IA No. 4680/2016 (of the plaintiff under Order XXXIX 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 August- September, 2015, the plaintiff learnt that the defendant had now adopted the mark 'JINDAL' per se for goods manufactured and sold by the defendant; (xv) soon thereafter in October, 2015, the plaintiff learnt that the defendant had obtained an ex parte injunction against a licensee of the plaintiff by filing a suit before the Hyderabad Civil Court; (xvi) the said suit was subsequently settled on the defendant herein, making the licensee of the plaintiff who was impleaded as the defendant in the Hyderabad suit terminate the licence under the plaintiff; (xvii) the defendant filed yet another suit in Hyderabad Court against the plaintiff for trade mark infringement and passing off but no interim injunction was granted to the defendant in the said suit and the plaintiff was contesting the very maintainability of the said suit; (xviii) the plaintiff and the defendant, in March, 2016 made attempts for amicable settlement but without any fructification; (xix) through the aforesaid suits, the plaintiff also learnt that the defendant is claiming proprietary rights over the trade mark 'JINDAL' by claiming to have adopted the marks 'Y.R. Jindal' and 'Jindal Co.' in 1972; (xx) the said claim of the defendant is obviously false since the defendant was incorporated only in 1986; (xxi) though the defendant claims that its predecessor-in-interest Goyal Steel Industries was using the said marks since 1972 but no document had been produced to show Goyal Steel Industries to be the predecessor-in-interest of the defendant; (xxii) the defendant's registration of the marks 'Y.R. Jindal' and 'Jindal Co.' stood abandoned in or about 2002; (xxiii) the defendant presently had the registrations of (a) word mark 'JINDAL' in Class 6 for Tor Steel, Flate & Angle, applied on 19th June, 1997, claiming use since 1st January, 1972; (b) device mark 'JINDAL' in Class 6 for iron & steel products including T.M.T. bar, S.A.P. bar, stainless steel bar, coated steel bar, alloy steel bar and M.S. Rod, applied on 26th September, 2005 on proposed to be used basis; (c) 'JINDAL' device in Class 6 for girders and channels, applied for on 5th December, 2006 claiming use since 1st January, 1972; (d) word mark 'JINDAL' in Class 6 claiming use since 1st January, 1972; and, (e) device mark 'JINDAL' in Class 35 for advertising business, applied for on 18th September, 2007 claiming use since 1st January, 1972; (xxiv) the applications of the plaintiff for rectifications/cancellations of the registrations obtained by the defendant in Class 6 are pending; (xxv) the plaintiff is the prior user and registered proprietor of the mark 'JINDAL' for various goods in Class 6; and, (xxvi) the defendant is deceiving the unwary public and inducing them into purchasing its products as that of the plaintiff.3. The suit came up first before this Court on 19th April, 2016 and thereafter on 22nd April, 2016 when though summons of the suit were issued taking note of Indian Bank v. Maharashtra State Co-operative Marketing Federation Ltd., 73 (1998) DLT 800 (SC)=V (1998) SLT 232=(1998) 5 SCC 69, relied upon by the Counsel for the plaintiff but no ex parte ad-interim relief sought granted.4. The defendant has contested the suit by filing a written statement pleading, that (i) the suit covers matters that are directly and substantially in issue in previously instituted suit filed by the defendant against the plaintiff in the Court at Hyderabad; (ii) the plaintiff in Transfer Petition No. 823/2016 filed before the Supreme Court has admitted the overlapping nature of the suit in Hyderabad Court and the present suit; (iii) the said Transfer Petition was dismissed on 29th June, 2016; (iv) the proceedings in the present suit are liable to be stayed under Section 10 of the CPC; (v) the plaintiff closed down its operations in 2003 and since then has not carried on any activity of manufacture, sale and marketing of products subject matter of the suit; (vi) on a reference made by the plaintiff, the plaintiff on 22nd January, 2001 was declared as a sick company within the meaning of the Sick Industrial Companies (Special Provisions) Act, 1985; (vii) the status of the plaintiff in the Ministry of Corporate Affairs, Government of India was "dormant" and the Sales Tax Certificate of the plaintiff was cancelled on 19th November, 2008; (viii) the defendant filed opposition to the application made by the plaintiff on 21st March, 2002 for registration of the mark 'JINDAL' for manufacturing