the parties and the plaintiff can not agitate the same again. It is
further submitted that the registered trade mark Jindal in favour of SGRM was
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held to be validly granted in favour of SGRM and vide said order/judgment of
the Ld. IPAB SGRM has an indisputable, irrefutable and unfettered right in the
trade mark Jindal. It is further submitted that SGRM is holding intellectual
property rights including the registered trade mark Jindal and its goodwill and
reputation attached to it which it has been renewing from time to time and has
been using the same through its licenses by licensing the same to various
reputed manufacturers and dealers on royalty basis including the defendant.
11. It is further submitted that the plaintiff has filed a suit against SGRM in the
District Court at Hyderabad which is pending adjudication and the plaintiff could
not obtain an exparte injunction against SGRM as SGRM is the prior user and
prior registered property of the trade marks Jindal. It is further submitted that
since the plaintiff could not obtain an exparte injunction, the plaintiff filed a Civil
Revision Petition in the Hyderabad High Court and the said CRP is still pending
adjudication. It is further submitted that in both the aforesaid proceedings, the
Court has not granted any interim stay to any of the parties.
12. It is further submitted that SGRM has also filed a suit against the plaintiff in
the Hon'ble Delhi High Court against the respondent being CS (Comm) No.
316/2016 which is pending. It is further submitted that SGRM had also filed a transfer petition in the Hon'ble Supreme Court of India being transfer petition No. 832 of 2016 titled as Shree Ganesh Rolling Mills (India) Ltd. Vs. Jindal Rolling Mills Ltd. seeking transfer of the suit filed in the Hyderabad District Court to the Delhi High Court, however the same was dismissed on 29.06.2016 and the said fact has also been completely concealed by the plaintiff. It is further Trade Mark No. 13826/2016 Jindal Rolling Mills Ltd. Vs. M/s Trokoot Iron & Steel Casting Ltd. & Ar. Page no. 7 /21 submitted that plaintiff has concealed the very material particular from this Court that the plaintiff had filed the application for the registration of the mark Jindal Rolling Mills in Class 6 under No. 2007897 dated 10.08.2010 which has been advertised in the Trade Marks Journal No. 1727 at page 440 and the Ld. Registrar had put the condition of disclaimer of the word Jindal in the said application. It is further submitted that the plaintiff has chosen to give the details of the other application for registration but has deliberately withheld this application for ulterior motives, thus it clearly shows that the trade marks office has not granted any exclusive right on the word Jindal to the plaintiff. It is further submitted that the plaintiff is also guilty of concealment of the facts that there are cancellation petitions pending against its registered trade marks which have been relied upon by the plaintiff in the present suit.
13. It is further submitted that the defendant is protected under the provisions of Section 28(3) r/w Section 30(2) (e) of Trade Marks Act being the permitted user of the trademark Jindal from its original owner and the defendant being a permitted user of the registered trade mark Jindal does not amount to infringement as per Section 29 of the Trade Mark Act. It is further submitted that this Court has no territorial jurisdiction to entertain and try the present suit and no cause of action has arisen within the jurisdiction of this Court.
14. Reply to the application under Order 39 Rule 4 CPC also filed by the plaintiff and prayed for dismissal of the application.
15. I have heard counsels for parties and have carefully gone through the record. Ld. counsels for the parties have also relied upon certain judgments in Trade Mark No. 13826/2016 Jindal Rolling Mills Ltd. Vs. M/s Trokoot Iron & Steel Casting Ltd. & Ar. Page no. 8 /21 support of their case.
16. In support of his arguments Ld. Counsel for plaintiff has relied upon the judgment tiled as :
1) American Home Products Corporation Vs. Mac Laboratories Pvt. Ltd. & Anr. passed in Civil Appeal No. 2159 of 1970 decided on 30.09.1985 on the issue of registered user.
2) Judgment titled as Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceuticals Laboratories cited as PTC(Suppl) (2) 680 (SC) on the issue of distinctive mark and long user of trademark.
3) Judgment titled as Midas Hygience Industries P. Ltd. Vs. Sudhir Bhatia & Ors. cited as 2004 (2*) PTC 121 (SC) on the issue of infringement and passing off action against the defendant.
