Delhi District Court
Gurparshad Gupta vs Mahavir Feed Mill on 20 March, 2024
BEFORE THE COURT OF SH. SURINDER S. RATHI, DISTRICT
JUDGE(COMM.)-03 SHAHDARA, KKD, DELHI
CS Comm. No. 393/2020
Gurprashad Gupta
Khanna Samrala Road, Village
Kullewal, Distt. Ludhiana (Punjab)
..........Plaintiff
Vs.
Mahavir Feed Mill
Naraingarh Road, Raipur Rani,
Panchkula-134204 (Haryana) ..........Defendants
Date of Institution : 06.08.2020
Date of Final Arguments : 20.03.2024
Date of Judgment : 20.03.2024
Decision : Returned
Judgment
1. This suit is filed by plaintiff, a resident of Ludhiana, Punjab against
defendant firm operating from Panchkula, Haryana under Section 134-
135 r/w Section 27 of Trademarks Act for seeking reliefs of permanent
injunction against Infringement of Trademark, Passing Off, Rendition of
Account and Delivery up.
Case of the Plaintiff
2. Case of the plaintiff as per plaint and the documents filed is that he is
carrying on business in Haryana-Punjab under a registered trademark
Makhan Matka Device under Class 31 for cattle feed, foodstuff for
animals and oil cake w.e.f. 02.05.2017 from Mumbai, Maharashtra. It is
pleaded that he has been using this trademark continuously and
uninterruptedly and has been carrying out advertisement and promotional
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 1
campaigns through his licencees Gopika Industries and Dayal Agro
Industries. The goods manufactured by him have international standard
and quality and is popular with the customers in India.
3. In the course of business plaintiff found that defendant Mahavir Feed
Mill is also manufacturing cattle feed for animals and he has adopted a
mark Makhan Matka as well which is identical and deceptively similar to
the plaintiff's trademark and is also visually, structurally and phonetically
similar. It is pleaded that defendant adopted this trademark while being
fully aware of plaintiff's rights and he did so with an intention to cheat
the public. It is pleaded that defendant is counterfeiting the products
within Section 2 (1) (i) r/w Section 103 of the Act in order to take undue
advantage of plaintiff's reputation and thereby infringing planitiff's
registered trademark.
4. This act of defendant is diluting the plaintiff's trademark and diminishing
his goodwill. On account of this plaintiff is suffering huge loss of money
and reputation. The cause of action to file the suit arose in June 2020
when plaintiff came across defendant's impugned goods. It is also
pleaded that defendant has applied for registration of trademark Makhan
Matka in Class 31 on 06.03.2018 and proposed to use the same. As per
plaintiff the usage has been started in and around June 2020.
5. It is pleaded that the Commercial Courts at Shahdara have territorial
jurisdiction to try this suit as defendant is offering, selling, distributing
and supplying the impugned goods in the Shahdara District at places like
Shahdara, Vivek Vihar, Anand Vihar, GTB Enclave, Farsh Bazar, Harsh
Vihar, Nand Nagri, Jyoti Nagar, Welcome, Jagatpuri, Jafrabad, Madhu
Vihar, Seemapuri, MS Park and other places and as such by virtue of
Section 20 of CPC cause of action has arisen in Shahdara District.
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 2
6. It is further pleaded that plaintiff has distributors and stockists in
Shahdara District in all the above places and also has a corporate office at
1/6624 E, Rohtash Nagar, Shahdara from where supplies are made in the
above areas. With these pleas suit was filed for following prayers:
Prayer:
i. For a decree of permanent injunction restraining the defendant by themselves as also
through their individual proprietor, partners, directors, agents, representatives,
distributors, assigns, heirs, successors, stockists and all others acting for and on
their behalf from using, selling, soliciting, exporting, displaying, promoting,
advertising and dealing in or using the impugned trademark Makhan Matka and/or
any other mark/word/label/packaging identical with and/or deceptively similar to
that of the plaintiff's famouns and registered trademark in relation to goods and
business of manufacturing and marketing of Cattle Feed, Foodstuff for Animals, Oil
Cake, Poultry Feed and from doing any other acts or deeds amounting to or likely to
amount;
i. Infringing the registered trademark of the plaintiff bearing no. 3540402 in Class
31 within the provision of Section 29(1) of the Trademarks Act, 1999;
ii. Passing off their goods and business as that of the plaintiff's trademark Makhan
Matka;
iii. Diluting the Plaintiff's said trademark Makhan Matka by indulging in
falsification, unfair and unethical trade practices.
ii. Restraining the Defendants from disposing of or dealing with its assets including its
premises at the addresses mentioned in the Memo of Parties including its stocks in
trade and such other assets as may be brought to the knowledge of this Hon'ble
Court during the course of the proceedings and on its ascertainment by the plaintiff
and disclosed by the defendant, as the plaintiff is not aware of the same as per
Section 135 (2) (c) of the Trade Marks, 1999 as it could adversely effect the plaintiff's
ability to recover costs and damages.
iii. For an order for delivery up of all the impugned goods, finished and unfinished
materials bearing the impugned and violative trade mark or any other
word/mark/label which may be identical with or deceptively similar to the plaintiff's
said registered trademark including its labels, display boards, sign boards, trade
literatures etc. to the plaintiff for the purposes of destruction and erasure.
iv. For an order for rendition of accounts of profits earned by the Defendants by their
impugned illegal trade activities and a decree for the amount so found in favour of
the plaintiff on such rendition on accounts.
v. For an order for cost of proceedings, and
vi. For such other and further relief (s) as this Hon'ble Court may deem fit and proper in
the facts and circumstances of this case.
7. The list of documents filed with the plaint is not as per Order 11 Rule 1
(2) CPC as it neither discloses as to who is in power, possession, control
or custody of a document. It also does not disclose whether the
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 3
documents filed are original, office copy or photocopy. The list filed also
does not disclose brief details of parties to each document, its mode of
execution, issuance of receipt and line of custody of 6 documents filed
apart from vakalatnama. For ready reference Order 11 Rule 1 (2) CPC is
reproduced hereunder:
Order 11 Rule 1 (2) CPC:
"2. The list of documents filed with the plaint shall specify whether the documents in
the power, possession, control or custody of the plaintiff are originals, office copies
or photocopies and the list shall also set out in brief, details of parties to each
document, mode of execution, issuance or receipt and line of custody of each
document."
8. No Pre-Institution Mediation was carried out under Section 12A of
Commercial Courts Act, 2015 evidently because an application under
Order 39 Rule 1 and 2 CPC was filed alongwith the plaint.
9. After the suit was filed on 06.08.2020, plaintiff was granted ex-parte ad
interim injunction on 07.08.2020 itself. Plaintiff's request for issuance of
search and seizure notice under Order 26 Rule 9 CPC was also allowed
and direction was issued to carry out the search and seizure of defendant's
impugned goods at defendant's address at Panchkula, Haryana.
10.It is interesting to observe that even though in para 29 the plaintiff has
already claimed that defendant is selling impugned goods at more than 14
markets in Shahdara District alone but neither any single address of any
specific location was shared in the plaint or with the court nor the search
and seizure was sought to be carried out in any of these 14 markets in
District Shahdara but was rather sought to be sent to a place which is
more than 250 Kms away in a different State where this Court has no
jurisdiction.
11.The record reveals that summons of the suit was also served upon the
defendant who entered appearance on 21.09.2020. The record reveals that
the search and seizure proceedings were carried out by Ld. Local
Commissioner Prateek Chauhan, Advocate on 12.08.2020 at Village
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 4
Raipurani, Panchkula, Haryana where as per report two flex boards, two
billbooks, 64 cattle feed bags and 500 kg of packaging material carrying
the name Makhan Matka were seized. Certain photographs are also
placed on record.
12.The ad interim injunction order was confirmed by Ld. Predecessor on
07.09.2022 and defendant's application under Order 39 Rule 4 CPC for
vacation of the ad interim stay order was dismissed apparently on the plea
that defendant was not serious in pursuing the same.
Case of the Defendant:
13.Written Statement was filed by defendant on 08.12.2020 wherein he
pleaded that the suit in hand is liable to be dismissed for want of cause of
action as also the fact that plaintiff did not approach the Court with clean
hands and suppressed material facts. It is pleaded that the defendant has
never infringed or carried out passing off of plaintiff's trademark device
by using wordmark Makhan Matka. It is pleaded that usage of wordmark
Makhan Matka has become publicis juris as the same is being used and
trademarks registered by several users with different prefixes and
suffixes.
