Delhi High Court
Hari Ram And Sons vs Vivek Purwar & Anr. on 2 November, 2022
Author: Navin Chawla
Bench: Navin Chawla
Neutral Citation Number: 2022/DHC/004649
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 07.09.2022
Date of decision: 02.11.2022
+ RFA-IPD 4/2022
VIVEK PURWAR AND ANR. ..... Appellants
Through: Mr.Jagdish Sagar, Mr.Praveen
Kumar Jain, Mr.Naveen Kumar
Jain, Ms.Shalini Jha, Ms.Rashmi
Kumari and Ms.Meenakshi Dutta,
Advs.
versus
HARI RAM AND SONS ..... Respondent
Through: Mr.S.K.Bansal and Mr.Ajay
Amitabh Suman, Advs.
+ RFA-IPD 5/2022 & CM 96-99/2022
HARI RAM AND SONS ..... Appellant
Through: Mr.S.K.Bansal and Mr.Ajay
Amitabh Suman, Advs.
versus
VIVEK PURWAR & ANR. ..... Respondents
Through: Mr.Jagdish Sagar, Mr.Praveen
Kumar Jain, Mr.Naveen Kumar
Jain, Ms.Shalini Jha, Ms.Rashmi
Kumari and Ms.Meenakshi Dutta,
Advs.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
1. The present cross-appeals have been filed challenging the
judgment and order dated 01.06.2022 passed by the learned Additional
District Judge, Central, Tis Hazari Courts, Delhi (hereinafter referred to
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as the 'learned Trial Court') in the suit, being TM No.1054/2016, titled
Hari Ram & Sons v. Prem Narain Purwar & Ors, decreeing the suit
filed by the plaintiff in the suit [the appellant in RFA-IPD 5/2022] for the
relief of permanent injunction against the defendants in the suit [the
appellants in RFA-IPD 4/2022], thereby restraining the defendants in the
suit from using the trade mark 'HARI RAM AND SONS & HR
LOGO'.
2. The parties are referred to in the present judgment as 'the plaintiff
in the suit' and 'the defendants in the suit'.
FACTUAL BACKGROUND
3. The defendants in the suit are aggrieved of the impugned judgment
and order on the ground that the learned Trial Court, having categorically
held that it does not have territorial jurisdiction to try the suit, could not
have proceeded to decree the same. It is contended that the decree passed
by the learned Trial Court is a nullity.
4. On the other hand, the plaintiff in the suit is aggrieved of the
finding of the learned Trial Court on the issue of lack of territorial
jurisdiction and has challenged the same.
5. As the two appeals are arising from the same judgment and decree
and raise the same issue of lack or otherwise of the territorial jurisdiction
of the learned Trial Court, they are being disposed of by way of this
common judgment.
6. The plaintiff in the suit had filed the subject-suit alleging therein
that they are engaged in the business of manufacturing, marketing and
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sales of sweets, namkeens, confectionary, fast food, chutney and other
allied and related goods since the year 1890 in Agra in the State of Uttar
Pradesh under the trade mark 'M/s. HARI RAM & SONS'. In the year
1964, the plaintiff in the suit adopted the trade marks 'HR LOGO' and
the words 'HARI RAM & SONS'. The plaintiff in the suit is also the
registered proprietor of the mark 'HARI RAM & SONS' registered in
Classes 30 and 42 respectively.
7. It was averred that in the year 1911, Sh. Hari Ram with his father
Sh. Mithulal came to Allahabad (now Prayagraj) and started a namkeen
business in the name and style of 'M/s. Hari Ram and Sons‟, preparing
samosa and mota sev along with Sh. Gauri Shankar and Sh. Ram
Bharose, and continued this arrangement till the year 1943. In the year
1943, Smt. Jogia (the wife of Sh. Mithu Lal and the mother of Sh. Hari
Lal) partitioned all the movable and immovable properties, including the
namkeen business, vide registered Partnership Deed dated 22.12.1943,
wherein the namkeen business came to the share of Sh. Hari Ram and Sh.
Ram Bharose. The said mark has been in use by the partnership firm
since then by the legal heirs, though the partners have changed and
partnership reconstituted due to the retirement and/or death of previous
partners.