4) Judgment titled as Century Traders Vs. Roshan Lal Duggar Co. decided in appeal no. 46 of 1976 decided on 27.04.1977 on the issue of passing off action.
5) Judgment titled as Gujrat Bottling Co. Vs. Coca Cola Co. cited as 1996 PTC (16) on the issue of registration of license to use trademark and on the issue of novation of contract.
6) Judgment tiled as M/s Seemax Construction (P) Ltd. Vs. State bank of India & Anr. in I.A No. 8096/91 decided on 12.12.1991 on the issue of suppression of material facts.
7) Judgment tiled as S.P. Chengalvaraya Naidu (dead) by L.Rs. Vs. Jagannath (dead) by L.Rs. and others cited as AIR 1994 SC 853 on the issue of concealment of material facts.
8) Judgment tiled as M/s RSPL Limited Vs. Mukesh Sharma & Anr. delivered on 03.08.2016 by the Hon'ble DB on the issue of territorial jurisdiction.
9) Judgment tiled as Gandhi Scientific Company Vs. Mr. Gulshan Kumar cited as 2009 (40) PTC 22 (Del) on the issue of prior user.
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17. On the other hand, Ld. Counsel for defendant has also relied upon certain judgments as under :
1) Thukral Mechanical Works Vs. Nitin Machine Tools (P) Ltd.
cited as 1998 PTC (18) 767, on the issue of non disclosure of previous litigation in respect of the same trade.
2) N.R Dongre Vs. Whirlpool Corp. cited as 1996 PTC (16) 476 on the issue of suit not maintainable against the registered proprietor.
3) Satyadeva Bokaro & Anr. Vs. Sachdeva College passed in PAO (OS) No. 116/2016, on the issue of territorial jurisdiction.
4) S. Sayed Mohideen Vs. P. Sulochana Bai cited as 2015 (4) R.A.J 488 (SC) on the issue of registered user.
5) Abbobacker Vs. Prabhakaran Cited as ILR 1977 (2)
Kerala 623 on the issue of registered user.
6) S.P. Chengalvaraya Vs. Jarannath cited as 1994 RLR
(SC) 102 on the issue of concealment of material facts.
7) Micolube India Ltd. Vs. Maggon Auto Centre & Anr.
cited as 2008 (36) PTC 213 (Del.) on the issue of concealment of material facts.
8) Satish Khosla Vs. Elil Lily Ranbaxy Ltd & Anr cited as 71 (1998) DLT 1 (DB) on the issue of concealment of material facts.
9) Century Traders Vs. Rohsan Lal Duggar & Co. & Ors. cited as AIR 1978 Delhi 250 on the issue of prior user. 10) Dabur India Ltd Vs. K.R Industries cited as 2006 (33)
PTC 107 (Del.) on the issue of territorial jurisdiction.
11) Dabur India Ltd Vs. K.R Industries cited as 2006 (33) PTC 348 (Del.) (DB) on the issue of territorial jurisdiction.
12) Dabur India Ltd Vs. K.R Industries cited as 2008 (37) PTC 332 (SC) on the issue of territorial jurisdiction.
13) BL & Co. Vs. Pfizer Products Ltd cited as 2001 PTC 797 (Del.) (DB) on the issue of delay in obtaining exparte injunction.
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18. In his arguments, it is submitted by counsel for plaintiff that defendant has changed its company from M/s Trikoot Iron & Steel Casting Limited to M/s Tehri Iron & Steel Casting Ltd. on 15.06.2016 and the license so granted in favour of M/s Trikkot Iron & Steel Casting Limited was already expired on 31.08.2016. It is further submitted that there is no document showing the business or billing transaction between the SGRM and Tehri Iron & Steel Casting Limited and even no such bill regarding placing of orders has been shown. It is further submitted by counsel for plaintiff that as per Section 49 of Trade Mark Act license is also required to be registered but there is no such document showing the registration of licensee on the part of the defendant. It is further submitted that defendant no. 1 is not in the manufacturing business though he is continuing in the trade while getting the goods manufactured through other manufacturers. It is further submitted by counsel for plaintiff that when M/s Trikoot Iron and Steel Casting Limited converted into M/s Tehri Iron & Steel Casting Limited, then why the copy of reply has been sent to M/s Trikoot Iron & Steel Casting Limited i.e reply dated 02.08.2016. It is further submitted by counsel for plaintiff that agreement so entered between the defendant no. 1 and M/s Tehri Iron & Steel Casting Limited was expired on 31.08.2016 but the same has been forged and fabricated and date has been extended to 2018 which is forged document.
