Delhi District Court
M/S. Vrajlal Manilal & Co vs Adarsh Bidi Co on 30 March, 2010
IN THE COURT OF SHRI HARISH DUDANI,
ADDITIONAL DISTRICT JUDGE-15 (CENTRAL), DELHI
Suit No.266/08/91
M/s. Vrajlal Manilal & Co.,
544-Lahori Gate,
Delhi-110006. ..........Plaintiff
Versus
Adarsh Bidi Co.,
Mohalla Satti (Near Jama Masjid),
Amroha. ..........Defendant
Date of Institution of Suit : 17.12.1991
Date of Decision : 30.03.2010
JUDGEMENT
1. This is a suit for perpetual injunction restraining infringement of trade mark, passing off, restraining from violation of copyright and for rendition of accounts etc. filed by the plaintiff against the defendant.
2. The plaintiff has filed the abovenoted suit stating therein that the plaintiff is a partnership firm duly registered under the provisions of Indian Partnership Act, 1932 and has been carrying on the well established business of manufacturing and marketing of Bidis for the last more than five decades and since the year 1935 have been using the trade mark labels consisting of numerals 22 for their aforesaid products of Bidis. It is further stated that the trade marks labels comprising and/or consisting of the numerals 22 are duly registered in the name of the plaintiff under the provisions of the Trade and Merchandise Marks Act, 1958 as per following Suit No. 266/08/91 1 particulars:-
Trademark Regd. No. Date Class USER
22 label 3427 14.8.1942 34 1935
22 label 170285 4.8.1955 34 1935
22 label 170286 4.8.1955 34 1935
It is further stated that the above registrations of the
impugned trade marks have been renewed from time to time and the same are still valid, subsisting and effective throughout India and the plaintiffs have been using the said label consisting of the numerals '22' for the purpose of marketing their products of Bidis since 1935. It is further stated that the colour scheme, get-up, lay-out, writing style and arrangement of the plaintiff's label is unique and artistic and the same appeals to the eyes and the plaintiffs are the owners of copyright in the artistic work of the label consisting of numerals '22' under the law and is duly registered under No.A-47288/85, A-47289/85 and A-47315/85 under the Copyrights Act, 1957.
3. It is further stated in the plaint that the plaintiffs have given wide publicity to their trade-mark and artistic label consisting of numerals '22' and spent several lakhs of rupees and the products of the plaintiffs viz. Bidis under the said trademark and artistic label entitled '22' connote and denote the goods and merchandise of the plaintiffs' origin and none-else. It is further stated that on account of the superior quality of the said Bidis and due to the long, continuous and extensive use of the reputed trade mark and artistic label entitled '22' for the last more than 5 decades for their products of Bidis and the plaintiffs' trademark and artistic labels entitled '22' have Suit No. 266/08/91 2 acquired unique reputation and enviable goodwill in public and trade and Bidis manufactured by the plaintiffs and marketed under the same are exclusively identified and associated by the trade and public to have emanated from the plaintiffs only. It is also stated that the purchasing public purchase the Bidis of the plaintiffs under the trademark and label '22' aforesaid as a guarantee of excellent quality.
4. It is further averred in the plaint that the defendant has recently adopted the trademark and label consisting of numerals "122" which is identical with and/or deceptively similar to the registered trademark/label '22' of the plaintiffs for their products of Bidis which is being used by the plaintiffs since 1935 and the adoption and use of said trademark label consisting of numerals '122' on the part of the defendant for their products of Bidis amounts to an act of offending/infringement and passing off of the plaintiffs (label) registered trademark consisting of numerals '22'. It is further stated that defendant has also adopted identical and/or deceptively similar label, get-up, lay-out, writing style and arrangement of the plaintiffs' labels for marketing their Bidis which act of the defendant further amounts to infringement of plaintiffs' vested and legal copyrights in the labels entitled '22' and the defendant's label is nothing but a slavish copy of the plaintiffs' label. It is also stated that the defendant deliberately with a dishonest and malafide intention adopted the impugned deceptively similar trade mark/label '122' only to trade upon and benefit from the hard earned goodwill and reputation of the plaintiffs and to earn profits in illegal manner by passing off their inferior quality of 'Bidis' as the products of Suit No. 266/08/91 3 the plaintiffs and to misrepresent the public and trade.