8. It was alleged that the defendants in the suit have adopted the same
mark and are engaged in the same business as that of the plaintiff in the
suit. It was alleged that the adoption of the mark by the defendants in the
suit is mala fide and dishonest as the defendant no.1 is the brother of Sh.
Ram Purwar and the uncle of Sh. Arvind Kumar Purwar, who are both
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partners of the plaintiff-firm, while the defendant no.2 is the nephew of
Sh. Ram Purwar and the cousin of Sh. Arvind Kumar Purwar. In a suit
being OS No. 15 of 1981 titled Sanjay Purwar v. Shiv Shanker Lal and
Ors. filed in the Court of Small Causes, Senior Division, Allahabad
(hereinafter referred to as 'the Court of Small Causes'), being a suit for
declaration, partition and accounts, it was held vide judgment and order
dated 22.01.2000 that the business run by the plaintiff in the suit was not
a joint family business; neither Sh. Sanjay Purwar nor other persons had
any right to seek partition or cause interference in the business thereof.
Sh. Prem Narain Purwar, who is the defendant no. 1 in the suit, was a
party in that suit before the Court of Small Causes.
9. The defendants in the suit filed their written statement to contest
the impugned suit, which included raising a contention that the learned
Trial Court lacked territorial jurisdiction to entertain and try the suit.
10. The learned Trial Court was pleased to frame the following issues,
vide order dated 21.01.2011:-
"1. Whether this Court has territorial
jurisdiction to entertain and try the suit? OPP
2. Whether suit suffers from mis-joinder of
defendant no. 1? If so, to what effect? OPD
3. Whether this suit is barred by latches and
acquiescence? OPD
4. Whether plaintiff is the prior adopter, owner/
proprietor of Trade Mark/ Trade Name/ device in
question in relation to the stated goods? OPP
5. Whether the trade Mark/ Trade Name of
defendants is identical with and deceptively
similar to the Trade Marks of the plaintiff? QPP
6. Whether the plaintiff is entitled to decree of
permanent injunction as have been claimed in
the suit? OPP
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7. Whether the plaintiff is entitled to decree of
rendition accounts to access profits earned out of
illegal trade activities by the defendants? OPP
8. Relief."
11. Additional issues were framed in the suit, vide order dated
09.09.2013 as under:-
"9. Whether the plaintiff is entitled to relief of
injunction against defendant for infringement of
trademark "Hari Ram & Sons"? OPP
10. Whether the registration of trademark in
favour of the plaintiff in relation to goods other
than Namkeen, Dalmoth, Khasta, Samosa and
Khatta Ghana is invalid? OPD"
12. On consideration of the pleadings and evidence lead by the parties,
the learned Trial Court, vide impugned judgment and order, held that it
lacked territorial jurisdiction to try the suit. However, since evidence had
already been led in the suit, the judgment was pronounced on other issues
as well. The judgment being in favour of the plaintiff in the suit on issues
other than territorial jurisdiction, the suit was decreed in favour of the
plaintiff in the suit.
13. Before proceeding further, I shall first quote the finding of the
learned Trial Court on the issue of territorial jurisdiction as under:-
"31. The first issue is regarding jurisdiction. It is
the case of the plaintiff that he has specifically
mentioned in Para 25 of his plaint that defendants
already solicit business in Delhi hence cause of
action has arisen within the jurisdiction of Delhi.
It is submitted that it is not specifically denied by
defendants that they are also soliciting business in
Delhi.
32. On the other hand, it is submitted by counsel
for defendants that they have specifically denied
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in their reply to the said para that all the
allegations are false and fabricated. It is further
submitted that no proof is filed by plaintiff to show
that it is having business in Delhi. Plaintiff has not
filed any receipts to show that he sold his goods in
Delhi. He has not given name of his any agent or
shops where goods of the plaintiff are sold in
Delhi. It is further submitted that in cross-
examination, witness of plaintiff admitted that we
are not in Delhi. Further on the newspaper it is
not mentioned that it is newspaper of Delhi which
is filed by plaintiff on record.
33. I have heard both the sides and gone through
the record on this issue. Plaintiff has not been
able to file any document to show that he has
business in Delhi and is selling his products in
Delhi nor he has been able to show any document
that defendant in selling his products in Delhi.