19. On the other hand, it is submitted by counsel for defendant that defendant no. 1 is also a registered company and there is no dispute regarding the registration of the defendant no. 1. It is further submitted that earlier also a suit was filed by defendant before the Court at Hyderabad which is still pending and Trade Mark No. 13826/2016 Jindal Rolling Mills Ltd. Vs. M/s Trokoot Iron & Steel Casting Ltd. & Ar. Page no. 11 /21 suit is also pending before the Hon'ble High Court of Delhi but there is no disclosure regarding the previous litigation between the parties. It is further submitted that defendant has already filed a caveat before the Court at Muzaffar Nagar but instead off filing the present suit at Muzaffar Nagar, Uttar Pradesh, plaintiff has deliberately filed the present suit in Delhi and this Court has no territorial jurisdiction to entertain the present suit. It is further submitted by counsel for defendant that as per Section 29 of Trade Mark Act, no infringement action shall lie against the registered user and a person who is also having trademark registered in his name even of the same trade. It is further submitted by counsel for defendant that defendant no. 2 and 3 are the permissive user of SGRM, who is the user since 1976 and it was got registered in 1981 and it was again registered in 1994. It is further submitted that even the cancellation petition has been filed by the plaintiff against the defendant which was dismissed by the competent authorities in 2004 and no appeal has been filed by the plaintiff against the IPAB order.
It is further submitted by counsel for defendant that there is no such company with the name of defendant no. 1 i.e M/s Trikoot Industries Pvt. Ltd. and M/s Trikoot Iron and Steel Casting Ltd. and M/s Tehri Iron & Steel Casting Ltd. are the one and the same and earlier the business was conducted by M/s Trikoot Iron and Steel Casting Ltd. and later on it was run by M/s Tehri Iron & Steel Casting Ltd. It is further submitted by counsel for defendant that notice also given in this regard vide notice dated 23.07.2016 and notice of the plaintiff has been duly replied by the defendant vide reply dated 02.08.2016 wherein it Trade Mark No. 13826/2016 Jindal Rolling Mills Ltd. Vs. M/s Trokoot Iron & Steel Casting Ltd. & Ar. Page no. 12 /21 was clearly mentioned that the company has been authorised by Shree Ganesh Rolling Mills (India) Ltd who is prior user of the trademark Jindal under the registration no. 375928 in class 6 and registration no. 636128 in class 6 and they have authorised M/s Trikoot Iron & Steel Casting Ltd which later on changed its name and known as M/s Tehri Iron & Steel Casting Ltd. to manufacture the goods under their trademark Jindal vide authorisation letter dated 18.07.2016.
20. From the document, it is clear that plaintiff has been duly informed by M/s Shree Ganesh Rolling Mills (India) Ltd regarding authorisation of defendant no. 3 to manufacture the product under the license agreement of M/s Shree Ganesh Rolling Mills (India) Ltd. It is further submitted by counsel for defendant that plaintiff has concealed the material facts of pendency of litigation between SGRM and plaintiff as Trikoot Iron & Steel Casting Ltd is the permitted user and licensee of SGRM, therefore it is the duty of the plaintiff to disclose the previous litigation between SGRM and plaintiff company regarding trademark Jindal. Defendant has also filed on record certain documents i.e certified copy of caveat filed before the Court at Muzafar Nagar Court and the documents showing registration certificate of SGRM and IT return for the Assessment Year 201516 and 201617. Counsel for plaintiff has also filed certified copy of the plaint and document showing the pendency of the previous litigation at Hyderabad Court.
21. It is further submitted by counsel for plaintiff that defendant has filed on record manipulated documents i.e sale invoices of the Yoga Trading Company.
Trade Mark No. 13826/2016 Jindal Rolling Mills Ltd. Vs. M/s Trokoot Iron & Steel Casting Ltd. & Ar. Page no. 13 /21 Counsel for plaintiff has also furnished the affidavit filed by some of the traders namely Yoga Trading Company and M/s Durga Traders etc. Some of the invoices has been compared with the invoices filed on record by the defendant. Though, there is no difference in the invoices on quantity, rate and amount, while description of the product is mismatching with the documents filed by defendant and plaintiff on record.