5. It is also stated in the plaint that the defendants being guilty of offending the reputed trade mark of the plaintiffs and of infringement of Trade Mark and artistic registered label entitled '22' of the plaintiffs and also of passing off their inferior quality goods as and for the superior quality goods of the plaintiffs are liable to render their accounts of profit earned by them on the basis of their said products under the impugned trade mark for the period prior to the institution of the present suit till the time an order/decree for injunction is passed against the defendants and on rendition of accounts, the plaintiffs expect to be find entitled to a sum of Rs.Five lacs. It is also sated that the plaintiffs are residing and work for gain in Delhi and the defendants are also manufacturing and marketing their goods in the Union Territory of Delhi besides other parts of the country, therefore, this Hon'ble court has got territorial jurisdiction to entertain and try the present suit and the jurisdiction of this Hon'ble Court is also attracted under section 62(2) of the Copyright Act, 1957. It is also stated that this court has also jurisdiction on the basis that the defendants has applied for registration of trademark in the office of the Registrar of Trade Marks at Delhi. The plaintiffs have prayed for a decree of perpetual injunction restraining the defendants, their servants, agents, representatives, dealers and all other persons on their behalf from infringing/manufacturing, selling or otherwise dealing in Bidis under the trademark consisting of numerals '122' or any other trademark identical and/or deceptively similar to the plaintiffs' trade mark entitled '22' or violating the plaintiffs' Suit No. 266/08/91 4 copyrights by printing, publishing, reproducing or otherwise dealing in the labels entitled '122' or any other label identical and/or deceptively similar to the plaintiffs' label '22' or from passing off their Bidis as and for those of the plaintiffs or as connected with the plaintiffs under the trade mark entitled '122' (label) and/or any other trade mark/label which may be identical and/or deceptively similar to the plaintiffs' registered trademark/label entitled '22' and for rendition of accounts of profits earned by the defendants on the sales of Bidis under the infringing/offending trademark or label entitled '122' and a decree for the amount so found due on the basis of sales made during the period prior to the institution of the present suit till the date of injunction order/decree alongwith cost of the suit.
6. The defendant has filed written statement and has contested the suit. In the written statement, the defendant has taken objections that the defendant is neither manufacturing Bidis in question in Delhi nor marketing the same in Delhi and he is also not residing in Delhi and no cause of action has arisen in Delhi and this court has no jurisdiction to try the suit. It is denied that the plaintiff is a registered partnership firm or that the suit has been filed by a registered partner. It is stated that the suit is barred under section 69 of the Indian Partnership Act, 1932. It is denied that the firm of plaintiff is manufacturing and marketing Bidis for the last more than five decades. It is denied that since 1935 the plaintiffs have been using the trade mark labels consisting of numerals '22' for their products of Bidis and the same is duly registered in the name of the plaintiffs. It is stated in the written statement that Suit No. 266/08/91 5 the since 01.04.1978, the defendant is manufacturing Bidis and the name of the defendant's firm is Adarsh Bidi Co., Amroha, U.P. and the name of Bidi manufactured by the defendant is "Adarsh Bidi No.122". It is also stated that the label of the defendant, its lay out, colour scheme, the name and the script are entirely different. It is also stated that the numerals are not the monopoly of the plaintiff and large number of manufacturers use numerals in manufacturing of Bidis. It is also denied that the purchasers and intending purchases of the said goods viz., Bidis are only the domestic servants, villagers, poor and illiterate persons. In fact many of the purchasers/intending purchasers are literate and practically all of them are able to read the numerals and can easily distinguish between '22' and '122', and if they can read '22', the alleged trade mark of the plaintiff, they can certainly read '122' the trade mark of defendant and distinguish between the two. Rest of the allegations have been denied by the defendant and defendant has sought dismissal of the present suit.
7. The plaintiff has filed replication to the written statement of defendant. In the replication, the plaintiff has reiterated the contents of plaint and has controverted the allegations of the defendant as alleged in the written statement. It is denied that this Court has no territorial jurisdiction to try the suit. It is denied that that the defendant is in the trade of manufacturing of Bidis since April, 1978. It is stated that the defendant has adopted the trade mark and label consisting of numerals '122' only in the month of October/November, 1991. It is denied that the name of the plaintiffs' firm is Adarsh Bidi Company, Suit No. 266/08/91 6 Amroha, U.P. It is stated that the defendants have raised false and frivolous pleas in their written statement and the suit may be decreed in favour of the plaintiffs as prayed in the plaint.
