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Significance of third party Coexistence Agreement in Trademark Injunction

Dispute involves the trademark 'JINDAL' in relation to PVC pipes under class 17, a conflict marked by claims and counterclaims from both the plaintiff and the defendant. A crucial factor in this dispute is a pre-existing coexistence agreement between the plaintiff and a third party, Jindal (India) Limited, which plays a pivotal role in the court's decision to decline the plaintiff's request for an injunction.

Background of the Dispute:
The dispute centers around the use of the mark 'JINDAL' on PVC pipes, with both parties asserting prior usage and registration rights. The plaintiff, holding registration no. 2697386 for the word mark 'JINDAL' in class 17 and no. 1787420 for a device mark in the same class, claims usage since April 1, 2006. This claim forms the basis of their assertion of prior use and the request for an injunction against the defendant.

On the other hand, the defendant claims to have used the mark 'JINDAL' for goods in classes 11 and 20, specifically sanitary and bathroom fittings, since 1981. They possess registrations no. 861968 in class 11 and no. 792571 in class 20. The defendant further claims the use of the mark on PVC pipes and fittings in class 17 since 2006.

Evidentiary Challenges:
A critical examination of the evidence reveals significant gaps in the plaintiff's claims. The plaintiff has failed to provide conclusive documentation that demonstrates their use of the mark 'JINDAL' on PVC pipes as of April 2006 or any subsequent period. Contrarily, the defendant has presented various documents indicating that the plaintiff's use of the mark on PVC pipes began no earlier than 2022. This discrepancy undermines the plaintiff's claim of prior use and weakens their position in seeking an injunction.

The Coexistence Agreement:
A pivotal document in this dispute is the coexistence agreement dated May 23, 1989, between the plaintiff and Jindal (India) Limited. This agreement, filed under an application under Order XXIII Rule 3 of the Civil Procedure Code in suit no. 1257/1988, acknowledges both parties as independent owners of the trademark 'JINDAL' concerning steel pipes. This mutual recognition of rights establishes a framework for shared reputation and non-exclusivity in certain market segments.

Legal Analysis
Ab Initio and Non Est Factum:

From the outset (ab initio), any claim by the plaintiff to exclusive use of the mark 'JINDAL' in class 17 is fundamentally flawed due to the coexistence agreement. The agreement, effectively a non est factum in this context, nullifies the plaintiff's assertion of exclusivity as it acknowledges the shared use of the trademark with Jindal (India) Limited.

Prior User Doctrine:
Under trademark law, the prior user of a mark typically holds superior rights. However, the plaintiff's inability to substantiate their claim of use since April 2006, coupled with the defendant's documented use since 2006, casts doubt on the plaintiff's position as the prior user. The maxim **semper necessitas probandi incumbit ei qui agit** (the necessity of proof always lies with the person who lays charges) applies here, placing the burden of proof on the plaintiff, who has failed to meet this burden.

Impact of Coexistence Agreement:
The coexistence agreement significantly impacts the plaintiff's claim. By agreeing to coexist with Jindal (India) Limited for steel pipes, the plaintiff has implicitly accepted a non-exclusive use of the trademark in related markets. The principle **qui approbat non reprobat** (one who approves cannot reject) prevents the plaintiff from now asserting exclusivity over PVC pipes, a product they adopted much later.

Dilution of Exclusivity Claim:
The plaintiff's historical willingness to share the 'JINDAL' trademark with another entity dilutes their current stand for exclusivity. This is particularly relevant given that the plaintiff's documented use of the mark on PVC pipes only begins in 2022, long after the defendant's established use. The legal principle **ex turpi causa non oritur actio** (no action arises from a base cause) further weakens the plaintiff's claim, as their late entry into the market undermines their position.

The plaintiff's claim for an injunction against the defendant based on the trademark 'JINDAL' for PVC pipes is untenable. The coexistence agreement with Jindal (India) Limited plays a crucial role in this determination, highlighting the non-exclusive nature of the plaintiff's rights. Coupled with the lack of evidence for prior use and the defendant's established usage since 2006, the plaintiff's request for an injunction fails to hold up under legal scrutiny.

Case Title: Jindal Industries Pvt. Ltd. Vs Jindal Sanitaryware Pvt. Ltd.
Judgement/Order Date: 31.05.2024
Case No. CS Comm 251 of 2023
Neutral Citation: 2023:DHC:4609
Name of Court: High Court of Delhi
Name of Hon'ble Judge: Anish Dayal. H.J.

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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