Rather plaintiff himself admitted in his cross-
examination that he is not doing any business in
Delhi. Hence it is not proved that the present
court has territorial jurisdiction to try the present
suit. However since evidence has already been
concluded in this matter and this issue of
territorial jurisdiction is decided on merits at the
time of disposal of the suit, I am bound to give
judgment on other issues as well on merits."
SUBMISSIONS ON BEHALF OF THE LEARNED COUNSEL FOR THE
PLAINTIFF IN THE SUIT
14. The learned counsel for the plaintiff in the suit submits that the
above finding of the learned Trial Court is erroneous, inasmuch as, the
plaintiff in the suit, in the plaint, had inter alia contended that the
defendants in the suit are soliciting business under the impugned trade
mark within the territorial limits of Delhi. This was not specifically
denied by the defendants in the suit in their written statement. The
defendants in the suit, having not specifically denied the same, are
deemed to have admitted the said assertion and, therefore, on such
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admission itself, the learned Trial Court had the requisite territorial
jurisdiction to try the suit. In support of this submission, he places
reliance on the judgment of the Division Bench of this Court in Pfizer
Enterprises Sarl v. Cipla Ltd., 2009 (39) PTC 358 (Del) (DB). He
submits that solicitation of business is an important part of the cause of
action and, therefore, the learned Trial Court would have the necessary
territorial jurisdiction. In support, he places reliance on the judgments of
this Court in Govardhan Motels and Restaurants v. I. Subramanyam
and Ors., 2008 (36) PTC 513 (Del.) and M/s Ruchi Pvt. Ltd. & Others v.
M/s Indian Flame Enterprises & Others, 2001 SCC OnLine Del 968.
15. The learned counsel for the plaintiff in the suit further submits that
the learned Trial Court, vide order dated 02.02.2019, had rejected the
application of the defendants in the suit raising a preliminary objection to
the territorial jurisdiction of the Court; observing that as the defendants in
the suit had not specifically denied the fact of their conducting business
at Delhi, the Court would have the territorial jurisdiction to entertain the
suit. He submits that the position did not change thereafter and, therefore,
as there was no categorical denial on the part of the defendants in the suit
to their soliciting business at Delhi, there was no requirement of the
plaintiff in the suit to lead any further evidence.
16. The learned counsel for the plaintiff in the suit further submits that
the defendants in the suit, in their written statement had further pleaded
that they have continuously been promoting their goods and business
under the impugned trade mark through advertisement and publicity in
leading newspapers, namely, 'Amar Ujala‟, „Hindustan‟ and 'Dainik
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Jagran', as also in magazines, namely, 'Yellow India', 'Trade
Hoardings', and television channels such as 'Sahara U.P. T.V. Channels'
It was further pleaded that the mark of the defendants in the suit is a
'well-known trade mark' within the meaning of Section 2(1)(zg) of the
Trade Marks Act, 1999 (in short, 'the Act'). He submits that, therefore, as
the defendants' mark was being advertised within the territorial limits of
Delhi, this Court would have the territorial jurisdiction, and on the own
contention of the defendants in the suit that it is a well-known trade mark,
clearly they were expressing their right to use the trade mark in Delhi as
well. He submits that even the pleadings of the defendants in the suit
prove that the learned Trial Court had territorial jurisdiction to entertain
the suit. He places reliance on the judgments of this Court in Bhatia
Industries and Ors. v. Pandey Industries and Ors., 2011 SCC OnLine
Del 238 and Amar Soap Factory v. Public Grant Udyog Samiti, 1984
SCC OnLine Del 258.
17. The learned counsel for the plaintiff in the suit further submits that
admittedly, the defendants in the suit had applied for the registration of
their trade mark with the Registrar of Trade Marks at Delhi. The said
application had no conditions or restrictions on the territorial limit and
was filed for the entire country, including for the territory of Delhi.
Therefore, even on apprehension that the said mark would be used in
Delhi by the defendants in the suit, this Court would have the territorial
jurisdiction to entertain the suit praying for an order of injunction. In
support, he places reliance on the judgment of this Court in Pfizer
Products Inc. v. Rajesh Chopra and Ors., 2007 SCC OnLine Del 868.
