Delhi High Court
Heinz India Pvt. Ltd. vs M/S. Shrejee Remedies on 29 April, 2013
Author: M. L. Mehta
Bench: M.L. Mehta
-* THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) No. 2367/2012
Date of Decision: 29.04.2013
HEINZ INDIA PVT. LTD. .......Plaintiff
Through: Ms. Anuradha Salhotra and Mr.
Zeeshan Khan, Advocates
Versus
M/S. SHREJEE REMEDIES ......Defendant
Through: Mr. R. Bhansali , Mr. Chander
Shekar Patney, Mr. D.C Dani,
Advocates
CORAM:
HON'BLE MR. JUSTICE M.L. MEHTA
M.L. MEHTA, J.
1. The instant order disposes the application filed by the plaintiff under Order XXXIX Rules 1 and 2 of the Civil Procedure Code (for short „the Code‟) and an application filed by the defendant under Order VII Rules 10 and 11 of the Code.
2. The suit has been filed by the plaintiff seeking a permanent injunction against passing off and damages under Section 27 of the C.S. (O.S.) No. 2367/2012 Page 1 of 12 Trade Marks Act, 1999 with respect to their prickly heat powder under the trade mark NYCIL. The facts giving rise to this suit are as follows.
3. The plaintiff is a company incorporated under the Indian Companies Act, 1956 having its registered office in Mumbai and branch offices in Delhi. The plaintiff is a wholly owned subsidiary of H.J. Heinz Company, a company incorporated under the laws of the State of Pennsylvania, USA. The plaintiff has had its presence in the Indian market since its incorporation in India in 1994 and manufactures well-known products such as Complan, Glucon-D, Heinz Tomato Ketchup, Sampriti Ghee etc and markets the prickly heat powder NYCIL.
4. The plaintiff has contends that the word mark NYCIL has been registered in India since the year 1951 in favour of British Drug Houses Ltd. under the trade mark registration number 147987 in class 5 in respect of medicinal and pharmaceutical preparations. And that pursuant to a request Form TM 24 dated September 18, 1968 and an order thereon dated January 18, 1969, Glaxo Laboratories (India) Ltd was registered as the subsequent proprietor of this mark with effect from July 1, 1968. Thereafter, the name of Glaxo Laboratories (India) Ltd. was changed to Glaxo India Ltd. who assigned the mark along with the goodwill of the mark to the plaintiff‟s group company Heinz Italia vide a Deed of Assignment dated September 30, 1994. Heinz Italia, on September 17, 1997 applied for and obtained registration for the trade mark NYCIL (Label) under No. 774599 in class 5 in respect C.S. (O.S.) No. 2367/2012 Page 2 of 12 of medicinal and pharmaceutical preparations. Both these marks were assigned to the plaintiff vide a Deed of Assignment dated February 1, 2005. An application for the registration of the plaintiff as a subsequent proprietor of the said marks was filed on February 8, 2010 and is pending with the Registrar of Trade Marks.
5. The plaintiff submits that the trade mark NYCIL has always been used by it and its predecessors as a medicated powder for the prevention and cure of prickly heat. And that since the year 1994, the said product was packed in distinct cylindrical containers carrying the NYCIL Label imprinted thereon. In furtherance, the plaintiff has produced its Annual Sales Figures of the said product in India for the period 1999-2011. The plaintiff also submits that the said trade mark was advertised through distribution of pamphlets and promotional literature to the dealers as well as print and electronic media. The plaintiff also submits its Annual Marketing/Promotional Figures in India for the said product for the period 2002-2011. It contends that as a result of such extensive user, registrations, vast publicity, and excellent quality of the goods, the trade mark NYCIL has become exclusively associated with the plaintiff‟s products.
6. The plaintiff‟s grievance is with respect to its product NYCIL CLASSIC which was sold in a cylindrical container, with a colour combination of light and dark blue, and a cap which was dark blue in colour, until around August, 2009. The word NYCIL is highlighted by a square box and the word CLASSIC is written below it with a spotted C.S. (O.S.) No. 2367/2012 Page 3 of 12 design. The plaintiff contends that around February, 2008, it learnt that the defendant was distributing/selling prickly heat powder under the trade mark NEHACIL in a container with a label deceptively similar to the label described above. It contends that the mark NEHACIL is phonetically and structurally similar to the plaintiff‟s prior used and registered trade mark NYCIL and is therefore violative of the plaintiff‟s trade mark.
7. The plaintiff submits that it issued a Cease and Desist Notice dated July 14, 2008 to the defendant, advising it of its earlier and statutory rights in the trade mark NYCIL and asking it to cease the use of the impugned trade mark with immediate effect, but did not receive any response. Consequently, since the defendant was carrying on business in Ahmedabad, the plaintiff filed a criminal complaint, before the Chief Judicial Magistrate, Ahmedabad on July 19, 2010 against the usage of the impugned mark by the defendant. However, the plaintiff submits that, the said complaint was erroneously dismissed by the Magistrate on the ground that the impugned packaging NEHACIL was not similar to the plaintiff‟s packaging NYCIL.
