Law & Practice
INDIA: Middle Ground Avoids Consumer Confusion
Published: August 5, 2020
Mohan Dewan R K Dewan & Co. Mumbai, India INTA Bulletins—Asia-Pacific Subcommittee
Verifier: Ashwin Julka Remfry & Sagar Gurgaon, India INTA Bulletins—Asia-Pacific Subcommittee
A recent decision of the Delhi High Court highlights the potential for finding middle ground between completely prohibiting a party from using a particular mark and allowing its full use.
The plaintiff, Shree Ganesh Rolling Mills (India) Ltd., filed a suit against Jindal Rolling Mill Ltd. (defendant) at the Delhi High Court [Shree Ganesh Rolling Mills (India) Ltd. v. Jindal Rolling Mill Ltd. CS (COMM) (360/2016)] for trademark infringement. Parallel proceedings were pending between the parties before the Hyderabad Civil Court.
In its order dated June 10, 2020, the Delhi High Court refused granting an interim injunction in light of the parallel proceedings. However, the court issued an interim order directing the defendant to use its earlier marks Y. R. JINDAL and JINDAL & CO, instead of JINDAL, to avoid confusion among consumers.
The plaintiff owns a trademark registration for JINDAL in Class 6 (official no. 636128, claiming use since 1974). The defendant had registered the same mark (official no. 763109, claiming use since 1972). In 2015, the defendant filed a trademark infringement suit in the Hyderabad Civil Court against the plaintiff. The following year, when amicable settlement discussions failed, the plaintiff filed the present suit. The defendant applied for this suit to be stayed, in light of the parallel proceedings dealing with a substantially similar matter pending in the civil court.
The Delhi High Court observed that both parties have disputed each other’s prior adoption and continuous use of the JINDAL mark. In these circumstances, the court ruled that the plaintiff’s suit in Delhi cannot be adjudged prima facie nor could a trial be conducted as long as the prior suit was pending in Hyderabad.
However, the Delhi High Court went on to observe that since both parties are using the JINDAL mark for similar goods, consumers are likely to be confused. It stated that, “an interim arrangement ought to be made to ensure clarity in the mind of consumers … 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.”
The Delhi High Court observed that the defendant had previously used the Y. R. JINDAL and JINDAL & CO marks and, then, for no apparent reason, dropped the prefix and suffix and started using the JINDAL mark on its own. The court held that the defendant should use the full marks Y. R. JINDAL and JINDAL & CO” in order to reduce any confusion and protect the consumers’ interest, at least until the civil court trial is concluded.
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