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SUBMISSIONS ON BEHALF OF THE LEARNED COUNSEL FOR THE
DEFENDANTS IN THE SUIT
18. On the other hand, the learned counsel for the defendants in the
suit submits that the defendants in the suit had categorically denied the
assertion of the plaintiff in the suit that the defendants in the suit carry on
their business in Delhi. He submits that, therefore, there was no
admission in the pleadings of which the plaintiff in the suit could have
taken any advantage. He submits that the plaintiff in the suit, during his
cross-examination had also admitted that the plaintiff in the suit is not
carrying on its business at Delhi. On being cross-examined on the basis
of making an assertion that the defendants in the suit carry on their
business in Delhi, the plaintiff's witness gave an evasive answer and
therefore, the learned Trial Court has rightly arrived at a conclusion that
there was no evidence produced by the plaintiff in the suit in support of
its assertion that the defendants in the suit carry out their business within
the territorial limits of Delhi.
19. On the plea of the plaintiff in the suit that the defendants in the suit
have stated about advertising their trade mark in print and electronic
media, the learned counsel for the defendants in the suit submits that the
defendants in the suit had clearly stated in their written statement to the
suit that these newspapers have circulation only in the State of Uttar
Pradesh. The TV channel, by its very name, is again targeting viewers in
the State of Uttar Pradesh only. Therefore, these advertisements in print
and electronic media would not confer any jurisdiction in the Courts at
Delhi. He further submits that in any case, advertisements cannot vest the
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learned Trial Court with jurisdiction. In support of this assertion, he
places reliance on the judgment of the Supreme Court in Dhodha House
v. S.K. Maingi, (2006) 9 SCC 41.
20. The learned counsel for the defendants further submits that the plea
of the defendants in the suit that the mark of the defendants in the suit is a
'well-known trade mark' under the provisions of the Act, must not be
read out of context and are contrary to their submission that the
defendants are confined in their operations only to the city of Prayagraj.
21. He further submits that the mere filing of an application for the
registration of the trade mark before the Registrar of Trade Marks at
Delhi would again not vest this Court with the requisite territorial
jurisdiction. In this regard, he places reliance on the judgment of the
Supreme Court in Dhodha House (supra) and of this Court in St. Ives
Laboratories Inc. v. Arif Perfumers and Ors., 2009 SCC OnLine Del
208.
ANALYSIS AND FINDINGS
22. I have considered the submissions made by the learned counsels
for the parties.
23. At the outset, I shall consider the submission made by the learned
counsel for the plaintiff in the suit that there was an admission of the
defendants in the suit of soliciting customers at Delhi, that is, within the
territorial jurisdiction of the learned Trial Court and therefore, no further
proof thereof was required to be furnished by the plaintiff in the suit to
invoke the territorial jurisdiction of the learned Trial Court. In this regard,
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he had drawn my attention to the following averments made in the plaint
and in the written statement:
Plaint
"25. This Hon‟ble Court has the territorial
jurisdiction to try and adjudicate upon the present
suit. The defendants are committing the impugned
acts within the jurisdiction of this Hon‟ble Court
by conducting soliciting, selling and marketing
their impugned goods and business under the
impugned trade mark/label/trade name in Delhi
besides other parts of the country. The plaintiff is
carrying on its said goods and business under the
said Trade Mark/label in Delhi. The plaintiff‟s
trade mark applications are effected from the
Trade Marks Registry, Delhi. Further the
defendants have filed application for registration
of impugned trade mark on all India basis
including Delhi. The cause of action in whole
and/or in part has arisen within the jurisdiction of
this Hon‟ble Court. The plaintiff has tremendous
goodwill and reputation in its said trade
marks/labels in Delhi which is being tarnished by
defendants impugned activities of the Defendants
in Delhi. The plaintiffs said proprietary rights are
being prejudicially affected in Delhi due to the
defendants impugned activities. This Hon‟ble
Court, as such, has the jurisdiction to try and
adjudicate the present suit and also by virtue of
Section 62 (2) of the Indian Copyright Act, 1957."