and trading of m.s. channels, m.s. angles, m.as. ctd brass and to which no response was filed by the plaintiff and whereby the plaintiff abandoned its claim to seek exclusive right to use the mark 'JINDAL'; (ix) the plaintiff did not use the mark for over five years and the registration of the mark 'JINDAL' in favour of the plaintiff was liable to be cancelled and the defendant had applied therefor and which application was pending; (x) the plaintiff had falsely claimed to have entered into licence agreements with others; the licence agreements were forged and fabricated; the plaintiff had not been using the trade mark bona fide; (xi) in fact, the claim of others to use of the mark 'JINDAL' as licensees of the plaintiff had caused damage to the defendant; (xii) alternatively, the plaintiff is at best engaged in the business of licensing without any intention to directly manufacture or market goods or product and such use of the mark is not bona fide; (xiii) the telephone number given on the website www.jindalsteelbar.com is not of an employee of the plaintiff; (xiv) the plaintiff did not oppose the applications filed by the defendant for registration of the word mark 'JINDAL' or mark 'Jindal Co.' and device mark 'JINDAL' all in Class 6 or the device mark 'JINDAL' in Class 35; (xv) the defendant has also secured two copyrights over artistic works which involve usage of the mark 'JRM' and 'JINDAL'; and, (xvi) the defendant has been using the mark 'JINDAL' to the knowledge of the plaintiff continuously for around 44 years and the mark 'JINDAL' has become distinctive of the defendant.5. The plaintiff in its replication has inter alia pleaded, that (a) the plaintiff had not been served with the application if any filed by the defendant for removal of the registration in favour of the plaintiff on ground of non user; (b) had the plaintiff not been using the mark 'JINDAL' through its licensees, the occasion for the defendant to institute suits for infringement and passing off against the said licensees would not have arisen; and, (c) the defendant has also granted license for use of the mark 'JINDAL' and the business model of the defendant is identical to that of the plaintiff.6. The defendant, besides filing the written statement has also filed the application aforesaid under Section 10 of the CPC.7. vide order dated 21st February, 2017, the statement of the Counsel for the defendant that the defendant shall not file any suit or initiate any proceeding against the licensees of the plaintiff was recorded and vide order dated 12th May, 2017, the said order was continued and the statement of the Counsel for the plaintiff was also recorded to the effect that the plaintiff shall not write any letters or issue any notices against the licensees of the defendant.8. The proceedings in the suit were adjourned for several dates awaiting the outcome of the application qua territorial jurisdiction filed by the plaintiff in the suit instituted by the defendant at Hyderabad. On 22nd January, 2019, it was informed that the application of the plaintiff under Order VII Rule 10 CPC in the Hyderabad suit, objecting to the jurisdiction of the Hyderabad Court, stood dismissed.9. On 22nd January, 2019, it was the contention of the Counsel for the plaintiff (i) that the plaintiff has instituted this suit for permanent injunction to restrain the defendant from passing off same goods as that of the plaintiff by use of the same mark 'JINDAL', as of the plaintiff; (ii) that the plaintiff was established by Mr. O.P. Jindal, as a partnership firm and commenced using the trade mark 'JINDAL' on 1st January, 1974 and was also first granted registration in 1985; (iii) that the defendant has been established by a member of the larger family of Mr. O.P. Jindal and was initially using the mark 'Y.R. JINDAL', to distinguish its goods from that of the plaintiff under the mark 'JINDAL'; (iv) that the defendant has however now abandoned the said mark and commenced using the mark identical to that of the plaintiff i.e. 