Delhi District Court
Dabur India Limited vs Gautam Burman on 9 June, 2010
IN THE COURT OF SHRI HARISH DUDANI,
ADDITIONAL DISTRICT JUDGE-15 (CENTRAL), DELHI
Suit No.313/08/91
Unique Case ID No.02401C1104552008
Dabur India Limited
8/3, Asaf Ali Road,
New Delhi 110002. ..........Plaintiff
Versus
Gautam Burman
M/s. Gautam Ayurved Bhawan
Durgakund Road
Varanasi (U.P.) ..........Defendant No.1
Gautam Burman Pvt. Ltd.
CK 15/15, Bulanala
Varanasi 221001 ..........Defendant No.2
M/s. Chemico
H-45, Connaught Place
New Delhi 110001. ..........Defendant No.3
Date of Institution of Suit : 18.04.1991
Date of Reserving Judgment : 07.06.2010
Date of Pronouncement : 09.06.2010
Suit No.313/08/91 1 of 41
JUDGEMENT
1. This is a suit for permanent injunction, restraining infringement of trade mark, passing off, rendition of accounts of profits, delivery up, etc. and for cost of the suit filed by the plaintiff.
2. The plaintiff has filed the abovenoted suit stating therein that the plaintiff is a company incorporated under the Companies Act, 1956 and Mr. B.K. Gupta is the law officer and constituted attorney of the plaintiff and is competent and duly authorised to sign and verify the plaint and institute the present suit. It is stated that the plaintiff is engaged in the business of manufacturing and selling ayurvedic and patent medicines, toilet requisites and pharmaceuticals for past more than 100 years. It is further stated that in the year 1943, the plaintiff adopted the trade mark KESHRAJ in relation to hair oil and on account of prior adoption, user, sale and excellent quality the trade mark KESHRAJ has acquired goodwill amongst the members of the purchasing public and has become distinctive of the goods of the plaintiff and thus the plaintiff is proprietor of trade mark KESHRAJ. It is also stated that apart from common law rights, the plaintiff is also the registered proprietor of the trade mark KESHRAJ and the details of registration are Suit No.313/08/91 2 of 41 as under:-
Regis. Date Class Mark Goods
No.
10330 5.1.1943 3 KESHRAJ Label Hair oil
242238 19.5.1967 3 KESHRAJ Label Hair oil
256539 6.5.1967 3 KESHRAJ Label Hair oil
It is also stated that all the aforementioned registrations are duly renewed, subsisting and conclusively valid and trade mark KESHRAJ forms an essential features of all the aforementioned trade mark registrations.
3. It is stated that the defendant No.1 and defendant No.2 are engaged in the business of manufacturing and selling hair oil and defendant No.3 is also a dealer of defendant Nos.1 & 2 in Delhi. It is also stated that the defendant No.1 is trading under the name of defendant No.2 as well and is the sole proprietor thereof. The defendants have adopted the trade mark KESHRAJ in relation to hair oil which is identical to the trade mark KESHRAJ of the plaintiff, hence, use of the trade mark KESHRAJ by defendants is bound to create confusion and deception amongst the members of the purchasing public and the trade who will be induced to believe that the goods of the defendants also originate from the plaintiff or associated or Suit No.313/08/91 3 of 41 approved by the plaintiff thereby amounting to passing off of the goods and/or business of the defendants for those the plaintiff. It is also stated that use of impugned mark KESHRAJ which is identical to trade mark KESHRAJ of the plaintiff further amounts to violation of statutory rights and infringement of trade mark registration Nos.10330, 242238 and 256539 of the plaintiff. It is also stated that plaintiff sent legal notice dated 10.03.1989 to the defendants and defendants replied vide letter dated 17.03.1989 stating that they have stopped the production of hair oil under the impugned mark. The plaintiff, consequently did not initiate any legal proceedings, however, in April 1991 it has came to the knowledge of the plaintiff that the defendant Nos.1 and 2 have restarted selling hair oil under the impugned trade mark KESHRAJ. It is stated that confusion and deception on account of the use of the impugned mark by the defendants is inevitable since the goods involved herein are purchased by unwary class of customers including housewives, lower class ladies and other inhabitants from rural or semi urban areas having below average intelligence and imperfect recollection. The confusion or deception is further inevitable since the defendant is using an identical mark in relation to identical goods. The difference in the label and carton between the competing products will not Suit No.313/08/91 4 of 41 have any bearing since it is common for any manufacturer or proprietor to use different kinds of labels and cartons. Infact the plaintiff itself has been using different kinds of labels for its hair oil sold under the trade mark KESHRAJ. It is also stated that illegal trade activities of the defendants are causing irreparable injury and loss to the goodwill, reputation and business of the plaintiff and the plaintiff estimates that the loss suffered in business shall be to the tune of over Rs.5 lakhs whereas injury to goodwill and reputation cannot be assessed in monetary terms. It is also stated that this Court has the jurisdiction to entertain and try the present suit as the goods of the defendant Nos.1 and 2 are being offered for sale and being sold at Delhi and one of the dealers of the defendant Nos.1 & 2 is defendant No.3 who is selling the goods of the said defendants under the impugned mark though in a clandestine manner and without issuance of cash memos, hence, the cause of action has arisen at Delhi and the defendant No.3 is also residing and carrying on business at Delhi. The plaintiff has prayed for a decree of permanent injunction restraining the defendants, their partners or proprietors, their servants and agents from manufacturing, selling, offering for sale, marketing, advertising, directly or indirectly dealing in hair oil under the impugned mark KESHRAJ or any other mark as may Suit No.313/08/91 5 of 41 be identical to and/or deceptively similar with the trade mark KESHRAJ of the plaintiff amounting to infringement of trade mark registration Nos.10330, 242238 & 256539 of the plaintiff or doing any other thing as may lead to confusion and deception amounting to passing off of the goods and/or business of the defendants for those of the plaintiff. Plaintiff has prayed for order for delivery up of the impugned labels, cartons, bottles, packaging material and any other material bearing the impugned mark, dies, blocks, etc to an authorised representative of the plaintiff. The plaintiff has further prayed for order for rendition of accounts of profits illegally earned by defendants on account of the use of the impugned mark alongwith cost of the suit.