8. The plaintiff submits that in order to mitigate the chances of confusion in the minds of the purchasing public, it changed its trade dress and get-up of the NYCIL container. The plaintiff also continued to try and get the defendant to amicably settle the matter, by adopting a trademark which was different from that of the plaintiff‟s. The plaintiff submits, that efforts to settle with the defendant continued till as late as C.S. (O.S.) No. 2367/2012 Page 4 of 12 March-April, 2012 as evidenced from the plaintiff‟s email dated April 10, 2012. The defendant however, failed to respond to the plaintiff and proceeded to file a suit for groundless threats before the District Judge, Ahmedabad. On receipt of the Suit Papers in the aforesaid suit, the plaintiff submits that, it became aware of the fact, that the defendant had obtained registration of a label mark containing the mark NEHACIL under the No. 946122 in Class 5 on March 28, 2007. The plaintiff has proceeded to file a Rectification Petition for the removal of the said registration from the Register of Trade Mark on the ground that the mark is in violation of Section 11 of the Trade Marks Act, and was wrongly remaining on the Register.
9. In the instant suit seeking permanent injunction against passing off and damages under Section 27 of the Trade Marks Act, the plaintiff submits that the cause of action arose in July, 2008 when it learnt of the defendant‟s offending activities. It submits that this Court has jurisdiction to try the present suit because the plaintiff has its branch office in Delhi and the defendant is also supplying and selling the infringing goods in Delhi. In furtherance of this contention, the plaintiff has placed on record an invoice dated July 9, 2012 issued by Batra Medical Hall, showing the sale of the offending goods in Delhi. It is the argument of the plaintiff that this invoice conclusively demonstrates that the defendants are supplying and selling the infringing goods within the territorial jurisdiction of this Court.
C.S. (O.S.) No. 2367/2012 Page 5 of 1210. In response, the defendant has filed its Written Statement taking the preliminary objection that this suit ought to be dismissed as the plaintiff has failed to establish that the cause of action had arisen within the territorial jurisdiction of this Court. In furtherance of this, the defendant submits that the alleged Sale Invoice of Batra Medical Hall, Delhi was forged and manipulated by the plaintiff and that the defendant has no relation or nexus with the said Batra Medical Hall, Delhi. Further, the defendant also submits that it does not sell the infringing goods in Delhi. In furtherance of this argument, the defendant has placed reliance on Section 134 of the Act; that the mere presence of the plaintiff‟s branch office in Delhi would not confer jurisdiction on this Court.
11. The defendant also submits that the present suit is not maintainable on the ground that the plaintiff has admitted and accepted the Order of the Chief Judicial Magistrate, Ahmedabad in the Criminal Complaint which was filed by the plaintiff; that the mark/label of NEHACIL and NYCIL are not deceptively similar. The defendant has also avers that the plaintiff is not the owner of the trade mark nos. 147987 and 774599. Further, the defendant specifically denies the assignment of the said trademarks vide a Deed of Assignment dated February 1, 2005.
12. The defendant submits that it has adopted and used the said trademark openly, extensively and continuously in the market since March 1, 1998. And it is the registered proprietors of the trade mark C.S. (O.S.) No. 2367/2012 Page 6 of 12 NEHACIL vide Registration No. 946122 in Class 5 on August 8, 2000, and hence the instant suit is barred under Section 28 of the Act. Regarding the Rectification Application filed by the plaintiff against the registration of the defendant‟s trade mark NEHACIL, the defendant submits that the said application is barred under Section 125 of the Act, and that the defendant shall file the necessary counter statement before the appropriate authority. Lastly, the defendant submits that the controversy between the parties is subject matter of another suit filed by the defendant before the City Civil Court, Ahmedabad, which is pending adjudication.
13. I have heard the ld. Counsels for both the parties and perused through the documents placed on record. It would be suitable to first consider the application filed by the defendant for rejection of plaint under Order VII Rule 11 before proceeding with considering the application of the plaintiff under Order XXXIX Rules 1 and 2 for temporary injunction.
14. It is settled law that while considering an Order VII Rule 11 Code application, the Court should restrict itself to the averments made in the plaint and should not extend its consideration to the averments made in the written statement. If the plaint, when looked at as a whole can establish a substantive cause of action and the competent jurisdiction of the court, then the plaint ought not be rejected under Order VII Rule 11 of the Code.