Written Statement
Preliminary Objections:
1. That this Hon‟ble Court has no jurisdiction to
try and entertain the present suit
The Plaintiff as well as the Defendants actually
and voluntarily reside and carry on their
business for gains at Allahabad (U.P.)
exclusively in as much as the Plaintiff and the
Defendants manufactures and supply all their
goods at Allahabad only, and there is no
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manufacture, marketing and sale of their
Products outside the territory of U.P. Both, the
Plaintiff as well as the Defendants have their
offices and base at Allahabad alone. The
Plaintiff as well as the Defendants do not have
any business activity in Delhi and with in the
territorial jurisdiction of this Hon‟ble Court.
The plaintiff has not placed even any prima
facie evidence on record to the contrary. Thus
there is no question of infringement of
Plaintiff's trade mark, copy right or passing off
their products by the Defendants at Delhi
within the jurisdiction of this Hon'ble Court.
Therefore as per the provisions of Section 20 of
the C.P.C. and Section 134 of Trade Marks Act,
1999 this Hon'ble Court does not have
jurisdiction to entertain and try this Suit.
2. The defendants are exclusively using their
Trademark Hari Ram and Sons Papad since
2001 within the State of Uttar Pardesh. The
Plaintiffs are well aware of this fact as they are
also related to the defendants and further the
place of the business activities of the defendants
are exclusively in Uttar Pradesh and more
prominently in Allahabad....."
Additional Plea:
"6. That defendants have been continuously
promoting their said goods and business under the
said trade mark/ label through different means
and modes including through their advertisements
and publicity in leading news papers, namely
"AMJR UJALA" "HINDUSTAN and DAINIK
JAGRAN", having circulation in Uttar Pradesh,
trade literature magazines, namely Yellow INDIA,
trade hoardings and Sahara U.P. T.V. Channels,
etc. That defendants have already spent huge
amounts of money on the publicity in consequence
thereof and having regard to the excellent quality
and the high standard of the products of the
defendants under their said trade mark/ label, they
have acquired high reputation and they presently
enjoy tremendous goodwill and enviable
reputation in the market. The defendants also give
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high importance to its packaging of their goods so
that the spices/papad retains its flavour and
quality. The defendants also put the nutritional
value of their products in their packaging and
therefore gives maximum importance to the
quality of their products.
7. That said Trade mark/ Label have already
become a distinctive indicium of the defendants
and their said goods and business thereunder. The
purchasing public, traders and Public at large
associate, Identify and distinguish the said Trade
Mark/ Label with the defendants and defendants
goods and business alone. The defendants contend
that the said Trade Mark/ Label have acquired
secondary significance denoting the said goods
and business of the defendants and are recognized
with the defendants' source alone. The defendants'
said Trade Mark/ Label 's well known Trade Mark
within in the meaning of Section 2 (1) (z g) of the
Trade Marks Act, 1999."
Written Statement
Parawise reply:
"Para 25. That the contents of Para No.25 are
wrong and ill advised hence are denied. The
plaintiff and defendants reside and work for gain
at Allahabad and have their offices and business
activities exclusively at Allahabad (U.P.) and
none of the party has/ had any business activity in
Delhi of any kind including sale for commercial
purposes. It is denied that the defendants are
marketing and selling their goods in Delhi and
other parts of the country. As stated hereinabove
the sale of their products is confined to the
Uttarpradesh only. The Plaintiff has made bald
averments in the said para without any basis.
Mere filing of the trademark applications for
registration of the trademark in delhi does not
confer jurisdiction before this Hon'ble Court. The
jurisdiction of the offices of the Trademark
Registry has been fixed by the trademarks
Registry i.e for Uttarpradesh, state of J & K,
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Punjab, Himachal Pradesh and Chandigarh the
trademark registry at Delhi will have the
jurisdiction for registration of trademark. The
plaintiffs goods are not at all sold in Delhi and
therefore the question of goodwill for their
trademark does not arise at all. The defendants
have never sold their products in Delhi nor they
have any intention to sell their products in Delhi
or within the jurisdiction of this Hon'ble Court. In
fact the products of plaintiff and defendants are
entirely different and distinct. This Hon'ble Court,
therefore, has no jurisdiction to entertain and try
the present suit against the defendants either
under section 134 of the Trade Marks Act, 1999 or
under section 62 (2) of the Copy Right, Act 1957
or under Section 20 of C.P.C."