14.It is claimed that the layout, get up and colour scheme of the defendant is
entirely different to the plaintiff. Defendant Mahavir Feed Mill is said to
be a partnership firm which is a leading manufacturer of cattle feed and
related items with Narender Singh, Nikhil Singla and Snehlata as
partners.
15.It is pleaded that defendant is a bonafide adopter of wordmark Makhan
Matka since 2018 and has applied for its registration in Class 31. It is
further pleaded that the wordmark Makhan Matka is a generic Hindi term
and no one can take monopoly over the same more so when plaintiff is
using it as a logo/device and not as a wordmark.
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 5
16.The Written Statement gives details of several already registered
trademarks with prefix and suffix of Makhan as also for Matka. It is
pleaded that since defendant is only using wordmark Makhan Matka
while plaintiff's registration is of a device containing text of Makhan
Matka in Hindi, English and Punjabi, there is no apparent conflict with
the same and that defendant is agreeable to a mutually beneficial
settlement with the plaintiff. It is further pleaded that plaintiff cannot
extract the words Makhan Matka out of its registered device mark so as to
sue the defendant and as per Section 17 of the Trademarks Act, 1999
the plaintiff has to consider only the registered device mark and not its
contents.
17.The Written Statement also refers to several caselaws where similar
issues were considered by Hon'ble High Court of Delhi.
18.In its reply on merits, defendant denied the plaintiff's claim that he is
exclusive user of trademark Makhan Matka as claimed since no proof
thereof has been filed. However, the fact that plaintiff is registered owner
of Makhan Matka device is not denied. Other paras on merits have been
denied evasively which is neither in consonance with Order 8 Rule 5
CPC nor in consonance with Order 8 Rule 3A CPC applicable to
Commercial suits which mandates that pleadings shall not only be denied
specifically but also the defendant has to give reasons for denial as also
put forth his version of facts sought to be denied. Defendant has taken an
objection over territorial jurisdiction of this Court to entertain the suit.
Defendant has denied the documents filed by the plaintiff in support of
these pleas. However no affidavit of statement of truth has been filed as
mandated under Order 6 Rule 15A CPC.
19.Upon completion of pleadings following issues were identified by this
Court vide order dated 23.08.2023.
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 6
Issues:
i. Whether this Court has territorial jurisdiction to try this suit in so far as
plaintiff belongs to Ludihana, Punjab and defendant belongs to Punchkula,
Haryana? OPP
ii. Whether plaintiff is entitled for permanent injunction therebyrestraining
the defendant and their subjects to injunct them from using, selling,
soliciting, exporting, displaying, advertising, promoting and dealing in or
using the impugned trade mark Makhan Matka and/or trade mark and/or
any other mark/word/label/packaging identical with and/or deceptively
similar in relation to goods and business of manufacturing and marketing of
cattle feed, foodstuff for animals, oil cake, poultry feed and from doing any
other acts or deeds amounting to or likely to? OPP
iii. Whether plaintiff is entitled to decree of injunction thereby restrainingthe
defendant from disposing off, or dealing with their assets including their
premises at the addresses mentioned in the memo of parties and their stocks
in trade or any other assets and on the defendant disclosure thereof and
which the defendants are called upon to disclose and/or on its ascertainment
by the plaintiff as the plaintiff is not aware of the same as per Section 135(2)
(c) of the Trade Marks Act, 1999 as it could adversely affect the plaintiff's
ability to recover the costs and pecuniary reliefs thereupon?OPP
iv. Whether plaintiff is entitled for delivery up of all the impugned finished and
unfinished materials apart from dressing material in violation of the above
trademark? (OPP)
v. Whether plaintiff is entitled to decree of rendition of accounts of profits
earned by defendant in violation of plaintiff's above trademark? (OPP)
vi. Pass any other or further order(s) which Hon'ble Court may deem fit and
proper in the facts and circumstances of the present case in favourof the
Plaintiff Company and against the Defendant.
20.Evidence in this case was ordered to be recorded before Ld. LC as per
following protocol created by this Court under Order 18 Rule 4 CPC
read with Order 15A Rule 6(l) CPC as applicable to Commercial suits.
Evidence was recorded before Ld. LC Ms. Neelam Malik, Advocate
appointed by this Court for the sake of timely disposal of this case.
"Protocol for Recording of Evidence before Court Commissioner appointed by
District Judge, Commercial Court, 2022"
Part - 1
Preliminary
1. Short title- This Protocol is titled "Protocol for Recording of Evidence before Court Commissioner
appointed by District Judge Commercial Court 2022."
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 7
2. Statutory Provision- This protocol is prepared as per Order 18 Rule 4 CPC and Order 15A Rule 6(l)
CPC as applicable to Commercial Court.
3. Court- Whenever the term 'Court' appears in this Protocol it should refer to Commercial Court as
defined under Section 2(b) of Commercial Court Act 2015.
Part - 2
Preparation for Assignment
4. Recording of evidence in Commercial Cases- Recording of evidence in Commercial Cases may be
carried out before the Court Commissioner.
Explanation: For reasons to be recorded, Court may retain the case for recording of evidence before the
Court.
5. Appointment of Court Commissioner- As per the Protocol, on the first Case Management Hearing
when the issues are identified, the Court may pass an order for appointment of Court Commissioner.
6. Copy of order be shared with parties and Court Commissioner- Copy of the order of framing of
issues, appointment of Court Commissioner and the schedule of recording of evidence shall be supplied to
the parties as well as the Court Commissioner.
Part - 3
Recording of Evidence
7. Filing of list of witnesses- Both sides shall file list of witnesses preferably within one week but not
later than 15 days of identification of issues before the Court while sharing an advanced copy thereof with
the opposite party.
8. Order of assignment of Case to the Court Commissioner- While assigning the case, following
aspects shall be complied :
i. Schedule of evidence- Recording of evidence shall start within two weeks of identification of
issues. Evidence shall continue on day to day basis, till conclusion. Any alteration in schedule
for recording of evidence, if needed, shall be decided by the Court Commissioner as per
convenience of all concerned, as far as possible. However, entire evidence shall be concluded
within Eight weeks of initiation.
ii. Judicial File- Judicial file shall not be sent or summoned for the purpose of recording of
evidence by the Court Commissioner.
iii. Examination-in-Chief- An advance copy of examination in chief by way of affidavit shall be
supplied to opposite party preferably one week in advance. However, no adjournment shall be
granted in case of non-supply of advance copy.
iv. Production of documents for cross-examination- In case the opposite side is desirous of
production of any document by the witness or any other entity for the purpose of cross-
examination, an application requesting the same shall be moved well in advance before the
Court.
Part - 4
Duty of Court Commissioner
9. Recording of evidence by the Court Commissioner-
i. Place and Time- Court Commissioner shall record evidence either in Lawyer's chamber, or
Judges/Bar Library, Court Room or any other public place within the Court Complex as
mutually agreed by all concerned. Evidence shall be recorded between 10.00 AM to 5.00 PM.
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 8
It can carry on beyond 5.00 PM as well in case both parties agree. It can be recorded even on
a holiday if all the stakeholders are comfortable and agree to the same.
ii. Chronology of recording- Court Commissioner shall proceed to record the examination by
first recording the deposition of litigating party before examining additional summoned
witnesses.
iii. Oath to witnesses- Court Commissioner shall administer oath to the witnesses under
examination as a delegatee of the Court as per Oaths Act, 1969.
iv. Recording of evidence- The evidence shall be preferably typed on a computer but can also be
recorded by hand neatly.
v. Time frame- Court Commissioner shall conclude the recording of evidence, as early as
possible, but not later than eight weeks of assignment of a case. In case, for any reason the
parties are unable to adhere to the time schedule, extension can be sought from the Court.
vi. Comfortable sitting space- Witnesses and their Counsel shall be provided comfortable sitting
space by the Court Commissioner.
vii. Exhibition of documents- Court Commissioner shall exhibit all the documents sought to be
proved by a party on record. In case of any objection to exhibition of the documents by either
side, the objection shall be recorded in some detail and left open with an assurance that mere
marking of such exhibits will not be treated as conclusive proof thereof and that admissibility
of such document shall be decided by the referral Court at final stage.
viii. Original documents to be retained by parties- Court Commissioner shall make an
observation in the record of evidence of all original documents produced and shall sign the
exhibits with an endorsement OSR (original seen and returned) wherever necessary. If a party
has filed original documents alongwith pleadings in Court, the same can be taken back as per
rules for the purpose of recording of evidence before the Court Commissioner. Original
documents be submitted with the Court at the time of final arguments.
ix. Language- Recording of evidence shall preferably be carried out in English or Court
language, as the case may be, unless requested by the parties otherwise.
x. Adjournments- Once started, the cross-examination shall preferably concluded on the same
day or continue on day-to-day basis. In case of any hardship viz. ill health etc. the case can be
deferred but preferably for a day or two but not later than a week.