8. From the pleadings of the parties, following issues were framed on 14.03.1996 :
1. Whether the plaintiff is the owner of Registered Trade Mark "22" in respect of Bidis?
2. Whether the defendants' use of Trade Mark "122" in respect of Bidis amounts to infringement of the Registered Trade Mark "22" in the name of the plaintiff?
3. Whether the defendants' goods are likely to be passed off as goods of the plaintiff?
4. Whether this Hon'ble court has got jurisdiction to try the same?
5. Whether the plaintiff is entitled reliefs claimed in the plaint?
6. Relief.
9. To prove its case, the plaintiff has examined Shri Devashish Jain, its constituted attorney as PW-1 and PW-2 Shri Uma Shankar Aggarwal before the Local Commissioner appointed by the Court.
10. In order to prove its defence, defendant examined Shri Safiq Ahmed, Sole Proprietor of M/s Adarsh Bidi Company as DW-
1.
11. I have heard the ld. Counsel for parties and carefully perused Suit No. 266/08/91 7 the record. My findings on the specific issues are as under :-
12. Issue No. 4In the WS, defendant has taken objection that defendant is neither manufacturing bidis in question in Delhi nor marketing the same in Delhi and the plaintiff is also not residing in Delhi and no cause of action has arisen in Delhi and this Court has no jurisdiction. The contention of ld. Counsel for defendant 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 the enactment of Trade Marks Act, 1999. Ld. Counsel for the defendant has contended that the Trade 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 the provisions of Section 20 of CPC. However, ld. Counsel for plaintiff has contended that in the present suit apart from relief in respect of infringement of trade mark, plaintiff has also claimed relief in respect of violation of copyright in favour of the plaintiff and the same is governed by Section 62(2) of the Copyright Act, 1957, hence, this Court has the territorial jurisdiction.
13. The contention of ld. Counsel for the defendant is that although in the present suit, the plaintiff has joined causes of action in respect of infringement of trade mark and copyright but this Court has no jurisdiction to try the reliefs as sought in respect of infringement of trade mark and ld. Counsel for the defendant has relied on decision in Dhodha House & Patel Suit No. 266/08/91 8 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, 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."
14. In Dhodha House's case (supra), the Hon'ble Supreme Court held that the objects and reasons for engrafting the Suit No. 266/08/91 9 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 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."
15. Ld. counsel for the defendant has also relied upon decision in The Jay Engineering Works Ltd. vs. Ramesh Aggarwal, 2006 (33) PTC 561 (Del.) which was a composite suit under Suit No. 266/08/91 10 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 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, Suit No. 266/08/91 11 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 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."
16. 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 Suit No. 266/08/91 12 where the defendant resides. It was also noticed that in a given case the petition under the 1957 Act or 1958 Act may 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 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 Suit No. 266/08/91 13 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."
17. In the present case, the plaintiff claims to be having its office in Delhi and the defendant is based at Amroha (U.P.). By way of present suit, the plaintiff has prayed for decree of permanent injunction thereby restraining the defendant from manufacturing, selling or otherwise dealing in bidis under the trade mark consisting of numerals 122 and from infringing plaintiff's copyright by printing, publishing, reproducing or otherwise dealing in the labels entitled '122' or any other label identical and/or deceptively similar to the plaintiff's label and for decree of permanent injunction for restraining the defendant from passing off their bidis as and for those of the plaintiff's bidis. The plea of the plaintiff is that the plaintiffs have been using the trade mark labels consisting of trade mark numerals '22' for their products of bidis since the year 1935 and plaintiffs are the owners of copyright in the artistic work of label consisting of numerals '22' under the law and the said artistic work is duly registered under no. A47288/85, A47289/85 and A47315/85 under Copyright Act, 1957.
18. This is a composite suit filed by the plaintiff under the Trade and Merchandise Marks Act, 1958 and the Copyright Act, 1957. 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 Suit No. 266/08/91 14 plaintiff was 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 defendant 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.
