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2024 Supreme(Online)(DEL) 10356
HIGH COURT OF DELHI
JINDAL INDUSTRIES PRIVATE LIMITED – Appellant
Versus
SUNCITY SHEETS PRIVATE LIMITED AND ANR. – Respondent
CS(COMM)-679/2023
The use of a common surname in a composite mark does not constitute trademark infringement if the mark is distinct and used in good faith.
Headnote:(A) Trade Marks Act, 1999 - Sections 18, 29(2)(b), and 35 - Interim injunction sought against use of mark by defendants - Court finds no likelihood of confusion as the defendants' mark is sufficiently distinct - Section 35 protects bona fide use of one’s name - Plaintiff's claim of infringement dismissed. (Paras 10, 42, 47)
(B) Infringement of registered trademarks - To establish infringement, the plaintiff must demonstrate identity or similarity between the marks - The mere presence of a common surname within a composite mark does not create an infringement when used bona fide. (Paras 28, 42)
(C) Passing off - The essence of passing off requires that the defendant's mark is so similar that consumers are misled about the source of goods - The court highlights the need for distinctive features in the competing marks to avoid deception. (Paras 44, 47)
| Table of Content |
|---|
| 1. plaintiff's claim for injunction based on registered trademarks. (Para 2 , 3) |
| 2. plaintiff argues infringement of trademarks. (Para 4 , 5) |
| 3. defendant counters with common surname argument. (Para 6) |
| 4. section 35 provides defenses against trademark infringement. (Para 10 , 11 , 12) |
| 5. distinct marks avoid confusion & passing off. (Para 42 , 44) |
| 6. plaintiff’s request for injunction denied. (Para 47 , 48) |
JUDGMENT
% 07.03.2024 IA18962/2023 [under Order XXXIX Rules 1 and 2 CPC]
1. “What’s in a name?” queried Juliet, of her Romeo, [$~]. Much indeed, as this litigation would disclose.
2. This judgment decides IA18962/2023, preferred by the plaintiff Jindal Industries Pvt. Ltd. The plaintiff seeks an order of interim injunction, pending disposal of CS (Comm) 679/2023, restraining the
3. Defendant 1 is Suncity Sheets Pvt. Ltd. (“SSPL”) and Defendant 2 is Rachna Jindal, the wife of Nitin Kumar Jindal, the Manager of SSPL. Rival Contentions
4. I have heard Mr. Chander M. Lall, learned Senior Counsel for the plaintiff-applicant, Mr. Vaibhav Agnihotri, learned Counsel for Defendant 1 and Mr. J Sai Deepak, learned Counsel for Defendant 2, at exhaustive length.
Submissions of Mr. Lall
5. Mr. Lall submits thus:
(i) The plaintiff is the registered proprietor, in terms of Section 18 of the Trade MarksAct, 1999, of (a) the word mark JINDAL, vide registration No. 3022745, w.e.f., [2Witheffectfrom] 12 March 2014, in Class 17, covering “PPR Pipes, Pex Pipes, PVC Pipes & Fittings, PVC Flexible Pipes, Acrylic Sheet, Agricultural Rigid PVC Pipes, Hope Pipes & Coils, PVC & UPVC Rigid Pipes & Pipes Fittings, Hope SWR Pipes & Fittings, Polythene Pipes, Pre-Al-Pe (Polyethylene-Aluminium-Poly Ethylene) Composite Pipes, Pex-Al-Pe Composite Pipes, Pex-Al-Pex Composite Pipes, Pex Pipes (Cross Linked Polyethylene Pipes), Poly Propylene Random Pipes & Fittings in Class 17”, (b) the word mark JINDAL, vide Registration No. 894786 w.e.f. 8 January 2007, in Class 6, covering “Steel Tubular Poles, Steel Poles, Poles of Metal, for electric Lines”, and (c) the word mark JINDAL COR, vide Registration No. 899510 w.e.f. 8 January 2007, in Class 6, covering “C.I. Soil Pipes, Cast Iron Pipes, M.S. Pipes, C.I. 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”.
(ii) The defendants use the composite mark . By combining the initials of the wife of the Manager of SSPL with “JINDAL”, the defendants have ingeniously infringed the plaintiff’s registered trade marks.
(iii) Defendant 2 applied for registration of the impugned mark as a sole proprietor of RN Jindal SS Tubes. The address provided in the application, E-422, Basni IInd Phase, Industrial Area, Jodhpur (Rajasthan), India was the same as the address of Defendant 1, SSPL. Mr. Lall has referred me, in this context, to a Signboard outside the premises of SSPL reflecting the said address. Along with the application for registration of the mark, Defendant 2 filed Invoice No. STJTI/10078/2021, dated 21 July 2020, from SSPL to RN Jindal SS Tubes (“RNJSST”), showing RNJSST as consignee as well as buyer. He has referred me to the said invoice, filed with the plaint.
(iv) Apropos this invoice, it is also pointed out that the local truck, with registered number RJ 14 GJ 8429, through which SS Pipes and Tubes were shown to have been transported from SSPL to RNJSST on 21 July 2020 was also shown to have transported SS Pipe Tube from RNJSST to Prateek Steels & Metals on the same day under another Invoice No. GST3/20-21. (v) The same phenomenon, of one t