In case an evidence schedule is fixed and adjournment is sought by the opposite side, i.e the
side other than who is leading evidence, without 24 hour advance notice.
Explanation: In case a witness scheduled to be examined or under examination is reported to
be unwell or unavailable, the party leading the evidence shall produce the next witness in line
in the list for recording of evidence.
xi. Recording of objections- All the objections raised during cross-examination/reexamination
shall be recorded in the deposition under title objections and shall be left open for the decision
of the Court at the stage of final arguments. Witness shall not refuse to answer the question
asked.
xii. Questions to be allowed- In case Court Commissioner finds any question not related to the
fact and issue, he shall record his objection but shall allow the question to be put and witness
must answer.
xiii. No third person intervention- Court Commissioner shall ensure that the witness is not
assisted by his Counsel or any other person while under examination in answering the
questions.
xiv. Recording of demeanour of witness- Court Commissioner shall record the demeanour of the
witness wherever it is found pertinent and necessary for sharing with the Court.
xv. Copy of evidence- All parties shall be provided uncertified electronic/hard copy of the
evidence recorded, free of cost by Court Commissioner.
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 9
xvi. Safe keeping of original deposition- Court Commissioner shall keep the original depositions
in his safe custody till such time they are filed in the Court in original upon completion of
each witness individually.
xvii. Miscellaneous proceedings- Court Commissioner shall maintain a miscellaneous proceeding
sheet for each day of work and shall submit it in the Court at the time of submission of final
report.
xviii. Hostile Witness- In case a witness is sought to be declared hostile, then Court Commissioner
shall refer both the parties to Court at the earliest and the Court shall decide the issue within
three days.
Part - 5
Miscellaneous
10. Summoning of Witness-
i. Summons from Court- In case a litigating party is desirous of summoning a person for
deposition or production of documents, it shall obtain summons from the Court with an
endorsement that such person shall appear before the address of Court Commissioner on
scheduled date, time and place.
ii. Diet Money- Diet money shall be paid to such witness by the party desirous of summoning
as per rules.
11. Advisory to Court Commissioner- While recording the evidence on commission, the Court
Commissioner shall ensure the following:
i. Impartial- Court Commissioner shall conduct himself in an impartial way and behave in an
indiscriminate manner while recording of evidence.
ii. Polite- Court Commissioner shall be polite with the witness and other stakeholders while
recording of evidence.
iii. Confidentiality- Court Commissioner shall maintain confidentiality during the whole
process.
iv. Keeping professional distance- Court Commissioner shall not solicit professional work
from the parties.
v. Integrity- Court Commissioner shall not accept remuneration or any favour in cash or kind
from the parties over and above the honorarium fixed by the Court.
vi. Non-judgmental- Court Commissioner shall not criticize the professional conduct of
lawyers and litigating parties on their understanding of law.
vii. Punctuality- Court Commissioner shall adhere to time schedules and shall not make excuses
like being engaged in some personal or Court work etc.
viii. Coordination- In case of any unforeseen circumstances warranting change of dates of
hearing, for his own case or the request of other side, he shall apprise the other side in
advance via phone call, email, SMS, Whatsapp Group etc..
ix. No third party sharing- Court Commissioner shall not allow the deposition to be inspected
by any third party and shall not share a copy thereof with any stranger without permission of
the Court.
x. Inspection- Court Commissioner shall allow any party to inspect the recorded proceedings
only in his presence.
xi. Recusal- In case either of the parties or Counsel for the parties are related or closely known
to Court Commissioner, he/she shall recuse self from the case and inform the referral Court.
12. Remuneration of Court Commissioner -
i. Remuneration- In terms of Order 18 Rule 4 of the Code read with Order 15 Rule 2(l) and
Rule 2(o) of the Code, Court Commissioner shall be paid remuneration for the work carried
out.
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 10
ii. Mode of payment- Such remuneration shall be paid by the party directly for the work
carried out by way of cash, UPI, Bank Transfer, cheque or draft against due receipt.
iii. Cost to parties- Each party shall individually bear the cost incurred in leading its evidence.
iv. Fee to be paid- Remuneration fee for recording of evidence is fixed at Rs.2,000/- per
witness or Rs.2,000/- per hour whichever is more. Court Commissioner shall record the
Evidence himself and in case the Stenographer services are taken it can either be arranged
by a litigating party on its own cost or in case the same is arranged by Court Commissioner,
then the actual cost of typing shall be reimbursed by the party to the Court Commissioner.
v. Litigation Cost- Expenditure incurred in recording of evidence shall be redeemable as cost
of litigation at the end of the suit.
13. Judicial Intervention during recording of evidence-
i. Parties to cooperate- It is expected that both the sides will cooperate with Court
Commissioner as well as with each other in recording of evidence and carry out proceedings
in a cordial manner.
ii. Dissolution of hindrances- In case of any conflict resulting into hindrance recording of
evidence, it shall be resolved amicably by the parties at their own level with the active help
of the Court Commissioner.
iii. Court intervention- However, in case of any unforeseen situation requiring judicial
intervention, Court Commissioner shall fix date and time for joint appearance of both sides
before the Court for removal of any such impediment.
14. Miscellaneous Applications-
i. Moving the application- In case either of the parties is desirous of moving any
miscellaneous application viz. amending of pleadings, interim injunction etc. it shall share
an advance copy with the opposite side and reply thereof, if any, shall be filed and shared
within seven days.
ii. Date of hearing- Upon receipt of reply, both the sides shall get the application fixed for
disposal in the Court with the help of Reader of the Court and shall not wait till next date
fixed for hearing. All such miscellaneous applications shall be registered, numbered and
indexed separately.
iii. Evidence not to be stalled- It is clarified that, unless Court Commissioner is of the view
that the interim application moved by either of the parties is such that evidence cannot be
recorded before its disposal, the recording of PE/DE shall continue unabatedly.
Plaintiff's Evidence
21.In the evidence recorded before Ld. LC, to prove his case, plaintiff
examined himself as PW1 Gurprasad Gupta. Vide his affidavit Ex.PW-
1/A, he deposed on the lines of plaint and exhibited following documents:
i. Aadhar Card of plaintiff is Ex.PW-1/1;
ii. Copies of invoices are Ex.PW-1/2 (colly.);
iii. Printout of Form T-M vide Temp No. 4624607 and receipt are Ex.PW-1/3;
iv. Representation sheets of plaintiff's product is Ex.PW-1/4.
v. Representation sheets of defendant's product is Ex.PW-1/5;
vi. Printout of online status and print out of the examination report dated 24.03.2018
is Mark A (Earlier exhibited as Ex.PW-1/6);
vii. Copy of invoice showing the sale of plaintiff's product under the trademark
Makhan Matka to its distributor Shree Balaji Tea Company in Shahdara is
Ex.PW-1/7;
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 11
22.In his cross-examination carried out by Sh. Gulveer Singh, Advocate and
Sh. Tushar Dixit, Advocate on behalf of defendant he stated that he is in
the business of Makhan Matka since 2017 and has franchisee, dealers and
distributors in UP, UK, Rajasthan, Delhi, Punjab etc. He accepted the
suggestion that he is owner of Dayal Agro Industries apart from having
50% share in Gopika Industries with his father having the remaining
share. He claimed that Makhan Matka is registered in his individual name
but he is doing business with his partner Sharan Gupta.
23.PW1 further stated that he has filed this case in his personal capacity and
not as a partner of Dayal Agro Industries and Gopika Industries. He
claimed that he is engaged in business of manufacturing, distributing and
marketing cattle feed. He stated that he is filing income tax returns only
in the name of Gopika Industries. He added that GST and Sales Tax is not
applicable on animal feed. Plaintiff came to know of availability of
defendant's products in market in 2019. He denied the suggestion that
defendant is not infringing his trademark.
Defendants' Evidence
24.On the other hand defendant examined DW1 Snehlata, Partner of
defendant. Vide her affidavit Ex.DW1/A she deposed on the lines of
WS.