22. Photocopy of the license is also filed on record. Originally the license was entered between SGRM and Hanumant Commodeal Pvt. Ltd on 16.10.2015 and license has been granted to the Hanumant Commodeal Pvt. Ltd. for three years i.e till 31.10.2018 to manufacture the goods within the territory of State of Haryana and Rajasthan and in the license agreement liberty was given to the licensee to get the goods manufactured from any manufacturing unit duly authorised by the licensor and the licensor shall duly authorise the said manufacturing unit in writing in pursuance to the present agreement. It is agreed in the license agreement that the licensee shall be at liberty to change the manufacturing unit who shall then procure a fresh authorisation from the licensor. It is submitted by counsel for plaintiff that the authorisation letter dated 18.07.2016 is a tempered document and it was valid till 31.08.2016 and in the documents the year is fabricated and same has been written as 2018 instead of 2016. It is further submitted that the agreement so entered into a letter so filed on record can not be looked into and defendant has fabricated the documents and interim order shall not be vacated and application of the defendant under order 39 Rule 4 CPC is liable to be dismissed on this ground alone.
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23. The agreement dated 18.07.2016 is also filed on record which authorised M/s Tehri Iron & Steel Casting Ltd. to get the products manufactured i.e trade mark Jindal and in the agreement dated 18.07.2016, the Tehri Iron and Steel Casting Ltd i.e defendant no. 3 has been authorised to manufacture the products under the trade mark Jindal which is registered in Class 6 for the period of two years which may be extended further by the consent of the parties, which can not be believed to be forged document as it has been entered into between the parties on 18.07.2016 much prior to the filing of the present suit. The arguments of Ld. Counsel for plaintiff regarding the authorisation letter is also can not be believed and it can not be considered as forged document as the same has been entered into after the license agreement dated 16.10.2015 which authorises the Hanumant Commodeal Pvt. Ltd. to get manufactured the product for three years from 01.11.2015 to 31.11.2018, therefore this ground of the plaintiff has no force and can not be considered.
24. It is also can not be believed that a document which is issued on 18.07.2016 will be valid only till 31.08.2016 for a period of one and half month. It appears to be a typographical error as the authorisation letter has been entered into in relation to the license agreement dated 16.10.2015 which was for three years.
25. The arguments of counsel for defendant on the issue of territorial jurisdiction is also having no force on the ground that it is averred by the defendant himself that a civil suit was also filed before the Hon'ble Delhi High Court between the parties. Moreover the issue of territorial jurisdiction is concerned, the judgment so cited by counsel for plaintiff i.e M/s RSPL Limited Vs. Mukesh Sharma & Anr.
Trade Mark No. 13826/2016 Jindal Rolling Mills Ltd. Vs. M/s Trokoot Iron & Steel Casting Ltd. & Ar. Page no. 15 /21 is well applicable to the facts of the present case and this Court is having territorial jurisdiction wherein the Hon'ble High Court pleased to held as under :
20. The distinction between material facts' and particulars' was, once again, drawn by the Supreme Court in Harkirat Singh v. Amrinder Singh: (2005) 13 SCC 511 in the following manner:
48. The expression material facts has neither been defined in the Act nor in the Code. According to the dictionary meaning, material means fundamental, vital, basic, cardinal, central, crucial, decisive, essential, pivotal, indispensable, elementary or primary. [Burton's Legal Thesaurus (3rd Edn.), p. 349.] The phrase material facts, therefore, may be said to be those facts upon which a party relies for its claim or defence. In other words, material facts are facts upon which the plaintiff's cause of action or the defendant's defence depends. What particulars could be said to be material facts would depend upon the facts of each case and no rule of universal application can be laid down. It is, however, absolutely essential that all basic and primary facts which must be proved at the trial by the party to establish the existence of a cause of action or defence are material facts and must be stated in the pleading by the party.
xxxx xxxx xxxx xxxx
51. A distinction between material facts and particulars, however, must not be overlooked. Material facts are primary or basic facts which must be pleaded by the plaintiff or by the defendant in support of the case set up by him either to prove his cause of action or defence. Particulars, on the other hand, are details in support of material facts pleaded by the party. They amplify, refine and embellish material facts by giving distinctive touch to the basic contours of a picture already drawn so as to make it full, more clear and more informative. Particulars thus ensure conduct of fair trial and would not take the opposite party by surprise.