24. As noted hereinabove, the primary contention of the plaintiff in the
suit is that while the plaintiff in the suit, in paragraph 25 of the plaint
reproduced hereinabove, had inter-alia contended that the defendants in
the suit are soliciting business under the impugned trade mark within the
territorial limits of Delhi, the same has not been specifically denied by
the defendants in the suit in their written statement. I find the said
submission untenable. A wholistic reading of the written statement filed
by the defendants in the suit would clearly show that the defendants in
the suit have explicitly stated that their business activities are confined
exclusively to the State of Uttar Pradesh, and more particularly to the city
of Prayagraj, and have no business activities in Delhi of any kind
'including sale for commercial purpose'. The defendants in the suit have
denied that they are marketing and selling their goods in Delhi. They
reiterate that the sales of their product are confined to the State of Uttar
Pradesh. Merely because they have not used the word 'soliciting' in their
written statement would not mean that there is no denial of this fact in the
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written statement filed by the defendants in the suit. It is trite law that the
written statement has to be read as a whole and sentences cannot be read
in isolation. [Refer: Express Towers P. Ltd. & Anr. V. Mohan Singh &
Ors., 2007 SCC OnLine Del 1213; and Charanjit Singh v. Kehar Singh,
2006 SCC OnLine Del 578.
25. Similarly, reliance of the learned counsel for the plaintiff in the suit
on the order dated 02.02.2009 passed by the learned Trial Court
dismissing the application under Order VII Rule 11 of the Code of Civil
Procedure, 1908 (in short, the 'CPC') filed by defendants in the suit, is
also of no assistance to the plaintiff in the suit, inasmuch as, not only the
said order recorded that it was on the basis of a prima facie opinion of the
learned Trial Court at that stage, but also because thereafter, a specific
issue regarding the territorial jurisdiction of the learned Trial Court was
framed vide order dated 21.01.2011. The plaintiff in the suit was,
therefore, put to notice that there is no admission of the territorial
jurisdiction of the learned Trial Court in the pleadings and that the
plaintiff in the suit would have to prove it on leading evidence.
26. The judgment of this Court in Govardhan Motels and Restaurants
(supra) has stated that defendants soliciting the customers within the
territorial jurisdiction of the Court may be one of the criteria for vesting
the jurisdiction in a Court. In the facts of that case, it was found that the
said assertion was supported by the report of the Local Commissioner
appointed by the Court therein. In spite of the same, the Court clarified
that the said issue was being decided at the preliminary stage, where the
averments made in the plaint are assumed to be correct. In the present
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case, as the parties have undergone the trial and led their respective
evidence, the referred judgment would have no application. The plaintiff
has led no evidence to prove that the defendants were indeed soliciting
business in the impugned trade mark in Delhi.
27. Similarly, in the case of M/s Ruchi Pvt. Ltd. (supra), the Court,
while considering the application filed under Order XXXIX Rule 1 and 2
of the CPC and the averment made in the plaint, held that the Court
possesses the territorial jurisdiction to entertain the suit. The said
judgment, having been passed at an ad-interim stage, again would not
apply to the facts of the present case.
28. In Pfizer Enterprises Sarl (supra), the defendant had not denied
the assertion of the plaintiff that the complained product was available for
sale and distribution in Delhi. It was in that peculiar fact that the Court
held that in absence of denial to such an important averment, the plaintiff
would, in fact, not require evidence on this aspect and the return of the
plaint was improper. In the present case, as noted hereinabove, on a
wholistic reading of the written statement, mere absence of the word
'soliciting', cannot lead to an inference of an admission against the
defendants in the suit. The said judgment, therefore, would be of no avail
to the plaintiff in the suit.
29. The contentions of the plaintiff in the suit that the defendants in the
suit, themselves having contended that they have been advertising their
product in print as also electronic media, the learned Trial Court would
have the territorial jurisdiction to entertain the suit, also cannot also be
accepted. In this regard, paragraph 6 of the 'Additional Plea' taken in the
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Neutral Citation Number: 2022/DHC/004649
written statement of the defendant nos.2 and 3 in the suit has been
reproduced hereinabove. The same clearly shows that the defendants in
the suit had pleaded that they are advertising their products in newspapers
'having circulation in Uttar Pradesh'. The television channel mentioned
in the written statement of the defendants in the suit was 'Sahara U.P.