19. As per the plaint, the defendant is based at Amroha (U.P.). In order to prove that part of cause of action as regards the reliefs in respect of Trade and Merchandise Marks Act, 1958 is concerned, the plaintiff has examined PW-1 Shri Devashish Jain who adduced evidence by way of affidavit Ex.PW1/A and in the affidavit Ex.PW1/A, the plaintiff has not stated that the defendant was manufacturing or selling bidis under the trade mark which was deceptively similar to the trade mark of the plaintiff in Delhi. Only in para 10 of the affidavit Ex.PW1/A, the plaintiff has stated that during the month of November 1991, they came to know that the defendant has adopted the trade mark and label consisting of numerals '122' which is identical with and/or deceptively Suit No. 266/08/91 15 similar to the registered trade mark and label of the plaintiff and/or deceptively similar to the registered trade mark/label '22' of the plaintiff for their products of bidis which is being used by them since 1935. PW-1 stated in the cross- examination that at the time of filing of the suit, the defendant was doing the business in or around Delhi and, thereafter, he voluntarily stated that he does not know whether at present the defendant is doing business at Delhi or not. Defendant examined Shri Shafiq Ahmed as DW-1 who stated in the cross-examination that he used to supply bidis in JP Nagar and Moradabad and JP Nagar and Amroha are the names of same city. DW-1 denied suggestions of the plaintiff in the cross-examination to the effect that his goods i.e. bidis were available in the market of Delhi prior to 1991. The plaintiff had also examined PW-2 Shri Umashankar Aggarwal whose statement was recorded by the Local Commissioner appointed by the Hon'ble Court and he has also not stated that defendant was doing any business in Delhi. The plaintiff has not examined any witness who could depose that the defendant was manufacturing or selling bidis under the trade mark which was deceptively similar to the trade mark of the plaintiff in Delhi. No evidence has been adduced by the plaintiff to the effect that the defendant carried on any business activity which could bring the suit in respect of Trade Marks Act, 1958 within the territorial jurisdiction of this Court.
20. In para 21 of the plaint, the plaintiff has stated that this Court has also the jurisdiction on the basis that the defendant has applied for registration of the trade mark in the office of Suit No. 266/08/91 16 Registrar of Trade Marks at Delhi, therefore, under the provisions of Trade and Merchandise Marks Act, 1958, the Courts in Delhi have the jurisdiction to entertain the suit. However, in the affidavit Ex.PW1/A, the plaintiff has not stated that the defendant had applied for registration of the trade mark in Delhi and on this account the Courts in Delhi have the jurisdiction to entertain the suit. DW-1 Shri Shafiq Ahmed stated in the cross-examination that his application for registration of trade mark 122 has been rejected by the office of the Registrar of Trade Marks. 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 Dodha House (supra), 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 undisputably 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."
21. From the aforesaid discussions, it is clear that the plaintiff Suit No. 266/08/91 17 has failed to prove that any part of cause of action in terms of Section 20 of CPC has arisen in Delhi regarding reliefs of infringement of trade mark and passing off, as claimed in respect of the Trade and Merchandise Marks Act, 1958.
22. In order to bring the suit within the territorial jurisdiction of this Court, in para 20 of the plaint, the plaintiff has stated that the plaintiffs are residing and work for gain in Delhi and the defendants are also manufacturing and marketing their goods in the Union Territory of Delhi besides other parts of the country, therefore, this Court has got the territorial jurisdiction to entertain and try the present suit. In para 20 of the plaint, the plaintiff has further stated that the jurisdiction of this Court is also attracted u/s 62(2) of the Copyright Act, 1957.
23. The contention of the Ld. Counsel for the defendant is that the plea of the plaintiff that there has been violation of his copyright has already been considered by the Hon'ble High Court while disposing of the application u/o 39 rules 1 & 2 CPC and the Hon'ble High Court has held that there has not been violation of the copyright of the plaintiff.