4. The defendant Nos. 1 & 2 have filed written statement and have contested the suit. In the written statement, the defendantNos.1 & 2 have taken objections that this Court has no jurisdiction to try the present suit. It is admitted that they are residing and carrying on their business at Varanasi. It is stated that none of the defendant Nos.1 & 2 have ever sold hair oil under the trade mark KESHRAJ in Delhi. It is also stated that the defendant Nos.1 & 2 do not have any dealings with the defendant No.3 and have never sold KESHRAJ oil to defendant No.3, infact the Suit No.313/08/91 6 of 41 defendant No.3 has been made party to the suit only in order to confer jurisdiction to this Court. It is stated that the defendant No.3 is acting for and on behalf of or under the instructions of the plaintiff for obvious reasons. It is stated that the defendant No.1 is the registered proprietor of the trade mark KESHRAJ under No.468435 in Class 3 dated 27.02.1987 in respect of Ayurvedic Hair Oil, hence, no suit against the registered proprietor of the trade mark can be filed for infringement or passing off. It is stated that the plaintiff has concealed material facts from this Court as the plaintiff has not deliberately filed the certificates for use in legal proceedings which would have clarified the position regarding the registration and disclaimers etc. It is further stated that the plaintiff concealed the fact from this Court that the defendant No.1 who is also the Managing Director of defendant No.2 company is related to the management of the plaintiff company who has complete knowledge that the defendants are using the trade mark KESHRAJ continuously since 01.04.1986 in respect of Ayurvedic Hair Oil. It is also stated that the plaintiff concealed about the fact that the defendant No.1 has registered the subject trade mark KESHRAJ under No.468435 in Class 3 which was advertised in the Trade Marks Journal dated 16.05.1990 and the plaintiff had not filed any opposition thereto. It is also stated Suit No.313/08/91 7 of 41 that the plaintiff's attorney has no locus standi to institute the suit as he has no proper authority and competence to sign and verify the plaint and to institute the present suit. It is stated that the registration of the trade mark was obtained by plaintiff by fraud, in contravention of the provisions of Section 9, 11, 18 & 17 and the trade mark KESHRAJ was neither distinctive of the goods of the registered proprietor at the time of its registration nor has acquired distinctiveness till the date of the institution of this Suit and infact the registrations were obtained without any bonafide intention on the part of the applicants for registration that the marks should be used in relation to the goods i.e. the hair oil and it has infact not been so used in respect of the goods as a trade mark during the past from 1943. It is stated that the plaintiff is related to the defendant No.1 and defendant No.2 apart from being in the same trade since long and by virtue of such a close association between plaintiff and defendant Nos.1 & 2, the plaintiff is bound to have known the defendant and their business activities from 1986 onwards. The defendant adopted the mark KESHRAJ on 01.04.1986, openly and extensively used it during the course of their business, advertised the mark commercially and by virtue of sales promotion work acquired valuable goodwill and reputation with regard to the trade mark in respect of the goods. It is also Suit No.313/08/91 8 of 41 stated that the plaintiff has not paid proper Court Fee and the suit has not been properly valued for the purpose of Court Fee and jurisdiction. It is also stated that the goods of the plaintiff and the goods of the defendant No.2 are of two different categories and there cannot be any confusion between the two and the defendant No.2 produces Ayurvedic medicated oil, based on herbs and the ingredients are given on each carton, which cannot be mistaken for the cosmetic preparation for ordinary use of the plaintiff and the defendant No.2 possesses the mandatory licence to produce an Ayurvedic preparation and the plaintiff did not possess any such licence till 1991. It is also stated that one of the basic shortcomings in the plaint is regarding the non-user by the plaintiff of the trade mark he claims. A trade mark can be kept alive only by constant use. Continued non-use will lead to its eventual death. Section 46 of the Act provides for removal of a trade mark from the register on the ground of non-use. The object underlying Section 46(1) of the Trade and Merchandise Marks Act is to prevent trafficking in trade marks and a trade mark is meant to distinguish the goods made by another and therefore, a trade mark cannot exist in vacuo and it only exists in connection with the goods in relation to which it is used or intended to be used. Defendant Nos.1 & 2 have denied that the plaintiff has used the Suit No.313/08/91 9 of 41 trade mark KESHRAJ in respect of hair oil. Defendant Nos. 1 & 2 have denied that because of the use of trade mark KESHRAJ by defendant any confusion or deception has been created. It is stated that the plaintiff and its predecessors have never used trade mark KESHRAJ. It is denied that the defendant Nos.1 & 2 had stopped using the trade mark KESHRAJ, rather the plaintiff had full knowledge that the defendant Nos.1 & 2 has been continuously using the trade mark and had also been advertising the same. It is also denied that the trade activities of the defendants are illegal or are causing any injury whatsoever of any kind to the plaintiff. While denying rest of the case of the plaintiff, the defendant Nos.1 & 2 have prayed for dismissal of the suit.
5. In the written statement, the defendant No.3 has taken objections that present suit is malafide against the defendant No.3 who has no connection/relations/trade dealing even remotely with defendant Nos.1 & 2. It is stated that the defendant No.3 has been impleaded falsely to confer jurisdiction on Court in Delhi. It is stated that the present suit is contrary to the mandatory requirement of order 29 CPC. While denying almost entire case of the plaintiff qua defendant No.3, the defendant No.3 has sought dismissal of the present suit with Suit No.313/08/91 10 of 41 cost.
6. The plaintiff has filed replications to the written statements of defendants. In the replications, the plaintiff has reiterated the contents of plaint and has controverted the allegations of the defendants as alleged in the written statements.
7. From the pleadings of the parties, following issues were framed by my ld. Predecessor on 10.09.2007:-
1. Whether this Court has territorial jurisdiction to entertain the present suit?
2. Whether the plaintiff is the proprietor of the trade mark KESHRAJ?
3. Whether the use by the defendant of the mark KESHRAJ in respect of hair oil of its manufacture amounts to infringement of the plaintiffs registered trade marks?
