Delhi District Court
M/S Greenply Industries Ltd vs M/S Selva Vinayagar Plywood on 27 April, 2015
IN THE COURT OF SH R.L. MEENA ADDL. DISTRICT JUDGE02:
SOUTHWEST DISTRICT: DWARKA COURTS: NEW DELHI
T.M No. : 05/14
Unique Case ID No. 02405C0094922013
M/s Greenply Industries Ltd
2/42, WHS, Opposite DSIDC Complex,
Kirti Nagar, Delhi110015. ..... Plaintiff
VERSUS
M/s Selva Vinayagar Plywood
127, Jumbulingam Street,
Shevapet, Salem,
Tamil Nadu636002 ... Defendant
27.04. 2015
ORDER
1. By this order, I shall dispose of application under Order VII Rule 10 & 11 of the Code of Civil Procedure, 1908 (in short CPC) filed by defendant for return of plaint.
2. Brief facts of the suit are that plaintiff M/s Greenply Industries Ltd filed a suit for permanent injunction, T.M. No.05/14 M/s Greenply Industries Ltd Vs. M/s Selva Vinayagar Plywood Page No. : 1/16 infringement of trade mark and copy right and rendition of account etc alleging infringement of registered trade mark/ principle mark "GREEN" by the defendant who is alleged to be manufacturing/marketing similar products using the mark "GREENLAND".
3. The claim of plaintiff is that it is a registered user of trademark/principle mark "Green" in connection with various plywood products, block boards, laminates veneers, decorative laminates, particle boards etc. It is further claimed that there are several other marks with the word "GREEN" either suffixed or prefixed registered in favour of the plaintiff namely "GREENPLY, GREENWOOD, GREENLAM, GREENGLOSS, GREENMICA, GREENCLUB" etc.
4. It is further alleged by the plaintiff that defendant is using the mark "GREENLAND" on plywoods and other similar products which is claimed to be in infringement of the trademark of the plaintiff. The plaintiff has alleged that the T.M. No.05/14 M/s Greenply Industries Ltd Vs. M/s Selva Vinayagar Plywood Page No. : 2/16 act of the defendant in manufacturing/marketing inferior quality plywoods under the mark "GREENLAND" which is deceptively similar to the registered trademark of the plaintiff is calculated to take undue advantage of the plaintiff reputation and popularity. It is prayed that defendant, their partners, proprietors, officers, servants, agents, stockists and distributors etc are to be restrained from manufacturing and marketing the infringed products.
5. In the present application filed under Order VII Rule 10 & 11 CPC, it is stated that defendant's Trade Mark is nothing to do with the plaintiff Trade Mark as it's deceptively different from plaintiff's Trade Mark. It is further stated that even assuming that the defendant has committed infringement of trade mark then the same would be fall within the territory of Tamil Nadu Court's jurisdiction as defendant no point of time sold or engage any business within the jurisdiction of this Court. It is further stated that no cause of action arose within the jurisdiction of this court T.M. No.05/14 M/s Greenply Industries Ltd Vs. M/s Selva Vinayagar Plywood Page No. : 3/16 to try the present suit. It is further stated that plaintiff did not produce any material to show that plaintiff's company is carrying business at Delhi except the bald averments in para 25 of the plaint. It is further stated that this court does not have territorial jurisdiction under the provisions of Section 134 of Trade Mark Act 1999 as settled by Hon'ble Supreme Court in Dhodha House case reported as (2006)9 SSC48 (SC). It is further stated that since this court does not have territorial jurisdiction to try and decide the present suit, therefore, present suit is liable to be returned.
6. It is worth noticing here that plaintiff has not filed reply of the present application. However, counsel for plaintiff has addressed the arguments straightway on the issue of territorial jurisdiction.