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52. All material facts must be pleaded by the party in support of the case set up by him. Since the object and purpose is to enable the opposite party to know the case he has to meet with, in the absence of pleading, a party cannot be allowed to lead evidence. Failure to state even a single material fact, hence, will entail dismissal of the suit or petition. Particulars, on the other hand, are the details of the case which is in the nature of evidence a party would be leading at the time of trial. (underlining added)
21. It is important to note the observations of the Hon'ble Supreme Court to the effect that what particulars' could be regarded to be material facts' would depend upon the facts of each case and no rule of universal application can be laid down. It was, however, pointed out that it is essential that all basic and primary facts which must be proved at the trial by the party to establish the existence of a cause of action or defence are material facts' and must be stated in the pleading by the party.
22. As regards the meaning of the expression cause of action', the Supreme Court in Om Prakash Srivastava v. Union of India:
(2006) 6 SCC 207 observed as under:
9. By cause of action it is meant every fact, which, if traversed, it would be necessary for the plaintiff to prove in order to support his right to a judgment of the Court. In other words, a bundle of facts, which it is necessary for the plaintiff to prove in order to succeed in the suit. (See Bloom Dekor Ltd. v. Subhash Himatlal Desai [(1994) 6 SCC 322] ).
xxxx xxxx xxxx xxxx
12. The expression cause of action has acquired a judicially settled meaning. In the restricted sense cause of action means the circumstances forming the infraction of the right or the Trade Mark No. 13826/2016 Jindal Rolling Mills Ltd. Vs. M/s Trokoot Iron & Steel Casting Ltd. & Ar. Page no. 17 /21 immediate occasion for the reaction. In the wider sense, it means the necessary conditions for the maintenance of the suit, including not only the infraction of the right, but also the infraction coupled with the right itself. Compendiously, as noted above, the expression means every fact, which it would be necessary for the plaintiff to prove, if traversed, in order to support his right to the judgment of the court. Every fact, which is necessary to be proved, as distinguished from every piece of evidence, which is necessary to prove each fact, comprises in cause of action. (See Rajasthan High Court Advocates' Assn. v. Union of India[(2001) 2 SCC 294]). (underlining added) The Supreme Court in the said decision clearly held that every fact, which is necessary to be proved, as distinguished from every piece of evidence, which is necessary to prove each fact, is comprised in the 'cause of action'.
24. Coming back to the facts of the present case, the plaintiff/ appellant in paragraph 36 set out the nature of the cause of action, namely, the defendants/respondents were engaged in providing services under the impugned trade name GHARI TRADEMARK COMPANY'. In paragraph 37 of the plaint, it has been averred, first of all, that this Court has the territorial jurisdiction to try and adjudicate the present suit. But, this by itself, would not be sufficient because merely quoting the words of a section or the ingredients of a provision like the chanting of a mantra would not amount to stating material facts as noted by the Supreme Court in Hari Shanker Jain (supra). The material facts would, inter alia, have to include positive statement of facts. In the present case, paragraph 37 of the plaint contains the positive statement of fact that the defendants are committing the impugned acts within the jurisdiction of this Court by conducting, soliciting, rendering the impugned services under the impugned trade name'. Further statements are made in the very same paragraph that the plaintiff has its corporate office in Delhi and carries out its business activity in Trade Mark No. 13826/2016 Jindal Rolling Mills Ltd. Vs. M/s Trokoot Iron & Steel Casting Ltd. & Ar. Page no. 18 /21 Delhi under its trade mark/label through its dealers/ distributors located in Delhi. A specific averment has also been made that the plaintiff's goodwill and reputation is being tarnished by the alleged activities of the defendants, particularly in NorthEast Delhi as also in other parts of the country and that the plaintiff/appellant's proprietary rights are being prejudicially affected in the Delhi area due to the said activities. While considering an application under Order 7 Rule 10 CPC, these statements would have to be taken as correct. This would mean that this Court would have