4. Whether the plaintiff had any cause of action against defendant No.3 and whether the said defendant ever sold the hair oil manufactured by defendant No.1 & 2 bearing the trade mark 'KESHRAJ' in Delhi.
5. Relief.
8. To prove its case, the plaintiff examined Shri B.K. Gupta, Senior Manager of the plaintiff company as PW-1.
Suit No.313/08/91 11 of 41
9. In order to prove its defence, defendant Nos.1 & 2 have examined Shri Sharad Jain, legal heir of late Shri Mohan Lal Jain, partner of Gautam Ayurved Bhawan as DW-1 and Shri Bandhu Ram, Record Keeper, Trade Mark Registry, Dwarka, New Delhi as DW2. Defendant No.3 examined Shri Neeraj Gupta, proprietor of defendant No.3 as D3W1.
10. I have heard the ld. Counsel for parties and carefully perused the record. My findings on the specific issues are as under :-
11. Issue Nos. 1 & 4Since both these issues involve common discussion of facts and law, hence, for the sake of brevity, both these issues are being taken up together. In para 1 of PO of WS, defendant nos. 1 & 2 have taken the objection this Court has no jurisdiction to try the present suit as the defendants are residing and carrying on their business at Varanasi and defendant nos. 1 & 2 have never sold their oil under the trade mark KESHRAJ in Delhi and defendant nos. 1 & 2 have no dealings with defendant no. 3 and have never sold KESHRAJ oil to defendant no. 3. In the same para of WS, defendant nos. 1 & 2 have pleaded that defendant no. 3 has been made a party to the suit only in order to confer Suit No.313/08/91 12 of 41 jurisdiction on this Court without filing any evidence. In para 2 of PO of WS, defendant no. 3 has also taken the objection that defendant no. 3 has been impleaded falsely by the plaintiff with an ulterior motive to confer jurisdiction on the Courts in Delhi and the plaintiff is fully aware that defendant no. 3 has nothing to do with defendant nos. 1 & 2. In para 1 of the PO of WS, defendant no. 3 has stated that the suit is malafide against defendant no. 3 who has no connection/relation/trade dealings even remotely with defendant nos. 1 & 2.
12. The present suit has been filed by the plaintiff against three defendants and as per memo of parties, defendant nos. 1 & 2 are based at Varanasi (U.P.) and the address of defendant no. 3 is of New Delhi. In para 6 of the plaint, the plaintiff has stated that defendant nos. 1 & 2 are engaged in the business of manufacturing and selling hair oil and defendant no. 3 is also a dealer of defendant nos. 1 & 2 in Delhi. In para 13 of the plaint, the plaintiff has stated that this Court has the jurisdiction to entertain and try the present suit as goods of defendant nos. 1 & 2are being offered for sale and are being sold at Delhi and one of the dealer of defendant nos. 1 & 2 is defendant no. 3 who is selling goods of the said defendants under the impugned mark though in clandestine manner and without issuance of Suit No.313/08/91 13 of 41 cash memos, hence, cause of action has arisen at Delhi and defendant no. 3 is also residing and carrying on business at Delhi. Hence, as per para 13 of the plaint, in order to make out jurisdiction of the Courts at Delhi, the plaintiff has pleaded that defendant no. 3 is marketing the goods of defendant nos. 1 & 2 in Delhi and defendant no. 3 is also residing and carrying on business at Delhi.
13. The contention of ld. Counsel for defendant nos. 1 & 2 is that this Court has no territorial jurisdiction to entertain and try the suit as defendant nos. 1 & 2 are based at Varanasi and they are carrying on business or personally work for gain at Varanasi (U.P.) and the sole purpose with which defendant no. 3 has been impleaded in this suit is to confer jurisdiction on this Court as defendant no. 3 is based at Delhi and the plaintiff has failed to prove that defendant no. 3 has ever sold any goods of defendant nos. 1 & 2 in Delhi or that defendant no. 3 has any connection with defendant nos. 1 & 2. The contention of ld.
Counsels for the defendants is that the present suit was filed in the year 1991 and the provisions of Trade and Merchandise Marks Act, 1958 are applicable to this case as the present suit has been filed prior to enactment of Trade Marks Act, 1999. The contention of ld. Counsel for the defendants is that Trade Suit No.313/08/91 14 of 41 and Merchandise Marks Act, 1958 did not provide for place of trial as provided by Section 134 of the Trade Marks Act, 1999, hence, the suit in respect of infringement of trade mark and passing off shall be governed by provisions of Section 20 of CPC. However, ld. Counsel for the plaintiff has contended that the present suit shall be governed by provisions of Section 134 of Trade Marks Act, 1999 as the suit has to be decided on the basis of law which is prevailing at the time of adjudication of the dispute. In support of his contention, ld. Counsel for the plaintiff has relied on decision in Sudhir G. Angur and Others v. M. Sanjeev and Others, (2006) 1 Supreme Court Cases 141 wherein decision in Shiv Bhagwan Moti Ram Saraoji v. Onkarmal Ishar Dass, AIR 1952 Bom 365 was relied and it was held that it is well settled that all procedural laws are retrospective unless the legislature expressly states to the contrary.
14. Ld. counsels for the defendants have contended that the decision in Sudhir G. Angur and Others v. M. Sanjeev and Others (supra), itself states that once the legislature has expressly stated that the suit shall be governed by the law in force at the time of institution of the suit, hence, in the present case the provisions of Section 134 of Trade Marks Act, 1999 Suit No.313/08/91 15 of 41 shall not apply in view of provisions of Section 159(4) of the same Act i.e. Trade Marks Act, 1999.
15. Section 159(1) of the Trade Marks Act, 1999 provides that the Trade and Merchandise Marks Act, 1958 is hereby repealed. A bare reading of Section 159(4) of Trade Marks Act, 1999 provides that any legal proceeding pending in any Court at the commencement of the Trade Marks Act, 1999 may be continued in that Court if the Trade Marks Act, 1999 had not been passed. The provisions of Section 159(4) of Trade Marks Act, 1999 clearly show that the proceedings already continuing under the Trade and Merchandise Marks Act, 1958 shall continue as if the Trade Marks Act, 1999 has not come into existence which amply prove that the cases filed prior to enactment of the Trade Marks Act, 1999 shall be governed by the provisions of the Trade and Merchandise Marks Act, 1958.
