Madhya Pradesh High Court
Jagdamba Oil Agency vs K.S. Oils Limited And Anr. on 14 August, 2006
Author: Rajendra Menon
Bench: Rajendra Menon
JUDGMENT Rajendra Menon, J.
1. Heard.
This Misc. Appeal under Order 43 Rule 1 of CPC has been filed challenging the order dated 1.3.2006 passed by the District Judge, Morena in Civil Suit No. 3-A/2005 allowing a application for temporary injunction filed by the plaintiff-respondent in the suit in question.
2. The plaintiff-respondent No. 1 filed the suit in question seeking declaration and permanent injunction against the appellant and respondent No. 2 in the District Court, Morena which was registered at Suit No. 3-A/2005. It was the case of the plaintiff in the said suit that they are engaged in manufacturing and selling of mustered oil under a trade name viz. "double sher". The said product is being sold by the plaintiff since 1996. The defendant No. 1 and appellant herein is also selling mustered oil in the entire country by using similar words/trade name i.e. "double lion" having similar packing, design and colour. It was the case of the plaintiff that for registering their trade mark they have submitted an application, which is pending before the competent Registrar, however with a intention to cause damage to the business of the plaintiff, defendant No. 1 is selling the product in the area in question i.e. in Morena through defendant No. 2. Accordingly, this suit was filed against the defendant No. 1/appellant for restraining them force selling their product with the same brand name and with similarity in packing and other conditions alongwith the plaint a application for temporary injunction under Order 39 Rules 1 & 2 of CPC was also filed and this application has been allowed by the impugned order. Therefore, the plaintiff has challenged the impugned order by filing this appeal under Order 43 Rule 1 of CPC.
3. Shri Ankur Modi, learned Counsel for the appellant has argued that question of territorial jurisdiction of the Court in Morena for dealing with the matter is involved and without deciding the question of territorial jurisdiction granting injunction is per se illegal. Shri Ankur Modi pointed out that with a view to bring the matter without jurisdiction of the Court in Morena, defendant No. 2 Raghuvardayal & Sons, was impleaded as defendant, whereas Raghuvardayal & Sons is not the authorized dealer and agent of the appellant. The appellant is not selling their product within the territorial jurisdiction of the Court at Morena, and, therefore, the Court at Morena had no jurisdiction to deal with the matter. It is pointed out that when a legal notice was sent by the plaintiff to the defendants, who are carrying on their business in Darjelling from 1998, the defendant-appellant have instituted a Civil Suit No. 2/2005 in the Court of District Judge, Darjelling even prior to the civil suit filed at Morena and it is only after filing of the civil suit in Darjelling that the present suit is filed in Morena, seriously disputing the question of territorial jurisdiction in Morena. Shri Ankur Modi pointed out that the reasons given by the learned District Judge, Morena for confirming territorial jurisdiction at Morena is illegal and perverse. Shri Ankur Modi points out that except for making averments in the plaint with regard to selling of oil manufactured by the appellant in District Morena, there was no material available before the Court below to confer jurisdiction Shri Ankur Modi points out that appellant through Umesh Kumar Agrawal filed an affidavit in which it was specifically stated that they are not selling their product in Morena, Ignoring these factors, rejection of the objection to territorial jurisdiction is assailed by Shri Modi and by inviting my attention to the reasons given by the learned Court below on the question of jurisdiction Shri Modi submits that the said finding is perverse. Inviting my attention to the observations made in para 42 of the impugned judgment where the question of jurisdiction is considered Shri Modi points out that the aforesaid finding is wholly unwarranted. In support of his contention with regard to territorial jurisdiction, Shri Modi invites my attention to the following decisions of Delhi High Court, and submits that once it is found that Court in Morena does not have jurisdiction the suit should have been dismissed and no injunction ought to have been granted. The judgments relied upon by learned Counsel for the appellant are:
(i) Haryana Milk Foods Ltd. v. Chambel Dairy Products .
(ii) Dhodha House v. S.K. Maingi .