jurisdiction to try and adjudicate the present suit by virtue of Section 134(2) of the Trade Marks Act, 1999 read with Section 20 CPC. The material fact that has been pleaded by the plaintiff is that the defendants/ respondents are conducting, soliciting, rendering the impugned services under the trade name GHARI TRADEMARK COMPANY within the jurisdiction of this Court. In case the defendants/ respondents deny this averment (as they have done in their written statement but, which cannot be looked into at the stage of Order 7 Rule 10 CPC), the issue would arise as to whether the respondents/defendants are conducting, soliciting, rendering the impugned services under the trade nameGHARI TRADEMARK COMPANYwithin the jurisdiction of this Court? Obviously, the onus of proof would lie on the appellant/ plaintiff and at the stage of trial, evidence would have to be placed to substantiate this plea. But, at this stage, in our view, it is not necessary as Lord Denman, C.J. in Williams v. Wilcox (supra), to set out the subordinate facts which are the means of proving the material fact or the evidence to sustain the allegation contained in the material fact. We, therefore, do not agree with the view taken by the learned Single Judge that the plaint is bereft of any particulars with regard to territorial jurisdiction. We may observe that the learned Single Judge has also looked at the written statement and even at the replication in the course of arriving at his decision. This, in the context of an Order 7 Rule 10 CPC application, cannot be done as Trade Mark No. 13826/2016 Jindal Rolling Mills Ltd. Vs. M/s Trokoot Iron & Steel Casting Ltd. & Ar. Page no. 19 /21 already pointed out by us above. Taking the objection of territorial jurisdiction raised in the Order 7 Rule 10 CPC application, by way of a demurrer, as it must, the facts pleaded by the appellant/plaintiff must be taken to be true. Therefore, if we take the statement of the appellant/plaintiff in paragraph 37 to the effect that the defendants/respondents are committing the impugned acts within the jurisdiction of this Court by conducting, soliciting, rendering the impugned services under the impugned trade name to be correct, then, it follows that this Court would have to proceed with the trial of the suit and cannot return the plaint under Order 7 Rule 10 CPC.
26. Therefore, it is hold that this Court is having territorial jurisdiction to entertain the present suit. Other judgments so, filed by the plaintiff are of no help to the case of plaintiff.
27. In totality, it is clear from the record that there is litigation between the plaintiff and the original registered owner M/s Shree Ganesh Rolling Mills (India) Ltd. who has authorised Hanumant Commodeal Pvt. Ltd. to get the products manufactured from independent manufacturer and there was previous history of litigation between the plaintiff and M/s Shree Ganesh Rolling Mills (India) Ltd. who is having the trade mark Jindal registered in its name much prior to the user of plaintiff but the history of previous litigation has not been disclosed by the plaintiff that the defendant is permitted user of the registered holder of the trade mark Jindal I.e M/s Shree Ganesh Rolling Mills (India) Ltd. and as per Section 28 (3) of the Trade Mark Act no infringement action is maintainable against the licensee or the permitted user.
28. In these circumstances, I am of the considered opinion that the plaintiff is Trade Mark No. 13826/2016 Jindal Rolling Mills Ltd. Vs. M/s Trokoot Iron & Steel Casting Ltd. & Ar. Page no. 20 /21 not entitled for any injunction against the permitted user and there is concealment on the part of the plaintiff who has not disclosed the previous litigation against Shree Ganesh Rolling Mills (India) Ltd. and plaintiff company. Even there is no such passing reference of previous history of litigation and only the reference of caveat has been given by the plaintiff in his pleadings. In my considered opinion all the three ingredients which are necessary for grant of interim injunction are not satisfied. Accordingly the application under Order 39 Rule 1 and 2 CPC is dismissed and application under Order 39 Rule 4 CPC is allowed and interim injunction stands vacated. The articles seized and sealed at the time of execution of Commission shall be desealed and same shall be deemed to be released to the defendant from the date of order.
29. However, nothing stated herein above shall tantamount to be expression of any opinion on the merits of the case.
Dated : November 30.11.2016 (Mukesh Kumar)
Announced in the open Court. ADJ02 & Waqf Tribunal /NDD
Patiala House Courts, Delhi.
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