25.In her cross-examination done by Ld. Counsel for plaintiff she stated that
the defendant firm has three partners including herself but she is not
related to the other two partners. She accepted that her firm has been
using the trademark Makhan Matka since 2019 for cattle feed. She is
educated up to 10th class and has limited understanding of English
language. She came to know that plaintiff is also using their name
Makhan Matka in 2020. She applied for registration of Makhan Matka in
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 12
March 2018. She denied that the goods manufactured and sold by her are
identical with the plaintiff.
26.I have heard arguments of Sh. Gulveer Singh and Sh. Tushar Dixit, Ld.
Counsels for the defendant. None appeared on behalf of plaintiff to
argue the case today. I have perused the case file carefully.
27.Now I shall dispose of individual issues framed in this case.
Issue No. 1
i. Whether this Court has territorial jurisdiction to try this suit in so far as
plaintiff belongs to Ludihana, Punjab and defendant belongs to
Punchkula, Haryana? OPP
28.While opening his submissions Ld. Counsel for plaintiff concedes that in
the memo of parties as well as body of the plaint it is claimed that while
plaintiff is a resident of and is carrying out business in District Ludhiana,
Punjab but it is also claimed that he has a Corporate Office at 1/6624 E,
Rohtas Nagar, Shahdara, Delhi even though no such corporate office is
owned by the plaintiff either in 2020 when the suit was filed or even
today.
29.Para 29 of the plaint carries a specific endorsement "in fact, the plaintiff
has its Corporate Office at 1/6624 E, Rohtas Nagar, Shahdara, Delhi who
supplies goods under the Trademark Makhan Matka to various parts of
Delhi including Shahdara District". Upon being shown the above
pleadings duly supported with affidavit of statement of truth Ld. Counsel
for Plaintiff submits that in fact it was an inadvertant mistake that
plaintiff claimed that he had corporate office in Shahdara Delhi despite
the fact that this address never belonged to him.
30.It is stated that actually the above address purportedly belongs to one of
his distributors. This plea is vehemently opposed by Ld. Counsel for
defendant with a submission that the plaintiff who claims to be a diligent
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 13
and legally aware businessman who is carrying out business under the
registered trademark does not understand the difference between
Corporate Office and Distributor's office. It is rightly pointed out that in
para 29 of the plaint dedicated to territorial jurisdiction of this Court
separate and specific references have been made qua instances of
distributors and stockists in Shahdara District apart from having a
Corporate Office in Shahdara District.
31.Evidently, by projecting and claiming to be a businessman having
personal presence in Shahdara District, plaintiff not only succeeded in
getting an exparte ad interim injunction from the Ld. Predecessor of this
Court but also got issued a Local Commissioner for search and seizure of
defendant's goods at Panchkula, Haryana.
32.Apparently, the plaintiff has used clever drafting and the tactics of
camouflaging so as to satisfy the Commercial Court that Shahdara Courts
have jurisdiction even though neither the plaintiff nor the defendant either
existed in District Shahdara and nor any evidence was filed in support of
this plea.
33. While referring to the phrase "carries on business" as used in Section 134
of Trademarks Act, 1999 Ld. Counsel for plaintiff submits that the
document Ex.PW1/7 is photocopy of an invoice issued by the plaintiff to
its distributor Shree Balaji Tea Company on 02.07.2020. Perusal of this
document shows that the same cannot be read and relied in evidence for
the simple reason that it is just a photocopy and neither any original nor a
carbon copy of the same has been filed and relied to prove this bill.
Section 61 and 62 of Indian Evidence Act, 1872 mandates that
documentary evidence shall be led by primary evidence i.e. by proving
the document itself. For ready reference Section 61 and 62 of the Indian
Evidence Act, 1872 is reproduced hereunder:
Section 61: Proof of Contents of Documents
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 14
The contents of documents may be proved either by primary or by secondary evidence.
Section 62 : Primary Evidence
Primary evidence means the document itself produced for the inspection of the
Court.
Explanation 1. - Where a document is executed in several parts, each part is
primary evidence of the document.
Where a document is executed in counterparts, each counterpart being executed by
one or some of the parties only, each counterpart is primary evidence as against the
parties executing it.
Explanation 2. - Where a number of documents are all made by one uniform
process, as in the case of printing, lithography or photography, each is primary
evidence of the contents of the rest; but, where they are all copies of a common
original, they are not primary evidence of the contents of the original.
34.Perusal of the above statutory provision shows that in case a party is
unable to prove a document by way of primary evidence even by virtue of
Section 63, circumstances have to be shown on record through evidence
that the parties entitle to prove a document by way of secondary
evidence.
Section 63 : Secondary Evidence
Secondary evidence means and includes..-
i. Certified copies given under the provisions hereinafter contained;
ii. Copies made from the original by mechanical processes which in themselves
insure the accuracy of the copy and copies compared with such copies;
iii. Copies made from or compared with the original;
iv. Counterparts of documents as against the parties who did not execute them;
v. Oral accounts of the contents of a document given by some person who has
himself seen it.
Section 64 : Proof of documents by primary evidence
Documents must be proved by primary evidence except in the cases hereinafter
mentioned.
Section 65 : Cases in which secondary evidence relating to documents
may be given
Secondary evidence may be given of the existence, condition or contents of a
document in the following cases: --
(a) when the original is shown or appears to be in the possession or power --
of the person against whom the document is sought to be proved,
of any person out of reach of, or not subject to, the process of the Court, or
of any person legally bound to produce it,
and when, after the notice mentioned in section 66, such person does not produce it;
(b) when the existence, condition or contents of the original have been proved to be
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 15
admitted in writing by the person against whom it is proved or by his representative
in interest;
(c) when the original has been destroyed or lost, or when the party offering evidence
of its contents cannot, for any other reason not arising from his own default or
neglect, produce it in reasonable time;
(d) when the original is of such a nature as not to be easily movable;
(e) when the original is a public document within the meaning of section 74;
(f) when the original is a document of which a certified copy is permitted by this Act,
or by any other law in force in 1 India to be given in evidence;
(g) when the originals consist of numerous accounts or other documents which
cannot conveniently be examined in Court and the fact to be proved is the general
result of the whole collection.
In cases (a), (c) and (d), any secondary evidence of the contents of the document is
admissible.
In case (b), the written admission is admissible.
In case (e) or (f), a certified copy of the document, but no other kind of secondary
evidence, is admissible.
In case (g), evidence may be given as to the general result of the documents by any
person who has examined them, and who is skilled in the examination of such
documents.
35.In case titled Prem Chandra Jain Vs. Shri Sri Ram, 2009 Latest
Caselaw 4097 Del, wherein Hon'ble High Court ruled that:
"While every fact shall be proved by primary evidence that as per Doctorine of
best evidence rule every fact has to be proved by primary evidence but in case a
litigant is desirous of proving a fact through secondary evidence, the onus of
establishing the circumstances for leading secondary evidence lies only on such
party."
36.Objection qua exhibiting this photocopy document has been taken by
defendant during the course of evidence.
37.Upon being asked Ld. Counsel for plaintiff has failed to show anything
on record as to why the primary evidence was not filed or proved and also
no circumstances shown as per Section 63 to 65 of Evidence Act that
plaintiff shall be allowed to lead secondary evidence. As such the plaintiff
cannot be allowed to read document Ex.PW1/7 in his favour.
38.Furthermore, this document Ex.PW1/7 does not belong to plaintiff and is
rather issued by a firm M/s Dayal Agro Industries to M/s Shree Balaji Tea
Company. In so far as this suit is filed by plaintiff as an individual and the
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 16
plaint is totally silent if the plaintiff has any stake in Dayal Agro
Industries.
39.A statement purportedly made by plaintiff in the cross-examination and
the evidence stage that he owns 50% share in Dayal Agro Industries is of
no avail. Plaintiff has repeatedly stated in the plaint and affidavit in chief
that it is he who is manufacturing, selling and distributing cattle feed
using the device Makhan Matka but not a single document has been filed
or proved to show that either he has any manufacturing facility of his own
or has any distributor or sold any goods as claimed in his personal
capacity.
40.Furthermore, reference of the above document is made to show that Shree
Balaji Tea Company is a distributor. Admittedly, no distribution
agreement or appointment letter of a distributor has been filed or proved.
