India – Who Is The Prior User? – Answers Delhi High Court.

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’.

Background and Facts of the Case

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.

Issue

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.

Plaintiff’s submissions:

The plaintiff inter alia submitted that:

1. The plaintiff has been using the mark JINDAL since 1981 for galvanized iron pipes and was the registered proprietor of the word mark JINDAL since September 01, 2006;
2. Defendant No. 2, under its pending mark filed an affidavit dated July 09, 2010, claiming use since 2006-2007, but failed to substantiate such use with any bills; under the mark in Class 17, filed an affidavit dated October 01, 2022, with the earliest bill of December 14, 2010; applied for the mark in class 17 claiming use since July 01, 2006, wherein the plaintiff’s mark was cited as a conflicting mark. However, the defendant did not produce any invoice indicating such use or claim priority against the plaintiff’s mark but abandoned the above application on the grounds that its mark is identical and similar to the plaintiff’s registered mark and is in respect of the same or similar goods;
3. Defendant No. 1, in 2020, filed an application for the mark on a proposed to-be-used basis, but pursuant to an opposition filed by the plaintiff, Defendant No. 1 amended the application to claim use since October 01, 1997, without any substantial documentary evidence;
4. The Defendants’ sales figures are from the year 2007, and the invoices of the year 2006 do not bear goods of class 17;
5. The defendants had admitted that they commenced business of pipes and fittings under the mark ‘J-PLEX’ in 2007;
6. The defendant could not avail of the defence under Section 35 of the Act, as Defendant No.2 in its application bearing no. 606858, had mentioned his father, Sh. Lal Chand Jindal’s surname as “Gupta” and not “Jindal”.

Defendant’s submissions

The defendant inter alia submitted that:

1. The defendant and its sister concerns had been using the mark JINDAL since 1981 in respect of goods in classes 11 and 20, sanitary and bathroom fittings, sanitary pipes and storage tanks, and since 2006 for PVC pipes and fittings in class 17.
2. The plaintiff had concealed and suppressed the following facts:
   • The plaintiff was aware of the use of the mark JINDAL by the defendant, by virtue of several opposition proceedings between the parties filed in the years 2009 and 2010, for the defendant’s mark ‘JINDAL’ in class 11 and for the plaintiff’s marks JINDAL under nos. 1522441 and 1522442 filed by the defendant and its sister concern, Jindal Plast (India), respectively.
   • The plaintiff, under its mark ‘JINDAL’ and the label in class 17 (applied on a ‘proposed to be used’ basis in September 2006), filed an affidavit dated May 11, 2009, which stated that the plaintiff would be launching goods under the mark JINDAL very shortly, thereby indicating that the plaintiff had not commenced any business under the mark JINDAL for the goods falling in class 17.
   • The plaintiff, pursuant to noticing the user of the defendant’s application, filed applications under nos. 1522441, 1522442, 1522447, 1787420, 2697386, 2697387 claiming use of the mark ‘JINDAL’ to April 01, 2006, prior to the defendant’s use of July 01, 2006.
   • The plaintiff in the reply to the examination report for the mark under application nos. 1787420 in Class 17 and 1856072 in Class 11, pleaded dissimilarity of the marks and the goods covered under the plaintiff’s mark and the Defendant No.2’s cited mark.
3. The defendant further relied upon the plaintiff’s website records and submitted that the plaintiff’s first use of the mark JINDAL in class 17 has been since 2022-2023, which is after the defendant’s use of 2006.
4. The defendant also relied upon several registrations of the mark JINDAL existing on the Trade Mark Registry, filed by various entities, and submitted that the plaintiff cannot claim exclusivity of a mark JINDAL.
5. The defendant also relied upon a partnership deed dated October 16, 2007, which clearly stated the name of the father of defendant no. 2 as Shri Lal Chand Jindal.

Observation and Analysis of the Court

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:

1. The plaintiff’s affidavit dated May 11, 2009, filed in support of the amendment of a user in the class 17 application, stated, ‘will start the use of the said trademark in connection with the said goods very soon’; which was a clear admission by the plaintiff that the mark JINDAL was not in use till 2009 thereby vitiating the amendment of the user of 2006;
2. The plaintiff’s undated brochure contained a logo stating “60 years since 1962,”  which indicated that the brochure was of the year 2022. The said brochure also stated that Jindal Hissar, a leading manufacturer of GI pipes, had taken a step ahead by manufacturing and introducing Super Strong Lead-Free uPVC column pipes, thereby concluding that prior to 2022, the plaintiff had not manufactured PVC column pipes;
3. The plaintiff’s website for 2021-2022 contained the annual report dated June 04, 2022, but did not mention PVC products as a part of the plaintiff’s portfolio;
4. The invoice dated February 06, 2020, made no mention of PVC as a part of the plaintiff’s products, but the invoice dated April 06, 2022, mentioned uPVC;
5. The plaintiff, in its reply to the examination report for its marks under no. 1787420 and under no 1856072 pleaded dissimilarity of its marks from the defendant’s cited marks , which contained ‘JINDAL’.
6. A co-existence agreement dated May 23, 1989, between the plaintiff and a third party Jindal (India) Limited filed in suit no. 1257/1988, for the mark JINDAL in respect of steel pipes, barred the plaintiff from asserting its exclusivity of the mark on later adopted product being PVC pipes.
7. The plaintiff’s application under no. 152242, opposed by Jindal Plast (India), was subsequently abandoned, this is relevant since Defendant no. 2 is the current proprietor of Jindal Sanitary Works, and in 2005, Defendant no. 2 started the partnership firm Jindal Plast (India).

The Court also assessed the defendant’s following documents, which indicated that the defendant was the prior user of the mark JINDAL.

1. The Central Sales Tax Registration Certificate issued in the name of M/s Jindal Sanitary Works is dated April 16, 1981, which showed that plastic products were being sold in 1981.
2. A license by Bureau of Indian Standards dated June 23, 2010, for permission to use their standards on UPVC pipes to the licensee being Jindal Plast (India).
3. Invoices issued by Jindal Sanitary Works, dated April 16, 1981, showed the presence of PVC sanitary goods and the current defendant no. 1; dated December 14, 2010, and dated December 27, 2010, that showed the presence of Chlorinated Polyvinyl Chloride (“CPVC”) Pipes; and invoices of 2013 -2014 for plumbing pipes using the HSN classification no. 39172390

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 Limited, 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.