'JINDAL'; (v) that the defendant, over the years has also obtained registration of the mark 'JINDAL'; (vi) that the plaintiff has applied to the Intellectual Property Appellate Board for rectification of the mark of the defendant; (vii) that the defendant instituted the suit against the plaintiff at Hyderabad Courts to restrain the plaintiff from using the mark 'JINDAL' and from passing off its goods as that of the defendant herein as well as for infringement; (viii) that the plaintiff has applied under Section 124 of the Trade Marks Act, 1999 in Hyderabad Courts and which application is pending; (ix) that though the proceedings in the present suit may be stayed on account of previously instituted suit at Hyderabad but the plaintiff is entitled to hearing of its application under Order XXXIX Rules 1&2 of the CPC.10. The Counsels for the parties were further heard on the application for interim relief as well as on the application under Section 10 of the CPC on 7th May, 2019 and orders reserved giving liberty to the Counsels to file written submissions with copies of the judgments relied upon.11. Both Counsels have filed written submission.12. It is the contention of the Counsel for the plaintiff, that (i) the plaintiff is admittedly a prior user and registrant of the mark since 1st January, 1974; (ii) the rectification petition filed by the defendant for cancellation of the first registration of the mark in favour of the plaintiff was dismissed on 1st October, 2004 holding the plaintiff to be the prior user of the mark and the said order has attained finality; (iii) though the defendant, in a suit before the District Judge, New Delhi against a licensee of the plaintiff had obtained an ex parte injunction against use of the mark by the licensee of the plaintiff but the said order was vacated vide subsequent order dated 30th November, 2016, finding the plaintiff to be the prior adopter of the mark and the said order has also attained finality; (iv) the defendant has not produced any document of prior use of the mark since 1972; (v) though the defendant claims use since 1972 of the marks 'Y.R. Jindal' and 'Jindal Co.' by Goyal Steel Industries but no document has been produced to show assignment of the said mark in favour of the defendant or of the defendant being the successor in interest of Goyal Steel Industries; (vi) adoption of the mark 'JINDAL' by the defendant was/is dishonest, fraudulent and in bad faith; (vii) the defendant first applied for registration of the mark on 19th June, 1997 i.e. after the institution of the earlier suit by the plaintiff against the defendant and from which the defendant was aware of adoption of the mark by the plaintiff on 1st January, 1974; (viii) even otherwise, both the parties deal from the town of Hisar in Haryana; the defendant was aware of prior adoption of the mark 'JINDAL' by the plaintiff; (ix) the plaintiff has been continuously using the mark since 1st January, 1974 till, 2002 by manufacturing goods under the said mark and thereafter by licensing of the mark 'JINDAL'; and, (x) Section 10 of the CPC only stays the trial of the suit and does not bar the plaintiff from seeking a relief of temporary injunction. Reliance is placed on Indian Bank (supra) and Austin Nichols & Co. v. Arvind Behl, ILR 2005 II Del 1007.13. The Counsel for the defendant has contended, that (i) the earlier suit filed by the plaintiff against the defendant was dismissed for non- prosecution on 5th February, 2002 and no interim relief was granted to the plaintiff therein also; (ii) the plea of the plaintiff of having first gained knowledge of the defendant's use of the mark 'JINDAL' in August-September, 2015 is falsified from the documents on record; (iii) the plaintiff, from as early as 1984, has knowledge of the defendant's adoption of the mark 'JINDAL'; (iv) the plaintiff has failed to file invoices from 1974 and the documents filed by the plaintiff show the plaintiff to have adopted the mark in 1985; (v) there is not a shred of evidence to the claim of the plaintiff of being the prior adaptor of the mark; (vi) the plaintiff has approached this Court after considerable delay; (vii) in the earlier suit filed by the plaintiff also, restraint was sought against the defendant from using the mark 'JINDAL' and issues were framed with respect to the defendant being a prior user of the trade marks 'Y.R. Jindal' and 'Jindal Co.'; (viii) no justification for not prosecuting the earlier suit filed against the defendant has been pleaded; (ix) the documents filed by the defendant falsify the claim of the plaintiff of the defendant having then stopped its business or abandoned use of the mark 'JINDAL'; (x) the present suit is a counterblast to the suit filed by the defendant against the plaintiff in Hyderabad; (xi) substantive claims of the parties are pending adjudication before the Trade Mark Registry and the IPAB; (xii) the conduct of the plaintiff does not entitle the plaintiff to any injunction; (xiv) the defendant has learnt that Jindal Infra Alloy Pvt. Ltd. is claiming title over the plaintiff's trade marks under various agreements