(iii) Gupta Brothers Conduit Pipe Manufacturing Co. Pvt. Ltd v. Anil Gupta and Anr. passed in SA No. 986/2001 on 5.9.2001 by the Delhi High Court.
4. As far as granting injunction on merit is concerned, Shri Ankur Modi inviting my attention to certain principles laid down by the Supreme Court in the case of S.M. Dyechem Ltd. v. Cadbury (India) Ltd. , submits that in the facts and circumstances of the case no injunction could be granted. It is argued by Shri Modi that in the light of requirements under the Trade Mark Act and Copy Right Act, the Court at Morena does not have any jurisdiction to deal with the matter, as the appellant does not have any office within the territorial jurisdiction of the Court at Morena and he is not carrying out his business within the territorial jurisdiction of Morena and, therefore, said Court does not have any jurisdiction.
5. Refuting the aforesaid and referring to the provisions of Section 20 of the CPC, Shri Miglani, learned Counsel for the respondent submits that arguments of Shri Ankur Modi if considered in the light of Section 20 of CPC can be correct so far as applicability of Sub-clause (a) and (b) of Section 20 of CPC are concerned. However, he points out that if Sub-clause (c) of Section 20 of CPC is taken note of, cause of action for filing the suit has arisen within the territorial jurisdiction at Morena, and, therefore, the Court at Morena has jurisdiction to deal with the matter. It was pointed out by him that suit is filed on the ground of prior use of the trade mark by the plaintiff and by referring to the pleadings made in the suit filed by the appellant in the Darjelling Court, it was submitted that in this suit appellant has pleaded that they are selling the product manufactured by him through out the country and if this fact is admitted, then grievance of the appellant with regard to infringement with his business at Morena being cause of action is established and, therefore, jurisdiction is available to the Court at Morena to deal with the matter. Inviting my attention to the finding recorded by the Delhi High Court in the case of Smith Kine Beecham Pic and Anr. v. Sunil Singh and Anr. 2001 PTC 321 (Del) and LG Corporation and Anr. v. Intermarket Electroplasters (P) Ltd. and Anr. 2006(32) PTC 429 (Del) and, thereafter, placing reliance on certain observations made by the Supreme Court in the case of M/s. Dhodha House (supra) Shri Miglani tried to point out that if the objections of Shri Ankur Modi are considered, cause of action accrues to the respondents to file the suit at Morena. Accordingly he submits that objection with regard to territorial jurisdiction is unsustainable. On merit it was argued by him that after examining existing of prima facie case, balance of convenience and irreparable loss learned Court below having granted injunction after considering all these factors, discretion exercised being reasonable and in accordance with law, no interference in this matter is called for. On merit it was submitted by him that no case is made out for any interference. In support of the contention advanced with regard to interference by the Court below in such matter and action taken for restraining the appellant, the following judgments are cited by Shri Miglani:
(i) Laxmikant V Patel v. Chetanbai Shah and Anr. 2002 (24) PTC 1 (SC)
(ii) National Sewing Thread Co. Ltd. v. James Chad wick and Bros.
(iii) Bhatia Plastics v. Peacock Industries Ltd. and Anr. 1995 PTC 150. (iv) Parle Products (P) Ltd. v. JP. and Co. Mysore .