7. I have heard arguments advanced by learned counsels for both the parties and perused the record carefully.
8. During the course of arguments, counsel for plaintiff submits that plaintiff is carrying on its business through T.M. No.05/14 M/s Greenply Industries Ltd Vs. M/s Selva Vinayagar Plywood Page No. : 4/16 branch office situated at Delhi, therefore, this court has territorial jurisdiction in view of Section 134 of the Trade Mark Act 1999. It is pertinent to mention here that during the course of arguments, counsel for plaintiff has admitted that the address of plaintiff mentioned in the plaint is not registered office but same is branch office of plaintiff.
9. On the contra, counsel for defendant submits that this court does not have any territorial jurisdiction over the subject matter as neither plaintiff is resident of Delhi nor defendant. It is further argued by counsel for defendant that counsel for plaintiff claimed in his arguments that plaintiff is having branch office at Delhi exclusively dealing the business activities but same has neither been averred in the plaint nor any documents filed with this effect, therefore, suit of the plaintiff is liable to be returned. Counsel for defendant, in support of his arguments, has also placed his reliance upon the law laid down in following citations:
(i) Dhodha House Vs. S.K. Maingi (2006)9SCC41.
T.M. No.05/14 M/s Greenply Industries Ltd Vs. M/s Selva Vinayagar Plywood Page No. : 5/16
(ii) M/s Lakhanpal Shyam Kumar Vs. M/s Ram Parshad Gupta and Ors decided on 24.05.2012.
(iii) Heninz India Pvt. Ltd. Vs M/s Shrejee Remedies (OS) No 2367/12.
10. Before dealing the submissions of both the parties, it would be useful to refer the relevant law laid down in following citations:
(i) In Liverpool & London SP and I. Asson Ltd v. M.V Sea Success (2004) 9 SCC 512, it was held that for the purpose of rejecting a plaint under Order VII Rule 11 CPC, the court should not only look at the averments in the plaint but also must look into the documents filed along with in view of Order VII Rule 14 CPC.
(ii) In Sofan Sukhdeo v. Asst. Commr., (2004) 3 SCC 137, it was held that for the purpose of deciding an application under Order VII Rule 11 CPC, the averments made in the plaint are germane and the pleas taken by the defendant in the written statement would irrelevant, further the court also T.M. No.05/14 M/s Greenply Industries Ltd Vs. M/s Selva Vinayagar Plywood Page No. : 6/16 emphasized that the meaningful and not formal reading of the plaint was to be adopted so as to nip in the bud any clever drafting of plaint.
(iii) In Indian Performing Right Society v. Sanjay Kalia, 143 (2007) DLT it was held that the expression "carries on business" in Section 62 of the Copy Right Act has the same meaning as in Section 20 of the CPC. It was further held that merely having a branch office in Delhi could not mean that plaintiff carries on business in Delhi. The plaintiff could be deemed to carry on business at a branch office only if a cause of action had arisen in Delhi.
(iv) In Haryana Milk Food v. Chambal Dairy Products, (2002) 25 PTC 156 it was held that for the purpose of ascertaining territorial jurisdiction, the entire plaint has to be taken into consideration. In the case since the plaintiff could not prove that defendant had an office in Delhi or carries on business in Delhi, the court held that it did not have any jurisdiction to adjudicate the matter.
T.M. No.05/14 M/s Greenply Industries Ltd Vs. M/s Selva Vinayagar Plywood Page No. : 7/16
(v) In Dabar India Ltd v. K.R. Industries (2006) 33 PTC 348 it was held that since the defendant was from Andhra Pradesh and since there was no documentary evidence to show that respondent was selling its goods in Delhi, this could did not have any territorial jurisdiction.
(vi) In ABC Laminart v. A.P. Agencies, (1989) 2 SCC 163 Hon'ble Supreme Court held that cause of action means that set of facts, which taken with the law applicable to them, gives the plaintiff right to claim relief against the defendant. If that were so, the cause of action in a case of passing of or infringement would arise only when the defendant uses the impugned trade mark. The object of an action is to protect the goodwill. The goodwill will get affected only when the defendant markets his produce under the impugned mark.
