- Bookmark
- Share
- CaseIQ
Jindal Industries Ltd. v. Nirmal Steel Tubes Pvt. Ltd.
Factual and Procedural Background
An ex parte injunction order was passed on 21-09-1992 restraining the defendants from using a trade mark and device comprising a map of India within an oval shape, which was alleged to be identical or deceptively similar to the plaintiff's registered trade mark. The plaintiff's device includes an oval shape with a map of India and the word ‘Jindal’, while the defendant's device also features an oval outline, a map of India, and the word ‘Nirmal’. The defendant claims to be the registered owner of trade mark No. 445968-B, which includes the word ‘Nirmal’ enclosed in an oval shape with the map of India, and contends that the map of India has been disclaimed by both parties. The plaintiff's registered trade mark ‘Jindal’ is registered under No. 384816 since 31-12-1981. A rectification proceeding filed by the plaintiff was consolidated with this suit by an order dated 11-05-1994. The present opinion addresses the validity of the injunction order in light of the defendants' registered trade mark rights.
Legal Issues Presented
- Whether an injunction can be granted restraining the defendant from using a registered trade mark under Section 28 of the Trade and Merchandise Marks Act.
- Whether the defendant’s use of a trade mark comprising a map of India within an oval shape infringes the plaintiff's registered trade mark rights.
- The legal effect and scope of disclaiming the map of India element in the respective trade marks.
- The appropriateness of vacating the ex parte injunction in the context of pending rectification proceedings.
Arguments of the Parties
Defendant's Arguments
- The defendant, represented by Mr. Sahni, claims ownership of a registered trade mark No. 445968-B, comprising the word ‘Nirmal’ enclosed in an oval shape with a map of India.
- He contends that the map of India has been disclaimed in his mark, as it has been by the plaintiff in his device.
- He argues that no person can have an exclusive right to use the device of the map of India.
- Mr. Sahni referred to a 1991 Patent and Trade Mark Cases judgment supporting the proposition that a registered owner of a mark cannot be restrained by an injunction from using his registered mark.
Plaintiff's Arguments
- The plaintiff relies on the prior registration of his trade mark ‘Jindal’ No. 384816 and the injunction granted restraining the defendants from using a deceptively similar device.
- Mr. Aggarwal, representing the plaintiff, referred to the 1974 (1) ILR P and H 502 DB case involving General Motor Corporation to support the grant of injunction for infringement of a registered trade mark.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| 1991 Patent and Trade Mark Cases 233 | Registered owner of a trade mark cannot be restrained by injunction from using his registered mark. | The Court agreed respectfully with this principle, noting it as a key factor in vacating the injunction. |
| 1974 (1) ILR P and H 502 DB (General Motor Corporation v. Delco Engineering Works) | Grant of injunction to protect registered trade mark rights. | The Court found this precedent unhelpful to the plaintiff’s case in the present context. |
Court's Reasoning and Analysis
The Court analyzed the competing trade marks, noting that both parties disclaim the map of India element in their respective marks. It emphasized the exclusive right granted under Section 28 of the Trade and Merchandise Marks Act to the registered owner to use his trade mark. The Court expressed difficulty in issuing an injunction restraining a defendant from using his own registered trade mark. The Court acknowledged the consolidation of rectification proceedings with the suit, indicating that the final determination of rights would depend on evidence led in both proceedings. The Court respectfully agreed with the precedent that a registered trade mark owner cannot be restrained by injunction from using his mark. It rejected the plaintiff’s reliance on the 1974 General Motor case as inapposite. Consequently, the Court vacated the ex parte injunction order previously granted, thereby upholding the principle that injunctions cannot override statutory rights granted by registration without proper adjudication on merits.
Holding and Implications
The injunction order dated 21-09-1992 restraining the defendants from using their registered trade mark is vacated.
The direct consequence is that the defendants are permitted to use their registered trade mark during the pendency of the consolidated proceedings. The Court’s decision respects the statutory rights under Section 28 of the Trade and Merchandise Marks Act and refrains from issuing an injunction that would conflict with those rights without full evidence and adjudication. No broader precedent beyond the immediate case was established, and the final determination will follow upon evidence in the rectification and suit proceedings.
By an ex parte order passed on 21-09-1992, an injunction was issued restraining the defendants from using the aforesaid offending trade mark and device of a map of India with oval shape identical or desceptively similar to the device of the plaintiff.
2. Mr. Sahni, who appears for defendants, states that he is also the registered owner of the trade mark No. 445968-B, and that his trade mark comprises of the word ‘Nirmal’ enclosed in an oval shape with the map of India. Mr. Sahni contends that the map of India has been disclaimed by the defendants. Just like, the plaintiff also has disclaimed the map of India which is part of his device.
3. The device of the plaintiff comprises of an oval shape within which there is a map of India and the word ‘Jindal’ written upon it, and the word trade mark appears in the oval outlines.
4. The defendant's mark also has oval outlines, has a map of India, and the word ‘Nirmal’ written across the map of India.
5. The registration No. of the plaintiff's mark ‘Jindal’ is 384816, dated 31-12-1981.
6. Section 28 of the Trade and Merchandise Marks Act gives the exclusive right to use the registered trade mark. I do not see how I can, by an order of injunction, restrain the defendants from using his registered trade mark.
7. I have to note that in these proceedings, in addition to the instant suit, a rectification proceeding has been filed by the plaintiff which has been consolidated with this suit by my order dated 11-05-1994.
8. Mr. Sahni has contended that no person can have an exclusive right to use the device of the map of India. He has also referred to 1991 Patent and Trade Mark Cases 233, a judgment of this Court, saying that the registered owner of a mark can continue to use his registered mark and cannot be restrained by an order of injunction. I am in respectful agreement with that.
9. Mr. Aggarwal refers to and relied upon 1974 (1)ILR P and H 502 DB, in which General Motor Corporation of America had sued Delco Engineering Works of Ludhiana. The General Motor Corporation had contended that it is the owner of the mark ‘Delco’ which was marketing goods under that name in India, and have got its mark registered. They succeeded before the District Judge who granted the injunction sought for General Motor Corporation. In the appeal filed by Delco Engineering Works in the Punjab and Haryana High Court, the appellants before the High Court failed. I do not see how that case helps Mr. Aggarwal.
10. During the pendency of these proceedings, I do not think it will be right for me to pass an order contrary to the terms of Section 28 of the Trade and Merchandise Marks Act by holding that an owner of a registered trade mark can be restrained by an order of injunction from using his registered trade mark.
11. The position, however, will be determined upon evidence being led, both in these proceedings and in the rectification proceedings, if the mark of the defendant is liable to be rectified.
12. In these circumstances, the injunction order passed by this Court on 21-09-1992 is vacated.
13. I.A stands disposed of.
IA 4471/94
14. This is an application under Order 6, Rule 17, C.P.C. Let reply be filed.
15. To come up for hearing on 08-09-1994 at the end of “Short Matters.”
Order accordingly.
Alert