entered into with the plaintiff; (xv) the defendant has filed documents to show use of the mark 'JINDAL' since the year 1972; (xvi) Jindal is a key component of the defendant's corporate / company name and is also the surname of the defendant's promoter; (xvii) the plaintiff also admits the proprietors, shareholders and directors of the plaintiff as well as the defendant being members of Jindal family of Hisar; (xviii) the orders of the IPAB and the District Judge, Delhi holding the plaintiff to be the prior user, do not substantially determine the issue of prior use; even if the plaintiff were to be proved to be the prior adopter, the plaintiff had no reasonable justification for acquiescence towards the defendant and its predecessors' continuous and uninterrupted use of the mark 'JINDAL' in various forms; (xiv) the plaintiff never dealt in TMT bars from the time of its inception till September-October, 2015, when it attempted to re-enter the business on the strength of licensee; and, (xv) the proceedings in the present suit are liable to be stayed under Section 10 of the CPC.14. The Counsel for the plaintiff in rejoinder has contended that since the very adoption of the mark 'JINDAL' by the defendant is dishonest and fraudulent, the argument of delay on the part of the plaintiff in instituting this suit is not available to the defendant; in fact, in the written statement, delay is not even pleaded and the argument has been raised for the first time without any pleading. Similarly, the bar of Order IX Rule 9 of the CPC has not been pleaded; even otherwise, infringement and passing off of a trade mark by the same defendant from time to time furnishes a recurring cause of action to the proprietor of the mark.15. I may mention that both the Counsels in their respective written submissions have referred in detail to the documents filed and also to a large number of judgments. However since the said written arguments have been taken on record, the need to burden this judgment with the said particulars is not felt as the present is not a case which can be decided without trial.16. Supreme Court in order dated 31st July, 2017 in SLP(C) No. 18892/2017 titled AZ Tech (India) v. Intex Technologies (India) Ltd., 236 (2017) DLT 220, arising out of judgment dated 10th March, 2017 in FAO(OS) No. 1/2017 of this Court, observed as under:“Having read the order of the High Court of Delhi dated 10th March, 2017 passed in FAO(OS) No. 1/2017 we find that it is virtually a decision on merits of the suit. We wonder if the High Court has thought it proper to write such an exhaustive judgment only because of acceptance of the fact that the interim orders in Intellectual Property Rights (IPR) matters in the Delhi High Court would govern the parties for a long duration of time and disposal of the main suit is a far cry. This is a disturbing trend which we need to address in the first instance before delving into the respective rights of the parties raised in the present case.......”Though subsequently vide order dated 16th August, 2018, the Special Leave Petition was dismissed with a direction for expeditious disposal of the suit but a suo motu proceeding started with respect to the concern urged as aforesaid and which suo motu proceeding was ultimately closed on 6th August, 2019. In deference to what was observed by the Supreme Court and particularly when the proceedings in this suit, as hereunder discussed, are to be stayed awaiting the judgment of the Court at Hyderabad, it is not deemed apposite to burden this judgment with all the documents referred to in the written arguments of both the Counsels or the judgments referred to therein.17. All that can be said, on going through the voluminous files, is that at this stage, it is very difficult for this Court to take a prima facie view of the respective claims of either of the parties. Though ordinarily in such a situation when no prima facie case can be found in favour of the applicant for interim relief, the application for interim relief is to be dismissed, however what is clear from the records is that both the parties are using the same mark i.e. 