Bare perusal of the document Ex.PW1/7 shows that it is a simplicitor sale
carried out by M/s Dayal Agro Industries to Shree Balaji Tea Company
and it is nowhere shown that the goods are being supplied for
distributionship. The usage of the words "invoice, builty, customer's
signature and the fact that there is a provision of charging 18% interest in
case payment is not made show that the bill was issued only as a
straightaway sale and not a supply of manufacturer to a distributor.
41.As such, evidently, the plaintiff has failed to establish on record that it has
a Corporate Office. This fact has also been conceded by arguing counsel
for plaintiff that plaintiff does not have any Corporate Office and they
ended up mentioning their distributor's address as Corporate Office under
a mistaken understanding. Even this plea is found to be incorrect in so far
as the document Ex.PW1/7 is evidently a simplicitor sale transaction and
not a proof of supply of goods by its principal to its distributor.
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 17
42.In the light of above as per pleadings, documents filed and the evidence
led it is evident that plaintiff is a resident of Ludhiana while defendant is
a resident of Panchkula and the suit has been filed in Shahdara, Delhi
only with a bald plea that as per para 29 of the plaint that defendant is
selling infringing goods in markets of Shahdara Delhi and as such part
cause of action has arisen. An ancillary plea is also added that plaintiff is
supplying his goods in markets of Shahdara, Delhi.
43.The record specifically reveals that not an iota of evidence has been filed
or proved on record to show that defendant is selling merchandise in
Shahdara Delhi through distributors. The plea that the plaintiff has been
supplying goods in Shahdara Delhi is made on the basis of document
Ex.PW1/7 but this invoice in its own wisdom does not confer any
territorial jurisdiction to this Court of Shahdara more so when the
invoices are issued not by the plaintiff as a seller but by the M/s Dayal
Agro Industries and M/s Gopika Industries who are the strangers to the
suit.
44.The law with regard to territorial jurisdiction in a trademark infringement
suit is governed by Section 134 of Trademarks Act, 1999. It would be
appropriate to have a glance at the relevant Statutory Provisions covering
issues of Territorial Jurisdiction in such matters.
45.The Code of Civil procedure, 1908 contains the provision under Section
20 with respect to institution of the suits where defendant resides or cause
of action arose. Section 20 of the Code of Civil Procedure read thus:
Section 20 CPC- Other suits to be instituted where defendants resides
or cause of action arise. 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
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 18
works for gain;or
b) Any of the defendants, where there are more than one, at the time
of commencement of the suit, actually and voluntarily resides, or
carries on business, or personally works for gain, provides that
in such case either the leave of the Court is given, or the
defendants who do not reside, or carry on business, or personally
work for gain, as aforesaid, acquiesce in such institution; or
c) The cause of action, wholly or in part, arises.[Explanation] : A
corporation shall be deemed to carry on business at its sole or
principal office in India or, in respect of any cause of action
arising at any place where it has also a subordinate office, at such
place...........
(Emphasis Supplied)
Section 62 of the Copyright Act, 1957 is extracted below:
Jurisdiction of Court over matters arising under this
chapter --
(1) Every suit or other Civil proceedings arising under this chapter
in respect of the infringement of copyright in any work or the
infringement of any other right conferred by this Act shall be
instituted in the district court having jurisdiction.
(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 the institution of the suit or other
proeeceding, the person instituting the suit or other proceedings 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.
Section 134 of the Trade Marks Act, 1999 is also extracted below :
Suit for infringement, etc, to be instituted before District Court No
suit--
(1) For the infringement of a registered trade mark; or
Relating to any right in a registered trade mark; or 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 proceeding, the person
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 19
instituting the suit or 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.
Explanation: For the purpose of Sub-section (2), "person" includes
the registered proprietor and the registered user.
(Emphasis Supplied)
46.Upon considering Section 62 of Copyright Act and Section 134 of the
Trade Marks Act it is found that an additional forum has been provided
by including a District Court within whose limits the plaintiff actually
and voluntarily resides or carries on business or personally works for
gain. The object of the provisions was to enable the plaintiff to institute a
suit at a place where he or they resided or carried on business, not to
enable them to drag the Defendant further away from such a place. It is
evident that the expression "notwithstanding anything contained in the
code of Civil Procedure" does not oust the applicability of the provisions
of Section 20 of the Code of Civil Procedure and it is clear that
additional remedy has been provided to the plaintiff so as to file a suit
where he is residing or carrying on business etc., as the case may be.
Section 20 of the Code of Civil Procedure enables a plaintiff to file a
suit where the defendant resides or where cause of action arose. Section
20(a) and Section 20(b) usually provides the venue where the defendant
or any of them resides, carries on business or personally works for gain.
Section 20 (c) of the Code of Civil Procedure enables a plaintiff to
institute a suit where the cause of action wholly or in part, arises.
47.Evidently, accural of cause of action is a sine qua non for a suit to be
filed. Cause of action is a bundle of facts which is required to be proved
to grant relief to the Plaintiff. Cause of action not only refers to the
infringement but also the material facts on which right is founded.
Section 20 of the Code of Civil Procedure recognises the Territorial
Jurisdiction of the Court inter alia where the cause of action wholly or in
part arises. It has to be decided in each case whether cause of action
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 20
wholly or in part arises at a particular place.
48.In case title Indian Performing Rights Society Ltd. Vs. Sanjay Dalia
and Ors. (2015) 10SCC161 Hon'ble Supreme Court took notice of the
fact that in IPR cases Plaintiffs tend to sue. Defendants at a totally
unrelated place without any Territorial Jurisdiction. While discussing the
issue at length Apex Court observed that:
16. On a due and anxious consideration of the provisions contained in
Section 20 of the Code of Civil Procedure, Section 62 of the Copyright Act
and Section 134 of the Trade Mark Act, and the object with which the latter
provisions have been enacted, it is clear that if a cause of action has arisen
wholly or in part, where the plaintiff is residing or having its principal
office/carries on business or personally works for gain, the suit can be filed
at such place/s. Plaintiff (s) can also institute a suit at a place where he is
residing, carrying on business or personally works for gain de hors the fact
that the cause of action has not arisen at a place where he/they are residing
or any one of them is residing, carries on business or personally works for
gain. However, this right to institute suit at such a place has to be read
subject to certain restrictions, such as in case, plaintiff is residing or
carrying on business at a particular place/having its head office and at
such place cause of action has also arisen wholly or in part, plaintiff
cannot ignore such a place under the guise that he is carrying on business
at other fact flung places also. The very intendment of the insertion of
provision in the Copyright Act and Trade Marks Act is the convenience of
the plaintiff. The rule of inconvenience of the parties has been given a
statutory expression in Section 20 of the Code of Civil Procedure as well.
The interpretation of provisions has to be such which prevents the mischief
of causing inconvenience to parties......
17. The intendment of the aforesaid provisions inserted in the Copyright Act
and the Trade Marks Act is to provide a forum to the plaintiff where he is
residing, carrying on business or personally works for gain. The
object is to ensure that the plaintiff is not deterred from instituting
infringement proceedings "because the Court in which proceedings are to
be instituted is at a considerable distance from the place of their ordinary
residence". The impediment created to the Plaintiff by Section 20 Code of
Civil Procedure of going to a place where it was not having ordinary
residence or principal place of business was sought to be removed by virtue
of the aforesaid provisions of the Copyright Act and the Trade Marks
Act......
19.At the same time, the provisions of section 62 of the Copyright Act and
section 134 of the Trade Marks Act have removed the embargo of suing at
place of accrual of cause of action wholly or in part, with regard to a place
where the plaintiff or any of them ordinarily resides, carries on business or
personally works for gain. We agree to the aforesaid extent the impediment
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 21
imposed under section 20 of the CPC to a plaintiff to institute a suit in a
court where the defendant resides or carries on business or where the cause
of action wholly or in part arises, has been removed. But the right is
subject to the rider in case plaintiff resides or has its principal place of
business/carries on business or personally works for gain at a place where
cause of action has also arisen, suit should be filed at that place not at
other places where plaintiff is having branch offices etc...... .
20. There is no doubt about it that the words used in Section 62 of the
Copyright Act and Section 134 of the Trade Marks Act, 'notwithstanding
anything contained in Code of Civil Procedure or any other law for the time
being in force', emphasise that the requirement of Section 20 of the Code of
Civil Procedure would not have to be complied with by the plaintiff if he
resides or carries on business in the local limits of the Court where he has
filed the suit, but in out view, at the same time, as the provision providing
for an additional forum, cannot be interpreted in the manner that it has
authorised the plaintiff to instituted a suit at a different place other than
the place where he is ordinarily residing or having principal office and
incidentally where the cause of action wholly or in part has also arisen.
