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2020 Supreme(Del) 645
IN THE HIGH COURT OF DELHI AT NEW DELHI
Rajiv Sahai Endlaw, J.
Shree Ganesh Rolling Mills (india) Ltd - Appellant
Versus
Jindal Rolling Mill Ltd - Respondent
Civil Suit (Comm) No. 360 of 2016
Decided On : 10-06-2020
Jayant Mehta, Advocate, Geetanjali Vishwanathan, Advocate, Kruttika Vijay, Advocate, Vansha S Suneja, Advocate, Kaveri Jain, Advocate, Tanmaya Mehta, Advocate, Arjun Narayan, Advocate, Raghav Wadhwa, Advocate
The central legal point established in the judgment is the need to protect consumers from confusion and deception caused by the use of identical marks for similar goods. The court emphasized the importance of prior registration and restrained the defendant from using the mark 'JINDAL' per se.
Headnote:
JINDAL - Trade Mark Infringement - Trade & Merchandise Marks Act, 1958, Trade Marks Act, 1999, Code of Civil Procedure, 1908 - The judgment discusses the applications for interim injunction and stay of proceedings in a suit for permanent injunction restraining passing off. The court considered the prior use and registration of the mark 'JINDAL' by the plaintiff, the defendant's adoption of the mark, and the need to protect consumers from confusion and deception. The court restrained the defendant from using the mark 'JINDAL' per se and stayed further proceedings in the suit.
Fact of the Case:
The plaintiff sought an interim injunction in a suit for permanent injunction restraining passing off, while the defendant sought a stay of proceedings due to a previously instituted suit in Hyderabad. The plaintiff claimed to be the successor-in-interest of a partnership firm and the registered proprietor of the mark 'JINDAL' for various goods. The defendant was accused of adopting the mark 'JINDAL' for its goods, leading to the present dispute.
Finding of the Court:
The court found that both parties were using the same mark 'JINDAL' for similar goods, leading to potential confusion for consumers. It noted the plaintiff's prior registration of the mark and restrained the defendant from using the mark 'JINDAL' per se. The court also stayed further proceedings in the suit, awaiting the outcome of the suit instituted by the defendant against the plaintiff in Hyderabad.
Issues: The issues revolved around the prior use and registration of the mark 'JINDAL', the defendant's adoption of the mark, and the potential confusion and deception of consumers. The court also considered the application for interim relief and the defendant's request for a stay of proceedings.
Ratio Decidendi: The court's decision was influenced by the need to protect consumers from confusion and deception. It considered the plaintiff's prior registration of the mark and restrained the defendant from using the mark 'JINDAL' per se. The court also stayed further proceedings in the suit, awaiting the outcome of the suit instituted by the defendant against the plaintiff in Hyderabad.
Final Decision: The court restrained the defendant from using the mark 'JINDAL' per se and stayed further proceedings in the suit, with liberty for the parties to apply as needed.
JUDGMENT
Rajiv Sahai Endlaw, J. - IA No.4680/2016 (of the plaintiff under Order 39 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 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 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 AugustSeptember, 2015, the plaintiff learnt that the defendan