'JINDAL' in relation to the same product/goods.18. The plaintiff, at pages 20 and 21 of Part-IIIA file has filed photograph of its own product as well as photograph of the product of the defendant and which show identical product i.e. steel rods with 'JINDAL' embossed thereon in identical font and fashion, making the goods of the plaintiff indistinguishable from the goods of the defendant.19. The purpose of the law of infringement and passing off is not only to protect rights of the proprietors of the marks but also to protect the consumers from being mislead into dealing with and/or buying the goods of one for the other.20. As far back as in Hindustan Pencils (P) Ltd. v. India Stationery Products Co., 38 (1989) DLT 54=AIR 1990 Del 19, Justice Kirpal, as his loardship then was, held that though in an action for infringement of trade mark if the interim injunction is not granted, the plaintiff when ultimately suceeds can always be compensated by awarding damages for the loss suffered but during the period the defendant is allowed to continue to infringe the trade mark, it is the consumer or the purchaser who alone suffers and who ultimately cannot be compensated; therefore, in order to curb the menace of manufacture, production and sale of suprious goods and the blatant violation of intellectual property, it will be proper for the Court to take into consideration the interest of the general public. It was held that the right of the public not to be decived or confused may turn the scales in favour of a preliminary injunction. It was yet further held that even though there may be some doubt as to whether laches or acquiescence can deny the relief of permanent injunction, judicial opinion has been consitent in holding that if the defendant acts fradulently with the knowledge that he is violating the plaintiff's right, then in that case even if there is an inordinate dely on the part of the plaintiff in taking action against the defendant, the relief of injunction is not denied.21. The aforesaid dicta of this Court in Hindustan Pencils (P) Ltd. (supra) was followed by the High Court of Gujarat in Rupa & Co. Ltd. v. Dawn Mills Co. Ltd., AIR 1998 Guj 247 and by this Court in Ansul Industries v. Shiva Tobacco Company, 2007 (34) PTC, 392; Beiersdorf A.G. v. Ajay Sukhwani, 2009 (39) PTC 38 and Apollo Tyres Ltd. v. Pioneer Trading Corporation, 242 (2017) DLT 488=2017 (72) PTC 253.22. Mention may also be made of (a) Power Control Appliances v. Sumeet Machines Pvt. Ltd., 53 (1994) DLT 723 (SC)=1994 (SLT SOFT) 853=(1994) 2 SCC 448, laying down that it is the settled principle of law relating to trade mark that there can be only one mark, one source and one proprietor; it cannot have two origins; (b) Synthes AG Chur v. Rob Mathys India (P) Ltd., 1996 SCC OnLine Del 222, holding that "in the interest of general public, the defendant cannot be allowed to use the trade marks and try to use the name and reputation of the plaintiffs for its business"; and consequently restraining the defendant from doing anything which was likely to cause confusion, deception or amount to passing off of the goods and business of the defendant for those of the plaintiff; (c) Rob Mathys India Pvt. Ltd. v. Synthes Ag Chur, (1997) 17 PTC 669 (Del) (DB), holding that a party cannot be permitted to bask in the warmth and make illicit profit from a reputation built by another and that it is necessary to protect the interest of the users; (d) Kedar Nath Gupta v. J.K. Organisation, 71 (1998) DLT 818=1998 (18) PTC 189 (Del), holding in the context of Section 21 of the Trade Marks Act that the term "any person" need not be only a prior registered trade mark owner; even a customer, a purchaser or a member of the public likely to use the goods may object to the registration of a trade mark in respect of goods on the ground of possible deception or confusion; deception or confusion is a matter of public interest which is an important concern of the trade mark law; (e) Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel, VI (2006) SLT 673=(2006) 8 SCC 726, holding (i) the purpose of a trade mark is to establish a connection between the goods and the source thereof which would suggest the quality of the goods; (ii) ordinarily under the law there can only be one mark, once source or one proprietor; ordinarily again, the right to user of a trade mark cannot have two origins; (iii) if goods are sold which are produced from two sources, the same may lead to confusion in the minds of consumers; it may also amount to fraud on the public; and, (iv) ordinarily therefore two people are not entitled to the same trade mark, unless there exists an express licence in that behalf.23. The Counsel for the plaintiff has not been able to urge any ground for declining the application of the defendant under Section 10 of the CPC. Even otherwise, on perusal of the pleadings in the Hyderabad suit and the present suit, the ingredients of Section 10 are satisfied and the further proceedings in the suit