Who Is The Prior User? – Answers Delhi High Court
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In a recent case, the Delhi High Court set aside an ad-interim injunction order that was passed in favour of the Plaintiff - Jindal Industries Private Limited and held the Defendant - Jindal Sanitaryware Private Limited, to be the prior user of the mark ‘JINDAL'.
India Intellectual Property
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In a recent case, the Delhi High Court set aside an ad-interim injunction order that was passed in favour of the Plaintiff - Jindal Industries Private Limited and held the Defendant - Jindal Sanitaryware Private Limited, to be the prior user of the mark 'JINDAL'.
In 2023, Jindal Industries Private Limited ("Plaintiff") filed a trade mark infringement suit to restrain Jindal Sanitaryware Private Limited & Anr. ("Defendant") from using any of the plaintiff's marks or any marks deceptively similar to the mark 'JINDAL' for Poly Vinyl Chloride ("PVC") pipes.
The essential grievance of the plaintiff was that the defendant was not the registered proprietor of the mark 'JINDAL' in Class 17 for PVC pipes and was the registered proprietor of the mark 'J-PLEX' for PVC pipes but was using the mark JINDAL for PVC pipes; and; that the defendant was a recent user whilst the plaintiff was a prior user and is registered proprietor of the mark JINDAL since September 01, 2006. The defendant, however, was unable to substantiate its user claim and merely asserted that it was a registered proprietor of a device mark 'JINDAL'.
The Delhi High Court vide its Order dated May 09, 2023, held that the suit was a prima facie case of trade mark infringement; that Defendant No. 1 was a recent, subsequent user and proprietor of the mark JINDAL for PVC pipes; that the balance of convenience was in favour of the plaintiff; that defendant would suffer no damage if injuncted from using the mark JINDAL and passed an ad-interim injunction Order under O. XXXIX Rule 1 and 2 of the Code of Civil Procedure, 1908, ("CPC") in favour of the plaintiff thereby restraining the defendant from using the plaintiff's abovementioned marks and any mark deceptively similar to JINDAL.
Thereafter, the defendant filed an application under O. XXXIX Rule 4 of CPC, claiming that the defendant was engaged in the business of sanitary and bathroom fitting, PVC and PPR pipes for many decades; that the defendant adopted and was using the mark JINDAL, in respect of sanitaryware and bathroom fittings in PVC pipes, since July 01, 2006; that the defendant was using the mark JINDAL as a part of the primary, essential and distinctive part of the family name; that Defendant no. 1 was started as a partnership firm by the father of Defendant no. 2, Sh. Lal Chand; and is presently a sole proprietorship under Defendant no. 2, Shri Ram Niwas Jindal; and that in 2009, Defendant no. 2 incorporated the company under the name and style of 'Jindal Sanitaryware Private Limited'(Defendant no.1), prior to which defendant no. 1 had been permitted by defendant no. 2 use of their registered mark JINDAL.
The issue in the present suit is as to who is the prior user of the mark JINDAL with respect to PVC pipes in Class 17.
The plaintiff inter alia submitted that:
The defendant inter alia submitted that:
The Court observed that the plaintiff's word mark JINDAL applied on March 12, 2014, bearing no. 2697386 and mark bearing no. 1787420 dated February 19, 2009, both in class 17 and both claiming use since April 01, 2006, relied upon by the plaintiff, stood on thin ground as the plaintiff had originally applied for the same marks under application nos. 1483834 and 1483835 on September 01, 2006, on a proposed to-be-used basis, which was subsequently amended to claim use since April 01, 2006. The Court observed that the plaintiff, as an afterthought, had revised the user of the mark once in 2009 and then in 2014 but failed to file any documentary evidence showing the use of the mark JINDAL as of April 2006 or even subsequently.
The Court observed that the defendant claimed use of the mark JINDAL since 1981, in classes 11 and 12 for sanitary and bathroom fittings and relied upon its registered device marks bearing no. 861968 in class 11 and bearing no. 792571 in class 20 and; since 2006, for PVC pipes and fittings, in class 17.
The Court assessed the following plaintiff's documents, which were relied upon by the defendant, and observed that the plaintiff's use of the mark JINDAL for PVC pipes was since the year 2022:
The Court also assessed the defendant's following documents, which indicated that the defendant was the prior user of the mark JINDAL.
In view of the above, the Delhi High Court held that the defendant, who had JINDAL as a part of its trade name, was the prior user, manufacturer, seller of PVC materials, pipes under the mark JINDAL, which is prior to the plaintiff's prima facie established use of 2022.
The Court also held that in view of the Opposition filed by Defendant no.1 under Application no. 1522441, the plaintiff had knowledge of the defendant since 2010 that the plaintiff cannot monopolize the use of 'JINDAL' in respect of PVC pipes and tubes in view of the several JINDAL marks available on the register, the plaintiff's co-existence agreement and the plaintiff's dissimilarity pleadings.
The Court further relied upon Jindal Industries Private Limited vs Suncity Sheets Private Limited1, held that the plaintiff's assertion that a "name" cannot be used as a trademark when Section 35 is read with Section 29 (1) of the Act did not hold much water.
The Court held that the balance of convenience falls in favour of the defendant since, prima facie, the defendant was using the mark 'JINDAL' for 13 years, and as a part of their family name 'JINDAL' which was evident from the partnership deed dated October 16, 2007, which stated the name of defendant's father name as Shri. Ram Niwas Jindal. In view of the above, the Court set aside the ad-interim injunction order dated May 9, 2023 and allowed the Application under Order XXXIX Rule 4, CPC.
Footnote
1. 2024 SCC OnLine Del 1632
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