6. I have heard learned Counsel for the parties at length and perused the record.
7. In the suit filed by the respondent-plaintiff M/s K.S. Oils Ltd. as contained in Annexure A-l specific averments are made with regard to cause of action, in para 18 of the plaint. It is the case of the plaintiff that cause of action for filing suit arose at Morena when the defendant continuously used the trade mark "double lion" thereby infringing the legal right of the plaintiff and causing them loss in their business, as the plaintiff has its registered office at Morena are manufacturing and selling their product from Morena. It is the case of the plaintiffs that they had sent legal notice in this regard and in spite of legal notice the infringement continues. Even though by filing affidavit plaintiff and the appellant herein have given contrary statements with regard to sale of the product manufactured by appellant in District Morena. It is the case of appellant in the Court, at Darjelling that they have adopted the said trade mark in the year 1998 and are using the same since then. It is their case that they have established the business with the best efforts and have gained very good reputation in the trade all over the country. It is their case that they are selling their product all over the country since 1998. Even though in the judgment cited by Shri Ankur Modi the question of carrying on business within the jurisdiction of the Court has been considered and certain observations are made by the Supreme Court in the case of M/s. Dhodha House (supra) and observations made by the Delhi High Court in the case of Smith Kine Beecham (supra) and L.G. Corporation (supra) relied upon by the Shri Miglani have to be taken note of. In the case of Smith Kine Beecham (supra) the question of territorial jurisdiction has been considered on the following manner:
It is palpably evident, and incontestable, that the defendants have deliberately infringed the plaintiffs' well known mark namely PANADOL and PANADOL EXTRA in choosing the marks PAMACOL AND PARAMOL EXTRA. Even packaging the defendants' products, in the choice of colours and style of writing is intended to deceive the public at large into purchasing its products believing it to be that of the plaintiffs. That plaintiffs' territorial choice of Courts in India is not without any basis, since the defendants carry on its illegal business activities, i.e. manufacturing as well as packaging of the offending PARAMOL EXTRA and PAMACOL, within India. Once, this averment is countenanced, it is wholly immaterial that the defendants' offending business activity is not carried out in New Delhi. The Act premises the plaintiff to make a choice of the Court, and since plaintiff No. 2 has its Regd. Office in New Delhi, the choice is well founded. Trademark PANADOL is registered in India. There is an assertion that plaintiff No. 2 has its Regd. Office at E-46, Greater Kailash-I, New Delhi. The legal propriety of piercing the corporate veil should not detain the decision at this threshold stage since it is intrinsically a mixed question of fact and law. For all these reasons that Delhi High Court has territorial jurisdiction to entertain the suit.
(Emphasis Supplied)
8. Similarly in the case of L.G. Corporation (supra) the question of jurisdiction has been considered by the Delhi High Court. In this case the observations made by the Supreme Court in the case of M/s. Dhodha House (supra) have also been considered and it has been held that once it is established that the goods are sold within the territorial jurisdiction of a particular Court cause of action would arise in that Court and the said Court will have jurisdiction. In the present case also it is to be taken note of that at this stage the Court was only required to consider existence of prima facie case and even though some of the reasons given in para 42 of the impugned order as alleged by Shri Ankur Modi may be not correct for rejecting the objections raised by the plaintiff, but over all facts and circumstances have to be evaluated for deciding the question. If the over all facts and circumstances are considered in the light of the observations made in the case of L.G. Corporation (supra) and Smith Kine Beecham (supra) the contention advanced by Shri Miglani to the effect that cause of action has arisen within the territorial jurisdiction of the Court at Morena has to be accepted, and if this fact is taken note of I find no error in the jurisdiction exercised by the District Judge, Morena in entertaining the suit.
9. Another facet of the matter is that by the impugned order four applications filed by the plaintiff were decided. The applications were under Order 39 Rule 1 CPC granting temporary injunction to the respondent-plaintiff, which is under challeng. The other applications filed were Order 7 Rule 11 CPC, under Sections 10 and 151 CPC and under Order 11 Rule 21 CPC all these three applications have also been rejected by the same order. That apart there is much force in the contention of Shri Miglani to the effect that no application under Order 7 Rule 10 CPC was filed in the matter. While considering the application under Order 7 Rule 11 CPC question of jurisdiction has also been considered.
10. Apart from these consideration the fact remains that the pleadings indicate that cause of action in the matter did take place in District Morena when specific allegation plaintiff is that their registered office is situated in Morena and they are selling the product manufactured by them from Morena and the infringement made by the defendant appellant in Morena is sought to be restrained. Even though the question of territorial jurisdiction is considered in the case of M/s. Dhodha House (supra), if the observations made by the Supreme Court in the said case are taken note of and the question is examined in the light of observations made by the learned Single Judge of Delhi High Court in the case of L.G. Corporation (supra) and Smith Kine Beecham (supra) I find no error in the exercise of jurisdiction by the District Judge, Morena.