in this Court are liable to be stayed.24. It is thus not as if this Court would be in a position to expedite trial for arriving at an early decision, to prevent further confusion in the market and to prevent the consumers from being so mislead and while wanting to buy goods of either the plaintiff or the defendant, being led into buying the goods of the other. The speed of the trial will be governed by the defendant and by the Hyderabad Court where the suit filed by the defendant against the plaintiff is pending.25. I am therefore of the view that an interim arrangement ought to be made to ensure clarity in the mind of consumers and others dealing with the plaintiff and the defendant and to prevent chaos from prevailing in the market by perpetuating the deception of the customers for more time, till when trial in the Hyderabad suit is concluded and various issues arising for adjudication adjudicated.26. The question still arises, how such distinction between the goods of the plaintiff and the goods of the defendant is to be maintained in the market.27. In this respect, in my view, the determinative factors are, that (i) the plaintiff, whether or not the prior user of the mark, is admittedly the prior registrant of the mark, for the class of goods for which the mark is presently being used; the same, in my view, is a very strong indicator in favour of the plaintiff and against the defendant; even if the plaintiff, on account of being sick at one stage, did not use the mark, the non-use of the mark in such circumstances, in my view, would not show an intent of the plaintiff to abandon the mark so as to allow another to act on the premise of such abandonment and change position so as to thereafter stop the plaintiff from using the mark [reference in this regard may be made to Gold Star Co. Ltd. v. Gold Star Industries Ltd., 57 (1995) DLT 658=1995 (15) PTC 18 (Del); Cycle Corporation of India Ltd. v. T.I. Raleigh Industries Pvt. Ltd., 1996 (SLT SOFT) 2022=(1996) 9 SCC 430; Rob Mathys India Pvt. Ltd. v. Synthes Ag Chur (supra); Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., V (2003) SLT 616=(2003) 11 SCC 92; Fedders Lloyd Corporation Ltd. v. Fedders Corporation, 119 (2005) DLT 410 (DB)=(2005) 30 PTC 353 (DB); Pfizer Products Inc. v. Rajesh Chopra, 142 (2007) DLT 300=2007 (35) PTC 59 (Del); Exide Industries Ltd. v. Exide Corporation, U.S.A. 2013 (53) PTC 137 (Del) & Exide Technologies v. Exide Industries Ltd., 2016 SCC OnLine Del 4326 (DB)]; it is not even the case of the defendant that it acted on the basis of abandonment of the mark by the plaintiff; and, (ii) it is clear from a reading of the pleadings in this suit as well as in the earlier suit filed by the plaintiff against the defendant that while the plaintiff, since the time of registration and claimed user, used the mark 'JINDAL' per se, the defendant, though earlier was using the marks 'Y.R. Jindal' and 'Jindal Co.', has along the way dropped the prefix and suffix to the word 'JINDAL', to now make its mark identical to that of the plaintiff.28. I may in this context mention that though the grievance of the plaintiff in CS(OS) No. 979/1996 earlier filed by the plaintiff against the defendant and which was dismissed for non prosecution, was violation by the defendant of the mark 'JINDAL' of the plaintiff by the defendant by using 'Y.R. Jindal' and 'Jindal Co.', the defendant in its written statement in the said suit did not make a claim of using the mark 'JINDAL' per se. Rather, the defendant, after the dismissal for non prosecution of the said suit, has changed its mark from 'Y.R. Jindal' or 'Jindal Co.' to 'JINDAL' per se, dropping the prefix/suffix 'Y.R.' and 'Co.' and thereby having the effect of obliterating whatever little difference was there between the marks of the plaintiff and the defendant owing to the prefix/suffix 'Y.R.' and/or 'Co', then being used by the defendant. Such conduct of the defendant shows the continuous effort and intent of the defendant to make his mark identical to that of the plaintiff and obviously to derive benefit therefrom. There is no explanation for the defendant dropping the prefix/suffix 'Y.R.' and 'Co.' which the defendant then was using along with the mark 'JINDAL'.29. Paragraph 16 of the plaint in the earlier suit filed by the plaintiff against the defendant is as under:“16. That the defendants have recently started manufacturing and marketing of Steel Girders under the trade mark "JINDAL" as of the plaintiffs, which is a clear and flagrant violation of the legal vested rights of the plaintiffs in their