11. Now coming on the issue of territorial jurisdiction, it is relevant to refer the provision of Trade Mark Act, 1999. Section 134 of the said Act governs the issue of jurisdiction which reads as under: T.M. No.05/14 M/s Greenply Industries Ltd Vs. M/s Selva Vinayagar Plywood Page No. : 8/16 (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 (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 the institution of the suit or other proceedings, the person instituting the suit or proceeding, or , where there are more than one such person any of them actually and voluntarily resides or carries on business or personally works for gain. Explanation - For the purpose of subsection (2), 'person' includes the registered proprietor and the registered user."
12. A bare perusal of the aforesaid provision shows that in order to invoke the jurisdiction, infringement of trade mark relating to any right in registered trade mark a person instituting the suit or the proceeding should actually and voluntarily reside or personally work for gain within the jurisdiction of that court. It is admitted fact that plaintiff has T.M. No.05/14 M/s Greenply Industries Ltd Vs. M/s Selva Vinayagar Plywood Page No. : 9/16 its registered office at Assam and as such it can be said that plaintiff is not resident of Delhi.
13. Now, coming on the claim of plaintiff regarding "carries on business" or "personally work for gain" in Delhi. Plaintiff has invoked the jurisdiction of this court in para no.23 of the plaint which reads as under: "23.That the plaintiff is carrying on its business within territory of the hon'ble court and the plaintiff invokes jurisdiction of this hon'ble court under Section 134 and Section 134(2) of the Trade Mark Act, 1999 hence this hon'ble court has got the jurisdiction to entertain and try the present suit."
14. Bare perusal of the aforesaid averments of plaint regarding territorial jurisdiction, it is manifest that plaintiff is claiming jurisdiction of this court on the basis of its office situated at Delhi and claimed that it is carrying its business or working for gain through the said office.
15. The expression 'carries on business' and the expression "personally works for gain" as provided under Section 134 of Trade Marks Act were interpreted by Hon'ble Supreme T.M. No.05/14 M/s Greenply Industries Ltd Vs. M/s Selva Vinayagar Plywood Page No. : 10/16 Court in Dhodha House Vs. S.K. Maingi, 2006 1 AD :
2006(32) PTC 1(SC) and it was held as under: "The expression 'carries on business' and the expression 'personally works for gain' connotes two different meanings. For the purpose of carrying on business only presence of a man at a place is not necessary. Such business may be carried at a place through an agent or a manager or through a servant. The owner may not even visit that place. The phrase 'caries on business' at a certain place would, therefore, mean having an interest in a business at that place, a voice in what is done, a share in the gain or loss and some control thereover. The expression is much wider than what the expression in normal parlance connotes because of the ambit of a civil action within the meaning of section 9 of the Code. But it is necessary that the following three conditions should be satisfied namely: "(1) The agent must be a special agent who attends exclusively to the business of the principal and carries it on in the name of the principal and not a general agent who does business for any one that pays him. Thus, a trade in the mufassil who habitually sends grain to Madras for sale by a firm of commission agent who have an independent business of selling goods for others on T.M. No.05/14 M/s Greenply Industries Ltd Vs. M/s Selva Vinayagar Plywood Page No. : 11/16 commission, cannot be said to 'carry on business' in Madras. So a firm in England, carrying on business in the name of A.B and Co., which employs upon the usual terms a Bombay firm carrying on business in the name of C.D and Co., to act as the English firm's commission agents in Bombay, does not 'carry on business' in Bombay so as to render itself liable to be sued in Bombay. (2) The person acting as agent must be an agent in the strict sense of the term. The manager of a joint Hindu family is not an 'agent' within the meaning of this condition. (3) To constitute 'carrying on business' at a certain place, the essential part of the business must take place in that place.