The impugned judgements, in our considered view, do not take away the
additional forum and fundamental basis of conferring the right and
advantage to the authors of the Copyright Act and the Trade Marks Act
provided under the aforesaid provisions........
21.The provisions of section 62(2) of the Copyright Act and section 134 of the
Trade Marks Act are pari materia. Section 134(2) of the Trade Marks Act is
applicable to clauses (a) and (b) of section 134(1) of the Trade Marks Act. Thus, a
procedure to institute suit with respect to section 134(1)(c) in respect of "passing
off" continues to be governed by section 20 of CPC.
22. If the interpretation suggested by the appellant is accepted, several mischiefs
may result, intention is that the plaintiff should not go to far flung places than that
of residence or where he carries on business or works for gain in order to deprive
defendant a remedy and harass him by dragging to distant place. It is settled
proposition of law that the interpretation of the provisions has to be such which
prevents mischief.
23. The provisions enabled the plaintiff or any of them to file a suit at the
aforesaid places. But if they were residing or carrying on business or
personally worked for gain already at such place, where cause of action
has arisen, wholly or in part, the said provisions have not provided
additional remedy to them to file a suit at a different place. The said
provisions never intended to operate in that field. The operation of the
provisions was limited and their objective was clearly to enable the plaintiff
to file a suit at the place where he is ordinarily residing or carrying on
business etc., as enumerated above, not to go away from such places. The
Legislature has never intended that the plaintiff should not institute the suit
where he ordinarily resides or at its Head Office or registered office or
where he otherwise carries on business or personally works for gain where
the cause of action too has arisen and should drag the defendant to a
subordinate office or other place of business which is at a far distant place
under the guise of the fact that the plaintiff/corporation is carrying on
business through branch or otherwise at such other place also. If such an
CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 22
interpretation is permitted, as rightly submitted on behalf of the
respondents, the abuse of the provision will take place. Corporations and
big conglomerates etc. might be having several subordinate offices throughout the country. Interpretation otherwise would permit them to institute infringement proceedings at a far flung place and at unconnected place as compared to a place where plaintiff is carrying on their business, and at such place, cause of action too has arisen. In the instant cases, the principal place of business is, admittedly, in Mumbai and the cause of action has also arisen in Mumbai. Thus, the provisions of section 62 of the Copyright Act and section 134 of the Trade Marks Act cannot be interpreted in a manner so as to confer jurisdiction on the Delhi court in the aforesaid circumstances to entertain such suits. The Delhi court would have no territorial jurisdiction to entertain it.
24. The avoidance of counter mischief to the Defendant is also necessary while giving the remedy to the Plaintiff under the provisions in question. It was never visualised by the law makers that both the parties would be made to travel to a distant place in spite of the fact that the plaintiff has a remedy of suing at the place where the cause of action has arisen where he is having head office/carrying on business etc. The provisions of the Copyright Act and the Trade Marks Act providefor the authors/trade marks holders to sue at their ordinary residence of where they carry on their business. The said provisions of law never intended to be oppressive to the Defendant. The Parliamentary Debate quoted above has to be understood in the manner that suit can be filed where the plaintiff ordinarily resides or carries on business or personally works for gain. Discussion was to provide remedy to Plaintiff at convenient place; he is not to travel away. Debate was not to enable plaintiff to take defendant to farther place, leaving behind his place of residence/business etc. The right of remedy given is not unbridled and is subject to the prevention of abuse of the aforesaid provisions, as disussed above. Parliament never intended that the subject provisions to be abused by the plaintiff by instituting suit in wholly unconnected jurisdiction. In the instant cases, as the principal place of business is at Mumbai the cause of action is also at Mumbai, but still the place for suing has been chosen at Delhi. There may be a case where plaintiff is carrying on the business at Mumbai and cause of action has arisen in Mumbai. Plaintiff is having branch offices at Kanyakumari and also at Port Blair, if interpretation is having branch offices at Kanyakumari and also at Port Blair, if interpretation suggested by Appellants is acceptable, mischief may be caused by such plaintiff to drag a defendant to Port Blair or Kanyakumari. The provisions cannot be interpreted in the said manner devoid of the object of the Act........
45. It was also submitted that as the bulk of litigation of such a nature is filed at Delhi and lawyers available at Delhi are having expertise in the matter, as such it would be convenient to the parties to contest the suit at Delhi. Such aspects are irrelevant for deciding the territorial jurisdiction. It is not the convenience of the lawyers or their expertise which makes out theterritorial jurisdiction. Thus, he submission is unhesitatingly rejected........
CS Comm. No. 393/2020Gurprashad Gupta Vs. Mahavir Feed Mill page 23
47. In our opinion, the provisions of Section 62 of the Copyright Act and Section 134 of the Trade Marks Act have to be interpreted in the purposive manner. No doubt about it that a suit can be filed by the plaintiff at a place where he is residing or carrying on business or personally works for gain. He need not travel to file a suit to a place where defendant is residing or cause of action wholly or in part arises. However, if the plaintiff is residing or carrying on business etc. at a place where cause of action, wholly or in part, has also arisen, he has to file a suit at that place, as discussed above. Thus, for the aforesaid reasons mentioned by us in the judgment, we are not inclined to interfere with the orders passed by the High Court. Appeals are hereby dismissed. No costs.
(Emphasis Supplied)
49.This Judgment of Hon'ble Supreme Court is a Benchmark for deciding disputes qua territorial jurisdiction in IPR cases in India and was rightly followed by Single Bench of Hon'ble Delhi High Court in case titled Ultra Home Construction Pvt. Ltd. Vs. Purushottam Chaubey and Ors., 2015 Latest Caselaw 5143 Del decided on 20.07.2015. In the cited case the plaintiff company had Registered Office at Karkardooma, Delhi. The defendant was allegedly infringing its registered trademark "AMARPALI" by adopting a strikingly similar tradename "AMBAPALI GREEN" at Deogarh, Jharkhand wherein plaintiff was also running a hotel in association with Ms. Clark under the name Amrapali Clark-Inn. In this case HMJ Valmiki Mehta, applied the ratio of Hon'ble Supreme Court of Indian Performing Rights Society Judgment (supra) returned the plaint for want of territorial jurisdication by concluding as under:
"7. I may note that it is conceded on behalf of the plaintiff that at the place where the defendants are infringing the trademark at the ogre, Jharkhand, plaintiff has a hotel, and if the plaintiff as a hotel can surely the plaintiff is carrying on business at that particular place and carrying on of the hotel business is very much a part of carrying on of the business of the plaintiff and therefore the race of the judgement in Indian Performing Rights Society Ltd's case (supra) clearly applies. The plaintiff is running the hotel with the Clark- Inn Hotel Group i.e. plaintiff company does have a share in the profits and losses in the hotel which is being run along with the Clark-Inn Hotel Group at the Deogarh, Jharkhand. Once that is so, there is a running business and plaintiff is therefore carrying on business at Deogarh, Jharkhand, and consequently the ratio of the judgement in the case of Indian performing rights Society Ltd (supra) applies and hence this court would not have territorial jurisdiction."CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 24
50.The above order of HMJ Valmiki Mehta was challenged by AMRAPALI GROUP in case title Ultra Home Construction Ltd. Vs. Purushottam Chaubey and Ors. 2016 Latest Caselaw 422 Del decided on 20.01.2016 before the Division Bench of HMJs B. D. Ahmed and Sanjeev Sachdeva. The Division Bench, painstakingly discussed the interplay between Section 20 of CPC, Section 134 (2) of 1999 Act and Section 62 (2) of 1957 Act, threadbare in the backdrop of Benchmark judgment of Indian Performing Rights Society (supra) of Hon'ble Supreme Court and ruled that even though the term "Carries on Business" is used in Section 162 (2) of 1999 Act and Section 62(2) of 1957 Act but no explanation is added in the above 2 statutes. The same phrase is used in Section 20 and by virtue of Indian Performing Rights Society (supra).
The meaning assigned to "carry on business" qua a Corporation as contained in CPC shall be read for both Section 134 (2) of 1999 and Section 62 (2) of 1957 Act.
51.As referred to supra a Corporation can be said to "Carry on Business" at two places:
(a) Sole or principal office in India, or
(b) A place where (i) cause of action arose and a place where (ii) it also has a subordinate office.