well-known and well-established trade mark "JINDAL".”And the plaintiff in the said earlier suit inter alia claimed the following reliefs:“22. It is therefore, most humbly and respectfully prayed that decree be passed in favour of the plaintiff against the defendant to the following effects:(i) For perpetual injunction restraining the defendant, their servants, agents, representatives, dealers and all other persons on their behalf from infringing the trade mark of the plaintiff, carrying on the business as manufacturers or vendors of Steel Girders and fittings thereof under the trade mark "JINDAL" or under any other trade mark which may be identical with and / or deceptively similar to the plaintiffs in respect of the aforesaid goods.(ii) For perpetual injunction restraining the defendant from passing off their goods as the goods of the plaintiff under the trade mark "JINDAL".”30. The defendant in its written statement to the earlier s
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uit of the plaintiff, in preliminary objections inter ala stated as under:“2. The plaintiff has not given the true facts before this Hon'ble Court. The true facts are:(a) The predecessor of the defendant company, namely M/S. GOEL STEEL INDUSTRIES adopted the trade marks JINDAL CO and Y.R. JINDAL in the year 1972 honestly and bonafidely as one of the partners namely Shri Janak Raj Jindal (then Minor, who was admitted to the benefits of the partners) was JINDAL by surname. The alphabets CO were added to the words JINDAL to make it JINDAL CO to denote the association of the mark with the then firm GOEL STEEL INDUSTRIES as a company of JINDALS. The other trade mark Y.R. JINDAL was adopted from the name of the present Managing Director of the defendant company namely Shri Y.R. Jindal who at that time was also a minor. He is son of Shri M.L. Jindal. Thus to give the affections to the minor children, the trade marks were thus coined/adopted as explained above.(b) Shri M.L. Jindal and Shri O.P. Jindal are the real brothers who are managing the defendant and the plaintiff companies respectively by themselves or through their kiths and kins.(c) The defendant company was incorporated in 1986 by certificates of incorporation dated 25/2/1986 as a private limited company and later on in 1993 converted into a limited company.(d) The defendant (which then was a private limited company) in the year 1986 was taken as a partner in M/S. GOEL STEEL INDUSTRIES who carried on the business and also used the trade marks JINDAL CO and Y.R. JINDAL.(e) The said firm was later on taken over by the defendant company in 1986.(f) Thus the defendant and its predecessors have been continuously using the trade marks JINDAL CO and Y.R. JINDAL since 1972.”31. In my view, a direction by way of interim arrangement, to the defendant, to till the disposal of the suit, not use the mark 'JINDAL' per se and to use the same in conjunction with the acronym 'Y.R.' and which is indicative of the faction of the Jindal family from which the goods originate, would serve the purpose. The defendant, who in the past has been using the mark 'Y.R. Jindal', cannot claim to suffer any prejudice from now using the same mark and which would to some extent distinguish its goods from that of the plaintiff.32. I accordingly dispose of IA No. 4680/2016 of the plaintiff under Order XXXIX Rules 1 and 2 CPC, by restraining the defendant from, with effect from 60 days of today, using the mark 'JINDAL' per se in any manner whatsoever and in any media whatsoever including as a domain name or as a e-mail or in advertising or for embossing the same on the goods or on the letterheads, but clarifying, that the defendant shall be entitled to use the mark 'Y.R. Jindal' and use by the defendant of the mark 'Y.R. Jindal' shall not constitute violation of the injunction against the defendant from using the mark 'JINDAL'. It is further clarified that it will be open to the defendant to, in the said period of 60 days, give publicity to the forthcoming change, to inform and familiarize its customers and others dealing with it, of the same.33. As far as IA No. 7480/2016 under Section 10 of the defendant is concerned, the same is allowed. The further proceedings in this suit are stayed awaiting the outcome of the suit instituted by the defendant against the plaintiff at Hyderabad.34. IA No. 4680/2016 and IA No. 7480/2016 are disposed of.CS(COMM) No. 360/201635. Resultantly, the further proceedings in this suit are adjourned sine die with liberty to the parties to apply as and when need arises.IA disposed of.