16. The contention of ld. Counsel for the plaintiff is that the defendants have filed copy of the Journal in which the application for registration of trade mark of defendant nos. 1 & 2 was published and in the same word Delhi is used and as the said Journal was published in Delhi, hence, this Court has the jurisdiction to try the suit. In para 4(c) of the affidavit Suit No.313/08/91 16 of 41 Ex.DW1/A, defendants have stated that defendant no. 1 has registered the trade mark KESHRAJ under no. 468438 in class 3 which was advertised in Trade Marks Journal dated 16.05.1990 and copy of the said Trade Marks Journal is Ex.D2. The question whether the filing of application for registration of trade mark would confer jurisdiction at the place where said application was filed was considered by the Hon'ble Supreme Court in the case of Dhodha House & Patel Field Marshal Industries vs. S. K. Maingi & P. M. Diesel Ltd., 2006 (32) PTC 1 (SC), 2006 I AD (S.C.) 26 and the Hon'ble Court was pleased to hold :
"32. A cause of action will arise only when a registered trade mark is used and not when an application is filed for registration of the trade mark. In a given case, an application for grant of registration certificate may or may not be allowed. The person in whose favour, a registration certificate has already been granted indisputably will have an opportunity to oppose the same by filing an application before the Registrar, who has the requisite jurisdiction to determine the said question. In other words, a suit may lie where an infringement of trade mark or copyright takes place but a cause of action for filing the suit would not arise within the jurisdiction of the court only because an advertisement has been issued in the Trade Marks Journal or any other journal, notifying the factum of filing of such an application."
Suit No.313/08/91 17 of 41
17. In Dhodha House & Patel Field Marshal Industries vs. S. K. Maingi & P. M. Diesel Ltd. (supra), the question for consideration before the Hon'ble Court was as to whether the cause of action in terms of both the Acts i.e. Copyright Act, 1957 and Trade and Merchandise Marks Act, 1958 though may be different, would a suit be maintainable in a Court only because it has the jurisdiction to entertain the same in terms of Section 62(2) of the 1957 Act. It was held :
47. ...............................................The territorial jurisdiction conferred upon the court in terms of the provisions of the Code of Civil Procedure indisputably shall apply to a suit or proceeding under the 1957 Act as also the 1958 Act. Sub-
section (2) of Section 62 of the 1957 Act provides for an additional forum. Such additional forum was provided so as to enable the author to file a suit who may not otherwise be in a position to file a suit at different places where his copyright was violated. The Parliament while enacting the Trade and Merchandise Marks Act in the year 1958 was aware of the provisions of the 1957 Act. It still did not choose to make a similar provision therein. Such an omission may be held to be a conscious action on the part of the Parliament. The intention of the Parliament in not providing for an additional forum in relation to the violation of the 1958 Act is, therefore, clear and explicit. The Parliament while enacting the Trade Marks Act, 1999 provided for such an additional forum Suit No.313/08/91 18 of 41 by enacting sub-section (2) of Section 134 of the Trade Marks Act. The court shall not, it is well well-settled, readily presume the existence of jurisdiction of a court which was not conferred by the statute...............................................................
18. Ld. counsel for the defendants has relied on decision in Dhodha House & Patel Field Marshal Industries vs. S. K. Maingi & P. M. Diesel Ltd., 2006 (32) PTC 1 (SC) wherein the Hon'ble Supreme Court examined question of extent of jurisdiction of civil Court to determine a lis regarding infringement of the provisions of Copyright Act, 1957 and Trade and Merchandise Marks Act, 1958. In this case the Hon'ble Supreme Court held :
"19. Cause of action, as is well-settled, is a bundle of facts which are necessary to be proved in a given case. Cause of action, it is trite, if arises within the jurisdiction of the court concerned empowers the court to entertain the matter.........."
20. The jurisdiction of the District Court to determine a lis under the 1957 Act as also the 1958 Act must, thus, be instituted where the whole or a part of cause of action arises. Sub- section (2) of Section 62 of the 1957 Act provides for an additional Forum therefor in the following terms :
"(2) For the purpose of sub-section (1), a "District Court having jurisdiction" shall, Suit No.313/08/91 19 of 41 notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908), or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of institution of the suit or other proceeding, the person instituting the suit or other proceeding or, where there are more than one such persons, any of them actually and voluntarily resides or carries on business or personally works for gain."
21. Admittedly, no such additional Forum had been created in terms of the provisions of the 1958 Act."
19. In Dhodha House's case (supra), the Hon'ble Supreme Court held that the objects and reasons for engrafting the provisions of Section 62(2) of Copyright Act, 1957 was to enable the authors to file a suit for violation of the Copyright Act, 1957 at the place where they reside. It was further held that in terms of sub-section (1) of Section 62, suit can be instituted and the proceedings can be initiated in respect of matter arising out of the said chapter for infringement of the copyright in any work or the infringement of any other right conferred thereunder and does not confer jurisdiction upon a District Court where the plaintiff resides, if a cause of action arises under the Trade and Merchandise Marks Act, 1958. The Hon'ble Supreme Court Suit No.313/08/91 20 of 41 held that :
"24. Order II Rule 3 of the Code provides that the plaintiff may unite in the same suit several causes of action against the same defendant, or the same defendants jointly. The said order contemplates uniting of several causes of action in the same suit. By necessary implication, a cause of action for infringement of Copyright and a cause of action for infringement of Trade Mark or a cause of action of passing off would be different. Even if one cause of action has no nexus with another, indisputably Order II Rule 3 may apply. However, by reason of application of Order II Rule 3 of the Code ipso facto would not confer jurisdiction upon a court which had none so as to enable it to consider infringement of trade mark under the 1957 Act as also the 1958 Act.