52.While elaborating the above principal in para 13 Hon'ble Division Bench observed:
13.It is evident from the above observations that the interpretation given to the expression "carries on business" in the context of a defendant under section 20 of the Code has also been employed in the context of a plaintiff under the said sections 134(2) and 62(2). Thus, in addition to the places where suits could be filed under section 20 of the Code, the plaintiff can also institute a suit under the Trade Marks Act, 1999 and the Copyright Act, 1957, as the case may be, by taking advantage of the provisions of section 134(2) or section 62(2), respectively. Both the latter provisions are in pari materia. Under these provisions four situations can be contemplated in the context of the plaintiff being a corporation (which includes a company).
First of all, is the case where the plaintiff has a sole office. In such a case, even if CS Comm. No. 393/2020 Gurprashad Gupta Vs. Mahavir Feed Mill page 25 the cause of action has arisen at a different place, the plaintiff can institute a suit at the place of the sole office.
Next is the case where the plaintiff has a principal office at one place and a subordinate or branch office at another place and the cause of action has arisen at the place of the principal office. In such a case, the plaintiff may sue at the place of the principal office but cannot sue at the place of the subordinate office. The third case is where the plaintiff has a principal office at one place and the cause of action has arisen at the place where its subordinate office is located. In this eventuality, the plaintiff would be deemed to carry on business at the place of his subordinate office and not at the place of the principal office. Thus, the plaintiff could sue at the place of the subordinate office and cannot sue (under the scheme of the provisions of section 134(2) and 62(2)) at the place of the principal office.
The fourth case is where the cause of action neither arises at the place of the principal office nor at the place of the subordinate office but at some other place. In this case, the plaintiff would be deemed to carry on business at the place of its principal office and not at the place of the subordinate office. And, consequently, it could institute a suit at the place of its principal office but not at the place of its subordinate office.
All these four cases are set out in the table below for greater clarity:
S. Place of Plaintiff's Place of Plaintiff's Place where cause of Place where Plaintiff No Principal Office Subordinate/Branc action arose can additionally sue (Sole Office in S. h Office under Section 134 No.1) (2) and Section 62 (2)
1. A -- C A
2. A B A A
3. A B B B
4. A B C A
53.The above judgment of Division Bench of Hon'ble High Court was further assailed by AMRAPALI GROUP in case title Ultra Homes Construction Private Ltd. Vs. Purushotam Kumar Chaubey and Ors. SLP no. 7551 of 2016 decided on 08.04.2016, but the above order was affirmed by the Apex Court.
54.Now, the above ratio on territorial jurisdiction as elaborately dealt with and eruditely explained by the Division Bench by virtue of the above table and the ratio concluded shall be applied on the facts of the case in hand.
55.In another case title Dabur India Ltd. Vs. K R Industries 2008 (10) CS Comm. No. 393/2020 Gurprashad Gupta Vs. Mahavir Feed Mill page 26 SCC 595 Hon'ble Supreme Court dealt at length the interplay between Section 20 CPC, the Trade Mark Act, 1958 and Section 62(2) of Copyright Act, 1957. The Bench clearly reiterated, "Judgment passed by a Court having no territorial jurisdiction is a nullity".
56.While discussing M/s Dhodha House Vs. S K Maingi, 2005 Latest Caselaw 691 SC, the Supreme Court Bench observed that the said suit was primarily based on violation of 1958 Act and not the 1957 Act. While discussing the fate of objection of Territorial Jurisdiction in a composite suit where both the 1958 Act and 1957 Act are invoked. The Bench went on to observe that the mere fact that the goods manufactured by plaintiff are available or are sold in the particular area but that by itself would not mean that the plaintiff carried on any business in Delhi.
57.Applying the above legal decision on the facts of this case it is evident that in the absence of any proof that any part cause of action has arisen in Shahdara, Delhi the only options available with the plaintiff as per Section 134 r/w Section 20 CPC the only place where the suit could have been filed is Ludhiana where the plaintiff resides or for that matter Panchkula, Haryana where the defendant resides.
58.Although plaintiff has miserably failed to show accrual of any part cause of action in Shahdara and it is not the case that goods are being sold on some interactive website, this Commercial Court has no territorial jurisdiction to try this suit. As such this issue is answered against the plaintiff and in favour of defendant.
59.In so far as this Court has no territorial jurisdiction to try this suit, this Court finds that this Court has no authority to decide the remaining issues on merits. Accordingly this plaint is ordered to be returned back to the CS Comm. No. 393/2020 Gurprashad Gupta Vs. Mahavir Feed Mill page 27 plaintiff under Order 7 Rule 10 CPC. Interim orders passed stand vacated forthrightly.
60.Before parting with the suit it is submitted by Ld. Counsel for defendant that the suit in hand has been filed by the plaintiff only to harass the defendant and as a result defendant was constrained to incur huge expenses during the last around four years. It is rightly pointed out that no search and seizure raid was gone conducted by the plaintiff in Shahdara, plaintiff knew from the beginning that he will be able to maintain the suit in Shahdara only by way of demurrer by making bald false pleas but would not be able to establish the territorial jurisdiction by way of cogent evidence.
61.In so far as this suit is at the stage of final arguments the Law on Demurrer cannot be cited and ruled which require that at the initial stage of Order 7 Rule 11 CPC, the contents of the plaint have to be taken ex- facie true. The Law on 'Demurrer' are cases titled Chandra Kishore Chaurasia V. R A Perfumery Works Private Ltd., 2022 Latest Caselaw 2652 Del and Sonal Kanodia V. Ram Gupta and Another, 2023 SCC Online Del 1132 as also Rukhmani Keshwani Trading as Vishwas Agarbatti Store V. Raju Agarbatti Works and Anr but since upon conclusion of trial, decision has to be arrived at on the basis of oral and documentary evidence led by the parties and not on the basis of bald pleas raised in the plaint.
62.In case titled S.P. Chengalvaraya Naidu (Dead) by LRs Vs. Jaganath (Dead) LRs and ors. AIR 1984 SC 853, Hon'ble Supreme Court observed :
"The Courts of Law are meant for imparting justice between the parties. One who comes to the court , must come with clean hands. We are constrained to say that more often then not, process of the court is being abused . Property - grabbers tax- evaders, bank-loan-dodgers and other unscrupulous persons from all walks of life find the court process a convenient level to retain the illegal gains indefinitely. We CS Comm. No. 393/2020 Gurprashad Gupta Vs. Mahavir Feed Mill page 28 have no hesitation that a person whose case is based on falsehood has no right to approach the court. He can be summarily thrown out at any stage of litigation."
63.In case titled "C.B. Aggarwal Vs. P. Krishna Kapoor" AIR 1995 Delhi 154 Hon'ble Delhi High Court observed:
"It is true that in a civilised society, legal process is the machinery for keeping order and doing justice. It can be used properly or it can be abused. It is used properly when it is invoked for vindication for men's right and enforcement of just claims. It is abused when it is diverted from its true course so as to serve extortion or oppression; or to exert pressure so as to achieve an improper end."
In case titled Curtis-Raleighquoted in Jennison v. Baker (1972) 1 All ER 997 at p. 1006. it is said "The law should not be seen to sit by limply, while those who defy it go free, and those who seek its protection lose hope"
64.In Halsbury's Laws of England, (4th Edn.,Vol. 9, Paragraph 38) , there is a brief discussion of when "Abuse of the Process of the Court"
may be a punishable contempt. It is said :
" Abuse of process in general. The Court has power to punish as contempt any misuse of the court's process. Thus the forging or altering of court documents and other deceits of like kind are punishable as serious contempts. Similarly, deceiving the court or the court's officers by deliberately suppressing a fact, or giving false facts, may be a punishable contempt."
65.In case titled Goyal MG Gases Pvt. Ltd. Vs. AIR Liquide Deutschland th Gmbh & Ors. 138(2007) DLT 62 Hon'ble Delhi High Court held that:
"Vexatious and frivolous litigation poses a number of threats to the efficient operation of any civil justice system. Those threats stem from the manner in which the vexatious and frivolous litigant conducts litigation before the courts. Such proceedings, apart, from the oppression and the harassment inflicted on the adversary, are extremely damaging to public interest. Judicial resources are valuable and scarce. The resources of the court are not infinite, especially in terms of judicial time. Therefore, administration of justice and interests of equity and fair play mandate that a party which succeeds is compensated by award of costs in respect of false or vexatious claims or defences. A faulting party may be required to pay to the other party such costs as would, in the opinion of the court, be reasonably sufficient to reimburse the other party in respect of the expenses incurred by him in attending the court on that date and payment of such costs on the next date following the date of such order if unreasonable adjournments are taken by the parties.