24. Vide order dated 20.01.1995, the Hon'ble High Court was pleased to dispose of IAs No. 14962 and 8016 of 1992 in the present suit and the Hon'ble High Court held :
"11. In so far as the labels and the wrappers are concerned, having perused the colour scheme, design and get-up of the two, I am not satisfied that the defendants have committed a breach of plaintiffs' copyright prima facie. It would suffice if they are restrained simply from using the trade mark "122".Suit No. 266/08/91 18
25. The contention of Ld. Counsel for the defendant is that the Hon'ble High Court was pleased to hold that there has not been breach of plaintiffs' copyright and the aforesaid order of the Hon'ble High Court has not been challenged by the plaintiff and the same has attained finality. The contention of the plaintiff is that while giving the aforesaid observations regarding breach of plaintiff's copyright, the Hon'ble High Court had taken a prima facie view. It is to be noted that in the evidence which has been adduced by the plaintiff after the aforesaid observation of the Hon'ble High Court, the plaintiff has not produced any new material on record regarding violation of his copyright. The defendant has placed on record its labels Ex.DW1/A and Ex.DW1/B and in Ex.DW1/U, the defendant has filed other labels of different bidi manufacturers who are selling the Bidis under trade marks bearing some numerals and the label of the plaintiff is at Ex.PW1/1 on the said paper which is exhibited as Ex.DW1/U. In the cross-examination of DW-1, Ld. Counsel for the plaintiff gave suggestion to the effect that it is correct that label Ex.DW1/U also comprise two labels of the plaintiff which are encircled with red pencil (the said encircled labels are Ex.PW1/1). The plaintiff has not proved that after passing of the order dated 20.01.1995, some other material has been filed on record qua violation of his copyright. In the circumstances, in view of the order dated 20.01.1995 passed by the Hon'ble High Court in IAs No. 14962 and 8016 of 1992, the plaintiff has failed to prove that the defendant has committed breach of plaintiff's copyright. Hence, in view of aforesaid discussions, it is held that the ratio of the decision of the Hon'ble Supreme Court in the case of Dodha House Suit No. 266/08/91 19 (supra) is applicable to the present case so far as reliefs pertaining to infringement of trade mark and passing off are concerned as claimed under the provisions of the Trade and Merchandise Marks Act, 1958 and this Court has no territorial jurisdiction to entertain the present suit in respect of the same. Accordingly, it will be open to the plaintiff to file a fresh suit in a Court of competent jurisdiction so far as reliefs in respect of infringement of trade mark and passing off are concerned. This issue stands answered accordingly.
26. Issue Nos. 1, 2 & 3Since all these issues involve common discussion of facts and law, hence, for the sake of brevity, all these issues are being taken up together. In findings on issue no. 4 above, it has been held that this Court has no territorial jurisdiction to entertain the present suit regarding infringement of trade mark and passing off as claimed under the provisions of the Trade and Merchandise Marks Act, 1958. As this Court has no territorial jurisdiction, in the circumstances, no findings are required to be given on these issues as they pertain to the infringement of trade mark and passing off as claimed by the plaintiff. All these issues stand answered accordingly.
27. Issue No. 5In findings on issue no. 4 above, it has been held that this Court has no territorial jurisdiction to entertain the present suit regarding infringement of trade mark and passing off as claimed under the provisions of the Trade and Merchandise Marks Act, 1958. However, by way of present suit, the plaintiff has also prayed for a decree of permanent injunction Suit No. 266/08/91 20 thereby restraining the defendant from violating plaintiffs copyright by printing, publishing, reproducing or otherwise dealing in the labels entitled '122' or any other identical and/or deceptively similar to the plaintiff's label '22'. In findings on issue no. 4 above, it has been held that in order dated 20.01.1995 passed in IAs No. 14962 and 8016 of 1992, after perusing the colour scheme, design and get-up of the two labels, the Hon'ble High Court was pleased to hold that the defendant has not committed breach of plaintiff's copyright. In the circumstances, the plaintiff is not entitled to the reliefs as claimed. This issue stands answered accordingly.
28. Issue No. 6 (Relief) In view of findings on issue no. 4 above, this Court has no jurisdiction to entertain the present suit regarding the reliefs of infringement of trade mark and passing off and it is open for the plaintiff to file a fresh suit in a Court of competent jurisdiction so far as the said reliefs of infringement of trade mark and passing off are concerned. It has been held in findings on issue nos. 4 & 5 above that the plaintiff has failed to prove that the defendant has committed breach of copyright of plaintiff. Accordingly, the plaintiff is not entitled to the reliefs as prayed. The suit of the plaintiff stands disposed of 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) on 30th March, 2010) ADDL. DISTT. JUDGE-15 (CENTRAL) Suit No. 266/08/91 21 DELHI Suit No. 266/08/91 22