25. It is trite law that a judgment and order passed by the court having no territorial jurisdiction would be nullity."
20. In order to support his contention that this Court has the territorial jurisdiction against defendant nos. 1 & 2, ld. Counsel for the plaintiff has relied on decision in M/s Jawahar Engineering Company and Others, Ghaziabad vs. M/s Jawahar Engineers Pvt. Ltd. Sri Rampur, Distt. Ahmednagar, Maharashtra, (1983-PTC-207). The decision in M/s Jawahar Engineering Company and Others, Suit No.313/08/91 21 of 41 Ghaziabad vs. M/s Jawahar Engineers Pvt. Ltd. Sri Rampur, Distt. Ahmednagar, Maharashtra (supra), was also referred in Dhodha House & Patel Field Marshal Industries vs. S. K. Maingi & P. M. Diesel Ltd., 2006 (32) PTC 1 (SC) and in para 28 of the said judgment, the Hon'ble Supreme Court observed that ld. Counsel for the appellants has placed strong reliance on the decision in M/s Jawahar Engineering Company and Others, Ghaziabad vs. M/s Jawahar Engineers Pvt. Ltd. Sri Rampur, Distt. Ahmednagar, Maharashtra, (1983-PTC-207) and the Hon'ble Supreme Court held :
31. The said decision has no application in the instant case for more than one reason. For the purpose of registration of a trade mark, an application must be filed in the branch office of the Registrar of Trade Marks. It is not in dispute that under Section 5(3) of the 1958 Act, the Central Government has issued a notification in the official gazette defining the territorial limits within which an office of the Trade Marks Registry may exercise its functions. The office of the Trade Marks Registry at New Delhi exercises jurisdiction over the States of Haryana, Himachal Pradesh, Jammu & Kashmir, Punjab, Rajasthan and Uttar Pradesh and the Union Territory of Chandigarh and National Capital Territory of Delhi. Whereas in M/s Dhodha House v. S. K. Maingi, no such application has been filed, Suit No.313/08/91 22 of 41 admittedly in M/s Patel Field Marshal Industries & Ors. v. M/s P. M. Diesels Ltd, the Delhi office has no jurisdiction as parties are residents of Rajkot and an application was filed by the Appellant for registration of its trade mark at Bombay. If an objection is to be filed, the same has to be filed at Bombay. An advertisement by itself in a journal or a paper would not confer jurisdiction upon a court, as would be evident from the following observations of this Court in Oil and Natural Gas Commission vs. Utpal Kumar Basu and Others [(1994) 4 SCC 711)] :
"Therefore, broadly speaking, NICCO claims that a part of the cause of action arose within the jurisdiction of the Calcutta High Court because it became aware of the advertisement in Calcutta, it submitted its bid or tender from Calcutta and made representations demanding justice from Calcutta on learning about the rejection of its offer. The advertisement itself mentioned that the tenders should be submitted to EIL at New Delhi; that those would be scrutinised at New Delhi and that a final decision whether or not to award the contract to the tenderer would be taken at New Delhi. Of course, the execution of the contract work was to be carried out at Hazira in Gujarat. Therefore, merely because it read the advertisement at Calcutta and submitted the offer from Calcutta and made representations from Suit No.313/08/91 23 of 41 Calcutta would not, in our opinion, constitute facts forming an integral part of the cause of action. So also the mere fact that it sent fax messages from Calcutta and received a reply thereto at Calcutta would not constitute an integral part of the cause of action."
21. In The Jay Engineering Works Ltd. vs. Ramesh Aggarwal, 2006 (33) PTC 561 (Del.) which was a composite suit under the Trade and Merchandise Marks Act, 1958 claiming infringement of trade mark based on right in the trade mark and passing off and Copyright Act, 1957 for infringement of registered and unregistered copyright and Designs Act, 2000 for infringement of registered design. The Hon'ble Court observed :
"8. At this juncture, it may pertinently be pointed out that the defendant is not disputing the jurisdiction of this Court under Section 62 (2) of the Copyright Act, 1957 (though the infringement of copyright is naturally disputed), but seeks to anchor its case on the judgment delivered by the Apex Court in 2006 (32) PTC 1 (SC) Dhoda House and Patel Field Marshal Industries v. S. K. Maingi and P. M. Diesel Ltd. The contention of the defendant is that the plaintiff in the jurisdiction paragraph, as set out above, has claimed jurisdiction of this Court on Suit No.313/08/91 24 of 41 the basis of a wrong view of law that : "Since the suit based on copyright is available in this Hon'ble Court, the plaintiffs are entitled to sue the defendant in this Hon'ble Court for passing off as well as infringement of trademarks and registered design". This proposition of the plaintiff, the defendant asserts, is contrary to the law laid down by the Hon'ble Supreme Court in the case of Dhoda House (supra)."
"15. As stated at the outset, there is no dispute that for the relief of infringement of Copyright, this Court is vested with jurisdiction by virtue of Section 62(2) of the Copyright Act, in as much as the plaintiff admittedly has its registered office in Delhi and carries on business and works for gain in Delhi. There is no quarrel thus far. The contention of the defendant, however, is that in view of the law laid down by the Apex Court in Dhodha House (supra), this Court has no territorial jurisdiction in respect of the cause of action pertaining to infringement of trade mark, infringement of design and passing off, which part of the cause of action will be governed by Section 20 of the CPC. The defendant is from Hyderabad from where it is manufacturing and exporting its products to the Middle East. It neither resides nor carries on business in Delhi.
"29. In view of the aforesaid discussion, it must be held that the ratio of the decision of the Supreme Court in Dhoda House (supra) is squarely applicable. So far as the reliefs Suit No.313/08/91 25 of 41 pertaining to infringement of trademark, design and passing off are concerned, this court will have no jurisdiction to entertain the present suit. Needless to state that for the relief against infringement of copyright, this court has the jurisdiction. Accordingly, it will be open to the plaintiff to file a fresh suit in the court of competent jurisdiction so far as the reliefs for infringement of trademark, design and passing off are concerned."