However, many unscrupulous parties take advantage of the fact that either costs are not awarded or nominal costs alone are awarded against the unsuccessful party.
The legislature has recognised the need for imposition of costs and consequently, CS Comm. No. 393/2020 Gurprashad Gupta Vs. Mahavir Feed Mill page 29 so far as the civil proceedings are concerned, has enacted Section 35 of the Code of Civil Procedure which provides for imposition of costs. The Apex Court was concerned with the manner in which the costs are imposed resulting in undue advantage being taken by parties of the fact that notional costs are awarded which do not deter or discourage persons from filing vexatious or frivolous claims or defences. ................ The courts have recognised the inherent power of the court to award costs in the interest of justice. .................................... In this background, there is yet another more imperative reason which necessitates imposition of costs. The resources of the court which includes precious judicial time are scarce and already badly stretched. Valuable court time which is required to be engaged in adjudication of serious judicial action, is expended on frivolous and vexatious litigation which is misconceived and is an abuse of the process of law. A judicial system has barely sufficient resources to afford justice without unreasonable delay to those having genuine grievances. Therefore, increasingly, the courts have held that such totally unjustified use of judicial time has to be curbed and the party so wasting precious judicial resources, must be required to compensate."
66.The Division Bench of Delhi High Court in case titled Indian Steel & Wire Products Vs. B.I.F.R. (DB), 2004 (110) DLT 186 held that :
"The sole purpose of filing the petition was to sabotage the proposal/scheme of TISCO which was accepted by the BIFR. The court held that the petitioner- company's false offer and undertaking has delayed the implementation of the scheme and the interest of workers and other creditors have suffered. The court held that the petitioner had not approached the court with clean hands and that such practice and tendency needed to be strongly discouraged and effectively curbed so that "in future, the petitioner and such like litigants should not gather the courage of abusing the process of law for ulterior motives and extraneous considerations. Such motivated petitions pollute the entire legal and judicial process which seriously affects the credibility of this system".
67.In Jagmal Singh Vs. Delhi Transport Corporation 1995 (59) DLT 604, Delhi High Court observed thus:-
"We are firmly of the view that petitioner has resorted to the dilatory tactics hereby crippling the progress of the departmental enquiry pending against him for the last about eight long years. It is not only unfortunate but matter of concern to all of us being the members of the society, that the petitioner by indulging in this type of frivolous litigation has not only wasted his time and money but has also wasted the time of the court and other public functionaries thereby causing unnecessary drain on the resources of public exchequer whose coffers are filled in by poor people's money. In such a case with a view to discourage frivolous litigation, it becomes our duty not only to see that the petitioner is saddled with exemplary costs but also to ensure that he gets no benefit on account of the delay caused by him in the departmental enquiry pending against him."CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 30
68.In Chandra Shashi v. Anil Kumar Verma (1995) 1 SCC 421,Hon'ble Supreme Court observed :
"The stream of administration of justice has to remain unpolluted so that purity of court's atmosphere may give vitality to all the organs of the State. Polluters of judicial firmament are, therefore, required to be well taken care of to maintain the sublimity of court's environment; so also to enable it to administer justice fairly and to the satisfaction of all concerned.... Anyone who takes recourse to fraud, deflects the course of judicial proceedings, or if anything is done with oblique motive, the same interferes with the administration of justice. Such persons are required to be properly dealt with, not only to punish them for the wrong done, but also to deter others from indulging in similar acts which shake the faith of people in the system of administration of justice..... To enable the courts to ward off unjustified interference in their working, those who indulge in immoral acts like perjury, prevarication and motivated falsehoods have to be appropriately dealt with, without which it would not be possible for any court to administer justice in the true sense and to the satisfaction of those who approach it in the hope that truth would ultimately prevail. People would have faith in courts when they would find that 'Satyameva jayate' (truth alone triumphs) is an achievable aim there; or 'Yato Dharmstato Jaya' (it is virtue which ends in victory) is not only inscribed in emblem but really happens in the portals of courts.
The legal position thus is that if the publication be with intent to deceive the court or one made with an intention to defraud, the same would be contempt, as it would interfere with administration of justice. It would, in any case, tend to interfere with the same. This would definitely be so if a fabricated document is filed with aforesaid mens rea.
69.In Salem Advocate Bar Association Vs. Union of India (2005) 6 SCC 344, Hon'ble Supreme Court observed thus:-
"Judicial notice can be taken of the fact that many unscrupulous parties take advantage of the fact that either the costs are not awarded or nominal costs are awarded against the unsuccessful party. Unfortunately, it has become a practice to direct parties to bear their own costs. In a large number of cases, such an order is passed despite Section 35(2) of the Code. Such a practice also encourages the filing of frivolous suits. It also leads to the taking up of frivolous defences. Further, wherever costs are awarded, ordinarily the same are not realistic and are nominal. When Section 35(2) provides for cost to follow event, it is implicit that the costs have to be those which are reasonably incurred by a successful party except in those cases where the court in its discretion may direct otherwise by recording reasons therefor. The costs have to be actual reasonable costs including the cost of the time spent by the unsuccessful party, the transportation and lodging, if any, or any other incidental costs besides the payment of the court fee, lawyer's fee, typing and other costs in relation to the litigation. It is for the High Courts to examine these aspects and wherever necessary make requisite rules, regulations or practice direction so as to provide appropriate guidelines for the subordinate courts to follow."CS Comm. No. 393/2020
Gurprashad Gupta Vs. Mahavir Feed Mill page 31
70.In case titled as State of Karnataka Vs. All India Manufacturers Organisation, (2006) 4 SCC 683, a challenge was laid to a common judgment of the High Court of Karnataka disposing of three public interest litigations whereby a direction was issued to the State of Karnataka to continue to implement a certain project known as the "Bangalore-Mysore Infrastructure Corridor Project". While dismissing the appeals, the Apex Court held that there was no merit in them. It was further directed that:-
"Considering the frivolous argument and the mala fides with which the State of Karnataka and its instrumentalities have conducted this litigation before the High Court and us, it shall pay Nandi costs quantified at Rs.5,00,000/-, within a period of four weeks of this order".
71.In Morgan Stanley Mutual Fund Vs. Kartick Das (1994) 4 SCC, 225 Hon'ble SC's dealt with the issue and with intention to:
"Discourage speculative and vexatious litigation and judicial adventurism. "There is an increasing tendency on the part of the litigants to indulge in speculative and vexatious litigation and adventurism which the fora seem readily to oblige. We think such a tendency should be curbed. Having regard to the frivolous nature of the complaint, we think it is a fit case for award of costs, more so, when the appellant has suffered heavily. Therefore, we award costs of Rs.25,000/- in favour of the appellant."
72.In Khatri Hotels Private Ltd. Vs. Union of India, (2011) 9 SCC 126 Hon'ble Supreme Court imposed a cost of Rs.5 lacs on the plaintiff while concluding that the plaintiff approached the Court with unclean hand. It abused the process of the Court. Hon'ble Supreme Court ruled that:
"Such litigants should be burdened with exemplary and punitive costs."
73.In Kishore Samrite Vs. The State of UP, (2013) 2 SCC 398 Hon'ble Supreme Court expounded that:
"As and when the Courts found that a litigating party is abusing the Court process and had approached the Court with unclean hands without disclosing complete facts, they shall be burdened with exemplary and deterrent cost. In the cited case while observing that the petitioner have misused the judicial process, a cost of Rs.5 lacs was imposed."
74.In so far as plaintiff has financially burdened the defendants by making them to contest this suit at a place where there was no Territorial CS Comm. No. 393/2020 Gurprashad Gupta Vs. Mahavir Feed Mill page 32 Jurisdiction, plaintiff is burdened with cost of Rs. 1 lakh out of which Rs.75,000/- shall be paid by the plaintiff to the defendant within 4 weeks and Rs.25,000/- to be deposited with Shahdara Bar Association.
75.File be consigned to Record Room after due compliance.
(SURINDER S. RATHI) District Judge, Commercial Court -03 Shahdara District, KKD Delhi/20.03.2024 CS Comm. No. 393/2020 Gurprashad Gupta Vs. Mahavir Feed Mill page 33