Therefore, a retail dealer who sells goods in the mufassil cannot be said to 'carry on business' in Bombay merely because he has an agent in Bombay to import and purchase his stock for him. He cannot be said to carry on business in Bombay unless his agent made sales there on his behalf. A Calcutta firm that employs an agent at Amritsar who has no power to receive money or to enter into contracts, but only collects orders which are forwarded to and dealt with in Calcutta, cannot be said to do business in Amritsar. But a Bombay firm that has a branch office at Amritsar, where orders are received subject to confirmation by the head office at Bombay, and where money is paid and disbursed, is T.M. No.05/14 M/s Greenply Industries Ltd Vs. M/s Selva Vinayagar Plywood Page No. : 12/16 carrying on business at Amritsar and is liable to be sued at Amritsar. Similarly a Life Assurance Company which carries on business in Bombay and employs an agent at Madras who acts merely as a Post Office forwarding proposals and sending moneys cannot be said to do business in Madras.
Where a contract of insurance was made at place A and the insurance amount was also payable there, a suit filed at place B where the Insurance Co. had a branch office was held not maintainable. Where the plaintiff instituted a suit at Kozhikode alleging that its account with the defendant Bank as its Calcutta branch had been wrongly debited and it was claimed that that court had jurisdiction as the defendant had a branch there, it was held that the existence of a branch was not part of the cause of action and that the Kozhikode Court therefore had no jurisdiction. But when a company through incorporated outside India gets itself registered in India and does business in a place in India through its agent authorized to accept insurance proposals, and to pay claims, and to do other business incidental to the work of agency, the company carries on business at the place of business in India."
16. In the aforesaid case, Hon'ble Supreme Court also observed that it was possible that the goods manufactured by the T.M. No.05/14 M/s Greenply Industries Ltd Vs. M/s Selva Vinayagar Plywood Page No. : 13/16 plaintiff were available in the market in Delhi or they are sold in Delhi but that by itself would not mean that plaintiff carries on any business in Delhi.
17. Bare perusal of the law laid down in Dhodha's case (supra), it is manifest that when a business is carried out on behalf of principal at another address then it may be carried at a place through an agent or a manager or through a servant but it is necessary that following three conditions should be satisfied which are as under:
(i) The agent must be a special agent who attends exclusively to the business of the principal and carries it on in the name of the principal and not a general agent who does business for any one that pays him.
(ii) The person acting as agent must be an agent in the strict sense of the term.
(iii) To constitute 'carrying on business' at a certain place, the essential part of the business must take place in that place.
T.M. No.05/14 M/s Greenply Industries Ltd Vs. M/s Selva Vinayagar Plywood Page No. : 14/16
18. In view of the aforesaid conditions constituting the term "carries on business" or "cause of action" now it has to be examined by this court as to whether plaintiff has averred the aforesaid facts in the plaint or not. After having gone through the entire plaint, I find that plaintiff has not mentioned the fact that he is carrying a business through manager or agent or any authorized person. Secondly, he has also not mentioned the name of authorized person or agent or manager in the plaint. Thirdly, he has also not brought on record any document like statement of earning, consolidated balance sheet, statement of cash flow etc pertaining to Delhi which may show that plaintiff's business is being carried out in Delhi. By merely giving an address within the jurisdiction of this court without specifying the aforesaid facts, does not entitle a company to file a suit within the jurisdiction of this court.
19. It is also relevant to note here that plaintiff has also filed four suits bearing T.M Nos. 01/14, 02/14, 08/14 and 09/14 T.M. No.05/14 M/s Greenply Industries Ltd Vs. M/s Selva Vinayagar Plywood Page No. : 15/16 wherein defendants were proceeded exparte. In the aforesaid cases too, plaintiff has not filed any document in exparte evidence showing that business of plaintiff is being carried out at Delhi address.
20. In the absence of all these material facts, I am of the considered view that plaintiff fails to confer territorial jurisdiction on this Court therefore, present suit does not lie within the territorial jurisdiction of this Court. Accordingly, present application is allowed and plaint is directed to be returned to the plaintiff for presentation to the proper court.
Pronounced in the open (R.L. Meena)
court on 27.04.2015 Addl. District Judge02
Dwarka Courts: New Delhi
T.M. No.05/14 M/s Greenply Industries Ltd Vs. M/s Selva Vinayagar Plywood Page No. : 16/16