22. In Dabur India Limited vs. K. R. Industries, 2008 (37) PTC 332 (SC) it was held :
"19. In Dhodha House (supra) this Court was concerned with the correctness of judgments of the Allahabad High Court in Surendra Kumar Maingi vs. M/s Dodha House, [AIR 1998 Allahabad 43] and the decision of the Delhi High Court in : P. M. Diesels Ltd. v. M/s Patel Field Marshal, [AIR 1998 Delhi 225]
20. It was clearly held that a judgment passed by a court having no territorial jurisdiction is a nullity. As regards the cause of action under the 1957 Act and a cause of action under the 1958 Act and or a passing off action, it was held that sub-section (2) of Section 62 would confer jurisdiction on a court where the plaintiff resides. The cause of action in respect of others was stated to be where the defendant resides. It was also noticed that in a given case the petition under the 1957 Act or 1958 Act may Suit No.313/08/91 26 of 41 be overlapping, holding :-
"44. The territorial jurisdiction conferred upon the court in terms of the provisions of the Code of Civil Procedure indisputably shall apply to a suit or proceeding under the 1957 Act as also the 1958 Act. Sub-section (2) of Section 62 of the 1957 Act provides for an additional forum. Such additional forum was provided so as to enable the author to file a suit who may not otherwise be in a position to file a suit at different places where his copyright was violated. Parliament while enacting the Trade and Merchandise Marks Act in the year 1958 was aware of the provisions of the 1957 Act. It still did not choose to make a similar provision therein. Such an omission may be held to be a conscious action on the part of Parliament. The intention of Parliament in not providing for an additional forum in relation to the violation of the 1958 Act is, therefore, clear and explicit."
21. Noticing that whereas in Dhoda House (supra) the infringement complained of primarily was that of 1958 Act and not under the 1957 Act, in Patel Field Marshal (supra) the thrust was on the sale of products and/or advertisement by the appellant for registration of trade marks in the Trade Marks Journal and other local papers. The law was stated in the following terms :-
"54. For the purpose of invoking the Suit No.313/08/91 27 of 41 jurisdiction of a court only because two causes of action joined in terms of the provisions of the Code of Civil Procedure, the same would not mean that thereby the jurisdiction can be conferred upon a court which had jurisdiction to try only the suit in respect of one cause of action and not the other.
Recourse to the additional forum, however, in a given case, may be taken if both the causes of action arise within the jurisdiction of the court which otherwise had the necessary jurisdiction to decide all the issues."
23. As per the plaint filed by the plaintiff, plaintiff is a company registered under the Companies Act having its registered office at 8/3, Asaf Ali Road, New Delhi and defendant nos. 1 & 2 are based at Varanasi (U.P.) and the suit against defendant no. 3 has been filed stating in para 6 and 13 of the plaint that defendant no. 3 is dealer of defendant nos. 1 & 2 and is selling the hair oil made by defendant nos. 1 & 2 in Delhi. By way of the present suit, the plaintiff has prayed for decree of permanent injunction restraining the defendants from manufacturing, selling, offering for sale, marketing, advertising directly or indirectly dealing in hair oil under the impugned mark KESHRAJ or any other mark as may be identical and/or deceptively similar to the KESHRAJ of the plaintiff amounting Suit No.313/08/91 28 of 41 to infringement of trade mark registration nos. 10330, 242238 & 256539. The plaintiff has also prayed for a decree of permanent injunction restraining the defendants from manufacturing, selling, offering for sale, marking, advertising, directly or indirectly dealing in hair oil under the impugned mark KESHRAJ or any other mark as may be identical to and/or deceptively similar to the trade mark of the plaintiff or doing any other thing as may lead to confusion and deception amounting to passing off of the goods and/or business of the defendants for those of the plaintiff.
24. The plea of the defendants is that the suit against defendant nos.
1 & 2 could not have been filed at Delhi and in order to confer jurisdiction on this Court, the plaintiff has impleaded defendant no. 3 in the suit on the ground that defendant no. 3 is selling the products of defendant nos. 1 & 2 in Delhi. The contention of ld. Counsel for the defendants is that the plaintiff has failed to prove that defendant no. 3 has ever sold any product of defendant nos. 1 & 2 in Delhi.
25. In order to bring the suit within the territorial jurisdiction of this Court as regards the reliefs claimed in respect of Trade and Merchandise Marks Act, 1958 is concerned, the plaintiff was Suit No.313/08/91 29 of 41 required to prove that the suit has been filed in terms of Section 20 of CPC which reads as under :
20.Other suits to be instituted where defendants reside or cause of action arises.--Subject to the limitations aforesaid, every suit shall be instituted in a Court within the local limits of whose jurisdiction-
(a)the defendant, or each of the defendants where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain; or
(b)any of the defendants, where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain, provided that in such case either the leave of the Court is given, or the defendants who do not reside, or carry on business, or personally work for gain, as aforesaid, acquiesce in such institution; or
(c)the cause of action, wholly or in part, arises.