11. As far as merit of the case with regard to grant of injunction is concerned, even though Shri Modi by placing reliance on certain observations made by the Supreme Court in para 54 of the judgment in the case of S.M. Dyechem Ltd. (supra) tried to emphasis that there is no similarity in the brand and trade name of the product. The question of plaintiffs' right with regard to trade and the question as to whether there is infringement of such right has been considered by the Supreme Court in the case of Parle Products (supra) and in para 8 and 9 of the aforesaid judgment it has been so observed by the Supreme Court:
8. According to Karly's Law of Trade Marks and Trade Names (9th Edition Paragraph 838):
Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived.
9. It is therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case, we find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same, the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. Any one in our opinion who has a look at one of the packets today may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of wrapper on the plaintiffs' goods, he might easily mistake the defendants wrapper for the plaintiffs' if shown to him some time after he had seen the plaintiffs'. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes. We have therefore, no doubt that the defendants' wrapper is deceptively similar to the plaintiffs' which was registered. We do not think it necessary to refer to the decision referred to at the Bar as in our view each case will have to be judged on its own features and it would be of no use to note on how many points there was similarity and in how many others there was absence of it.
12. Similar question is considered again by the Supreme Court in the case of Laxmikant V. Patel (supra) and principle for determining grant of temporary injunction in such matter has been summarized and in para 10, 11 and 13 it has been so observed by the Supreme Court in the said case:
10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by Courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honestly and fair play are and ought to be the basic polices in the world of business. Secondly, when a persons adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of delivering the customers and clients of someone else to himself and thereby resulting in injury.
13. Saimond & Heuston in Law of Torts (Twentieth Edition, at a 395) call this form of injury as 'injurious falsehood' and observe the same having been 'awkwardly termed' as passing off and state:
The legal and economics basis of this tort is to provide protection for the right of property which exists not in a particular name, mark or style but in an established business, commercial or professional reputation or goodwill. So to sell merchandise or carry on business under such a name, mark, description, or otherwise in such a manner as to mislead the public into believing that the merchandise or business is that of another person is a wrong actionable at the suit of that other person. This form of injury is commonly, though awkwardly, termed that of passing off on's goods or business as the goods or business of another and is the most important example of the wrong of injurious falsehood. The gist of the conception of passing off is that the goods are is effect telling a falsehood about themselves, are saying something about themselves which is calculated to mislead. The law on this matter is designed to protect traders against that form of unfair competition which consists in acquiring for oneself, by means of false or misleading devices, the benefit of the reputation already achieved by rival traders.
13. In an action for passing off it is usual, rather essential, to seek an injunction temporary or ad-interim. The principle for the grant of such injunction are the same as in the case of any other action against injury complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction. According to Kerly (ibid, papa 16.16) passing off cases are often case of deliberate and intentional misrepresentation, but it is well-settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wadlow in Law of Passing Off (1995 Edition, at 0.3.06) states that the plaintiff does not have probe actual damage in order to succeed in an action for passing off. Likelihood of damage is sufficient. The same learned author states that the defendant's state of mind is wholly irrelevant to the existence of the cause of action for passing off (ibid, paras 4.20 and 7.15). As to how the injunction granted by the Court would shape depends on the facts and circumstances of each case. Where a defendant has imitated or adopted the plaintiff's distinctive not use or carry on business under that name. (Kerly, ibid, para 16.97).
14. Considering the principle laid down in these cases and taking note of finding recorded by the Court below, it cannot be said that learned Court has committed any error in granting temporary injunction to the plaintiff. Accordingly, I find no case for interference. In the facts and circumstances of the, case it cannot be said that learned Court below has committed any error in granting injunction. Apart from the aforesaid while assessing prima facie case and balance of convenience on the basis of documents filed finding recorded is that plaintiff is prior user of the mark in question and after analyzing both trade marks finding recorded is that there is similarity in the trade mark design and colour combination. It was after assessing all these factors that injunction is granted.
15. Accordingly, as no case is made out for interference, the appeal is dismissed without any order as to costs.