C.S. (O.S.) No. 2367/2012 Page 7 of 1215. In the present case, the plaintiff has submitted that the cause of action arose when they learnt that the defendant was selling its products under the name NEHACIL within the territorial limits of Delhi. In furtherance of this contention, the plaintiff has also claimed that this Court has the jurisdiction to try the present suit. The relevant parts of the plaint reads as follows:
"20. The cause of action for the present suit accrued to the Plaintiff for the first time in July 2008 when it learnt of the Defendant‟s offending activities. The cause of action has thereafter accrued on every day that the defendant has used the trademark "NEHACIL" as its trademark in relation to its goods.
21. That this Hon‟ble Court has jurisdiction to entertain and try the present suit in as much as the Plaintiff carries on its business within the territorial jurisdiction of the Hon‟ble Court. The Plaintiff has its branch office within the jurisdiction of the Hon‟ble Court. Further the Defendant is supplying and selling the infringing goods in Delhi within the territorial jurisdiction of this Hon‟ble Court. Further the Defendant has filed an application for registration of the trademark NEHACIL LAVENDER, which further proves that the Defendant has the intention of carrying on business under the impugned mark all over the country including Delhi."C.S. (O.S.) No. 2367/2012 Page 8 of 12
The plaintiff has produced on record a bill provided by one Batra Medical Hall which allegedly sold the products of the defendant under the trademark NEHACIL.
16. Before considering the application under Order VII Rule 11, it would be pertinent to refer to Section 134 of the Trademarks Act, 1999 (for short „the Act‟) which provides for the jurisdiction of Courts in cases of infringement and passing off. The relevant Section reads as under:
"134. Suit for infringement, etc., to be instituted before District Court.-
(1) No suit-
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff' s trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of sub- section (1), a"
District Court having jurisdiction'' shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 or any other law for the time being in force, include a District Court w thin the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, C.S. (O.S.) No. 2367/2012 Page 9 of 12 where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain.
Explanation.- For the purposes of sub- section (2)," person'' includes the registered proprietor and the registered user."
The instant suit being of passing off, the remedy against passing off is found under common law. Keeping this aspect in mind, in order to address the question regarding the jurisdiction of the Court in a suit for passing off, reference ought to be made to Section 20 of the Code. Section 20 of the Code confers jurisdiction on those courts within whose territorial limits the defendant resides or carries on business or personally works for gain or where the cause of action has wholly or partly arisen.
17. On a reading of the plaint in totality, I find that the averment made in paragraphs 20 and 21contending the cause of action arose in Delhi, thereby conferring jurisdiction on this Court, is on precarious grounds. The plaintiff contends that the defendant carries on business in Delhi based on one bill produced on record of one Batra Medical Hall. The defendant has categorically refuted carrying on any business or working for gain in Delhi. To my mind this alone cannot be said to substantiate the claim of the plaintiff that the cause of action arose in Delhi. In the case of "M/S Lakhan Pal Shyam Kumar vs M/S Ram Prasad Gupta, CS(OS) 2208/2006, the Ld. Single Judge of this Court, C.S. (O.S.) No. 2367/2012 Page 10 of 12 while dealing with the similar issue of rejection of plaint under Order VII Rule 11 for lack of cause of action and jurisdiction held that:
"11. The cause of action as is trite is a bundle of facts which are necessary to be proved in a given case and if the cause of action arises within the jurisdiction of the court concerned, it empowers the court to entertain the same. It is also settled legal position that to decide whether or not the cause of action has arisen within the jurisdiction of this court, only the pleadings in the plaint have to be looked at and nothing more."
On examining the averments made in the plaint the Court came to the conclusion that the plaintiff could not make out a cause of action in the plaint for want of substantive documents in support of the same. The Ld. Single judge further observed that:
"Bald averments in the plaint, not based on any cogent material cannot form the basis to raise a presumption of jurisdiction by this Court, which it otherwise does not have. A measured perusal of the plaint in the present case does not advance the case of the plaintiff as it is nothing but a spate of vague assertions devoid of any pith or substance, indefensible by any material which does not fulfill the requirement of law."
18. In addition to the above factual matrix, it is also pertinent to note that a suit for groundless threats and for declaration and infringement of trademark has been filed by the defendant against the plaintiff in the C.S. (O.S.) No. 2367/2012 Page 11 of 12 City Civil Court, Ahmedabad which the plaintiff is contesting. It is noted above that the plaintiff itself filed Criminal Complaint against the defendant at Ahmedabad. Without commenting on the merits of the case at City Civil Court, Ahmedabad, regarding whether the trademarks NYCIL and NEHACIL are deceptively similar, I find that the plaint does not bring about a cause of action that confers jurisdiction on this Court.
19. The application under Order VII Rule 11 is hereby allowed and the plaint is rejected. Consequentially, the application under Order XXXIX Rules 1and 2 is dismissed.
M. L. MEHTA, J APRIL 29, 2013/kk/rmm C.S. (O.S.) No. 2367/2012 Page 12 of 12