26. As per plaint itself, the defendant nos. 1 & 2 are based at Varanasi (Uttar Pradesh). In order to confer jurisdiction on this Court, the plaintiff has impleaded defendant no. 3 in the suit stating in para 6 & 13 of the plaint that goods of defendant nos. 1 & 2 are being offered for sale and are being sold in Delhi through defendant no. 3 who is one of the dealers of defendant nos. 1 & 2. The plaintiff examined Shri B. K. Gupta as PW-1 Suit No.313/08/91 30 of 41 who adduced evidence by way of affidavit Ex.PW1/A. In para 7 of affidavit Ex.PW1/A, the plaintiff has stated that defendant no. 3 is the dealer of defendant nos. 1 & 2 in Delhi. In para 17 of the affidavit Ex.PW1/A, the plaintiff has stated that impugned goods of defendant nos. 1 & 2 are offered for sale and are being sold at Delhi through defendant no. 3 in clandestine manner under the impugned trade mark. In the cross-examination, PW-1 was asked a specific question by ld. Counsel for defendant nos. 1 & 2 that whether he has any documentary proof to show that defendant no. 2had sold their oil in Delhi under the trade mark KESHRAJ at any point of time to which PW-1 replied that defendant no. 2 company sold the said oil in Delhi through defendant no. 3 who is a distributor of defendant no. 2. Thereafter, in the cross- examination, PW-2 further stated that he is not aware of the fact whether defendant nos. 1 & 2 have any commercial dealing with defendant no. 3. Although, PW-1 denied the suggestions in the cross-examination to the effect that the oil under the trade mark KESHRAJ has never been sold or launched by defendant nos. 1 & 2 in Delhi and defendant no. 3 has been impleaded only to create territorial jurisdiction to entertain the suit by Delhi Courts but in the cross-examination, PW-1 admitted that they have not filed even a single document on Suit No.313/08/91 31 of 41 record which may show that defendant no. 3 has ever sold the oil under the trade mark KESHRAJ being manufactured by defendant nos. 1 & 2 in Delhi. Thereafter, in the cross- examination by defendant no. 3, PW-1 stated in the cross- examination that it is correct that he does not personally know whether defendant no. 3 is an authorised stockist/distributor/dealer of defendant no. 1 & 2. PW-1 further stated in the cross-examination by defendant no. 3 that their company's salesman had gone to the shop of defendant no. 3 to purchase the oil under the trade mark KESHRAJ and then they came to know that defendant no. 3 has been selling products of defendant nos. 1 & 2 in a clandestine manner. Thereafter, PW- 1 further stated in the cross-examination that the salesman did not give his report in writing and the name of the said salesman is A. K. Batra and they have not mentioned his name in the plaint as the source through whom they had come to know about the clandestine sale of the product of defendant nos. 1 & 2 by defendant no. 3. Thereafter, PW-1 further admitted in the cross-examination that nowhere in the plaint, they have mentioned that their salesman had gone to the shop of defendant no. 3 to purchase the hair oil under the trade mark KESHRAJ. It is only in para 6 and 13 of the plaint that the plaintiff has mentioned that defendant no. 3 is selling the Suit No.313/08/91 32 of 41 products of defendant nos. 1 & 2 in Delhi and on that account he has been impleaded as a party in the suit but in the plaint, the plaintiff has nowhere stated that from which source they came to know that defendant no. 3 is selling the products of defendant nos. 1 & 2 in Delhi and the plaintiff has also not mentioned in the plaint or in the affidavit Ex.PW1/A about the details of the persons from whom they came to know that defendant no. 3 has been selling products of defendant nos. 1 & 2 in Delhi. PW-1 has not proved that the plaintiff or its any representative purchased the goods of defendant nos. 1 & 2 under the impugned trade mark from defendant no. 3. In the cross-examination, PW-1 has for the first time stated that it is Shri A. K. Batra, salesman of plaintiff, who had informed about the sale of products of defendant nos. 1 & 2 by defendant no. 3. However, in the pleadings or in the affidavit Ex.PW1/A, the plaintiff has not mentioned that the plaintiff came to know through Shri A. K. Batra that defendant no. 3 is selling products of defendant nos. 1 & 2 under the impugned trade mark. Although, in the cross-examination, PW-1 stated that Shri A. K. Batra had gone to the shop of defendant no. 3 to purchase the goods of defendant nos. 1 & 2 under the impugned trade mark but PW-1 has not stated that Shri A. K. Batra has purchased any goods under the impugned trade mark from defendant no. 3.
Suit No.313/08/91 33 of 41 The plaintiff has also not examined Shri A. K. Batra who had allegedly gone to purchase the impugned goods belonging to defendant nos. 1 & 2 from defendant no. 3. The plaintiff has not filed any document on record which would show that defendant no. 3 was selling the products of defendant nos. 1 & 2 under the impugned trade mark.
27. The plea which has been taken by defendant nos. 1 & 2 is that defendant nos. 1 & 2 are based at Varanasi (U.P.) and they have no dealings with defendant no. 3 and defendant no. 3 has been impleaded in the suit only to confer jurisdiction on this Court. In para 2 & 16 of the affidavit Ex.DW1/A, the defendant nos. 1 & 2 have stated that defendant nos. 1 & 2 do not have any dealings with defendant no. 3 and they have never sold KESHRAJ oil to defendant no. 3 and defendant no. 3 has been made a party to the suit only in order to confer jurisdiction on this Court. Although, in para 2 of the affidavit Ex.DW1/A, defendant nos. 1 & 2 have taken specific plea that they have no dealings with defendant no. 3 and defendant no. 3 was not selling products of defendant nos. 1 & 2 and defendant no. 3 has been impleaded as a party only to confer jurisdiction on this Court but in the cross-examination of DW-1, no suggestions have been given by the plaintiff to the effect that defendant no.
Suit No.313/08/91 34 of 41 3 is a dealer of defendant nos. 1 & 2 and defendant nos. 1 & 2 were selling their products under the impugned trade mark through defendant no. 3 in Delhi.
28. Defendant no. 3 examined Shri Neeraj Gupta, its proprietor as D3W1 who adduced evidence by way of affidavit Ex.D3W1/A. In para 2 of the affidavit Ex.D3W1/A, defendant no. 3 has stated that defendant no. 3 has no trade dealings with defendant nos. 1 & 2. In para 3 of the affidavit Ex.D3W1/A, defendant no. 3 has stated that defendant no. 3 has been falsely impleaded by the plaintiff to confer jurisdiction on the Courts in Delhi. D3W1 stated in the cross-examination that he has been stockist of M/s Dabur India for about 10-12 years. D3W1 was specifically asked a question by ld. Counsel for the plaintiff in the cross-examination that whether he is aware that defendant nos. 1 & 2 were dealing in one Keshraj oil which is similar to the Keshraj oil made by the plaintiff to which he replied in negative. D3W1 denied suggestion of the plaintiff in the cross- examination that he was selling KESHRAJ oil of defendant nos. 1 & 2. D3W1 also denied suggestion of the plaintiff in the cross-examination that he was selling products of defendant nos. 1 & 2 without issuing cash memos. It is to be noted that PW-1 stated in the cross-examination that plaintiff came to Suit No.313/08/91 35 of 41 know from Shri A. K. Batra, Salesman of the plaintiff that defendant no. 3 is selling products of defendant nos. 1 & 2 in clandestine manner, however, in the cross-examination of D3W1 but no suggestions were given to the effect that Shri A. K. Batra, Salesman of the plaintiff had visited defendant no. 3 and that defendant no. 3 offered him products of defendant nos. 1 & 2 under the impugned trade mark. No suggestion was given to D3W1 in the cross-examination by the plaintiff that he has sold the KESHRAJ oil manufactured by defendant nos. 1 & 2 without issuing any cash memo to the representative of the plaintiff. The plaintiff has failed to prove that defendant no. 3 has ever sold hair oil manufactured by defendant nos. 1 & 2 bearing the trade mark KESHRAJ in Delhi and that they had any cause of action against defendant no. 3.
29. Ld. counsel for the defendants has also relied upon decision in St. Ives Laboratories Inc. v. Arif Perfumers & Anr., 157 (2009) Delhi Law Times 492 wherein it was held :
6. It is well settled legal position that cause of action is a bundle of material facts which are necessary for the plaintiff to prove his case in order to entitle him to succeed in a given case. However, each and every fact pleaded in the plaint does not ipso facto lead to conclusion that those facts give rise to cause Suit No.313/08/91 36 of 41 of action within the Court's territorial jurisdiction. The facts pleaded must have a nexus or relevance so as to show that the Court where the suit has been filed is the proper Court of jurisdiction. Facts, which have no bearing with the lis or the dispute involved in the case, do not given rise to a cause of action so as to confer territorial jurisdiction. In M/s. Kusum Ingots and Alloys Ltd. v. Union of India and Anr., III (2004) BC 56 (SC)=III (2004) SLT 565=111 (2004) DLT 480 (SC)=(2004) 6 SCC 254, Supreme Court observed that if a small fraction of cause of action accrued had arisen within the territorial jurisdiction of a particular High Court, it was not bound to entertain the petition. It would be sufficiently empowered to refer the petition to the Court where substantial cause of action had arisen and it would be more convenient to adjudicate the matter.
30. In their WS, the defendants have pleaded that this Court has no territorial jurisdiction as defendant nos. 1 & 2 are based at Varanasi (U.P.) and defendant no. 3 has been impleaded in order to confer jurisdiction on this Court. In the aforesaid discussions, it has been held that the plaintiff has failed to prove that defendant no. 3 has ever sold the hair oil manufactured by defendant nos. 1 & 2 bearing the trade mark KESHRAJ in Delhi and the plaintiff has failed to prove any cause of action against defendant no. 3. As the plaintiff has Suit No.313/08/91 37 of 41 failed to prove any cause of action against defendant no. 3, the failure on the part of the plaintiff to substantiate the cause of action against defendant no. 3 proves the contention of defendant no. 3 that defendant no. 3 has only been impleaded as a party in order to confer jurisdiction on this Court because if only defendant nos. 1 & 2 were impleaded as party then this Court would not have the territorial jurisdiction. Hence, in view of aforesaid discussions, it is held that regarding the reliefs as claimed pertaining to infringement of trade mark and passing off under the provisions of Trade and Merchandise Marks Act, 1958, this Court has no territorial jurisdiction to entertain the present suit. Accordingly, it is open for the plaintiff to file a fresh suit against defendant nos. 1 & 2 in a Court of competent jurisdiction so far as reliefs of infringement of trade mark and passing off are concerned. Both these issues stand answered accordingly.
31. Issue Nos. 2 & 3Since both these issues involve common discussion of facts and law, hence, for the sake of brevity, both these issues are being taken up together. The present suit has been filed by the plaintiff stating that defendant nos. 1 & 2 have adopted the trade mark KESHRAJ in relation to the hair oil which is Suit No.313/08/91 38 of 41 identical to the trade mark of the plaintiff and the plaintiff has sought decree of injunction thereby restraining the defendants from dealing in hair oil under the impugned mark KESHRAJ or any other mark identical to and/or deceptively similar with the trade mark KESHRAJ of the plaintiff amounting to infringement and also for restraining the defendants from dealing in hair oil under the impugned mark KESHRAJ or any other mark as may lead to confusion and deception amounting to passing off of the goods and/or business of the defendants for those of the plaintiff. The plaintiff has impleaded defendant no. 3 in the suit on the plea that defendant no. 3 was selling products of defendant nos. 1 & 2 who are based at Varanasi (U.P.) and the defendants have pleaded that defendant no. 3 has only been impleaded in order to confer jurisdiction on this Court as in the absence of defendant no. 3, this Court will not have the jurisdiction. In findings on issue nos. 1 & 4 above, it has been held that the plaintiff has failed to prove that defendant no. 3 has ever sold the hair oil manufactured by defendant nos. 1 & 2 bearing the trade mark KESHRAJ in Delhi. As the plaintiff has failed to prove cause of action against defendant no. 3, hence, the plea of defendant nos. 1 & 2 that this Court has no territorial jurisdiction stands proved. As this Court has no territorial jurisdiction to entertain the present Suit No.313/08/91 39 of 41 suit regarding infringement of trade mark and passing off as claimed under the provisions of Trade and Merchandise Marks Act, 1958, no findings are required to be given on these issues as they pertain to infringement of trade mark and passing off under the provisions of Trade and Merchandise Marks Act, 1958
32. Issue No. 5 (Relief) In findings on issue nos. 1 & 4 above, it has been held that the plaintiff has failed to prove that defendant no. 3 ever sold hair oil manufactured by defendant nos. 1 & 2 bearing the trade mark KESHRAJ in Delhi and that the plaintiff had cause of action against defendant no. 3. Accordingly, suit against defendant no. 3 is dismissed. In findings on issue nos. 1 & 4 above, it has been further held that as far as reliefs pertaining to infringement of trade mark and passing off are concerned as claimed under the provisions of Trade and Merchandise Marks Act, 1958, this Court has no territorial jurisdiction to entertain the suit in respect of the same and it is open for the plaintiff to file a fresh suit against defendant nos. 1 & 2 in a competent Court of jurisdiction so far as the reliefs of infringement of trade mark and passing off are concerned. Accordingly, the plaintiff is not entitled to the reliefs, as claimed. The suit Suit No.313/08/91 40 of 41 stands disposed off accordingly. Parties are left to bear their own costs. Decree sheet be prepared accordingly. File be consigned to Record Room.
(Announced in the open Court (HARISH DUDANI)
th
on 09 June, 2010) ADDL. DISTT. JUDGE-15 (CENTRAL)
DELHI
Suit No.313/08/91 41 of 41