T.V. Channels‟. Clearly therefore, it was the assertion of the defendants
that the advertisements, both in print as also electronic media, were
targeted to customers in the State of Uttar Pradesh. In my opinion, such
an advertisement cannot vest jurisdiction in a Court located at Delhi, as
the said advertisements were not intended for the customers at Delhi. In
Dhodha House (supra), the Supreme Court, placing reliance on another
judgment of the Apex Court in Oil and Natural Gas Corporation v.
Utpal Kumar Basu, (1994) 4 SCC 711, held that an advertisement
appearing in a journal or newspaper by itself would not confer any
jurisdiction on the Court, if it otherwise did not have any.
30. In the present case, both the plaintiff and the defendants in the suit
are admittedly carrying on their business only within the State of Uttar
Pradesh. This has been also admitted by the witness appearing for the
plaintiff in the suit. Merely because in the course of their business, the
defendants in the suit have advertised their products in the print as also
electronic media, which may have a spill over circulation in Delhi (which
also has not been proved by the plaintiff in the present case), it cannot be
said that the learned Trial Court at Delhi would gain jurisdiction to
entertain the suit of trade mark infringement and passing off against the
defendants in the suit.
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BATRA
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31. In Amar Soap Factory (supra), this Court held that the defendant
thereto had advertised his mark in a newspaper 'widely circulated in
Delhi and sold their products at Delhi‟. It was based on this finding that
this Court held that the Court at Delhi had the requisite territorial
jurisdiction to try the matter.
32. Coming to the submission of the learned counsel for the plaintiff in
the suit that the defendants in the suit have filed for the registration of its
trade mark at Delhi and such registration is not confined to any particular
territory but to the whole of India, including Delhi, this Court would have
jurisdiction, in my opinion, the same would have been a relevant
consideration at the stage of considering jurisdiction of this Court at a
preliminary stage. Once the parties have led their evidence and it is the
specific case on behalf of the defendants in the suit that the defendants in
the suit neither carry out nor intend to carry out any business in Delhi, the
mere filing of such an application before the Registrar of Trade Marks
would not vest jurisdiction in the learned Trial Court to entertain the suit.
The application has to be necessarily filed at Delhi as the jurisdictional
office of the Registrar of Trade Marks is situated at Delhi. Though, an
application is applied for on a pan-India basis, the trade mark is yet to be
registered. The defendants in the suit could also amend their application
so as to confine the territorial limit of their registration. The same could
also be directed by the Registrar of Trade Marks while considering the
application of the defendants in the suit. As noted hereinabove, the
plaintiff and the defendants in the suit both carry on their business only in
the State of Uttar Pradesh.
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33. In Dhodha House (supra), the Supreme Court has held that a
cause of action will arise only when a registered trade mark is used and
not when an application is filed for registration of the trade mark. The
suit may lie where an infringement of trade mark or copyright takes place
but a cause of action for filing the suit would not arise within the
jurisdiction of the Court only because an advertisement has been issued
in the Trade Marks Journal or any other journal, notifying the factum of
filing of such an application.
34. In St. Ives Laboratories Inc. (supra), a Coordinate Bench of this
Court has held that the registration of a trade mark in Delhi cannot be a
ground to invoke the jurisdiction of a Delhi Court. The same was
reiterated in a judgment of this Court in M/s Matrumal Dhannalal Oil
Mill v. M/s Abhishek Enterprises, 2010 SCC OnLine Del 1100.
35. In Pfizer Products Inc vs. Rajesh Chopra (supra), this Court was
considering an application filed under Order VII Rule 10 of the CPC and
held that the threat of sale of offending goods in Delhi would itself confer
the jurisdiction of a Court at Delhi to entertain the suit claiming
injunction in respect thereof. However, in the present case, where this
threat is not found to be genuine, at a trial of the suit, it cannot be said
that the Court would still have the jurisdiction to entertain the suit. It
would always depend on the facts and circumstances of the given case to
determine whether the Court has territorial jurisdiction to entertain the
suit or not. In the totality of facts, pleadings and evidence of the parties, it
cannot be accepted that any part of the cause of action had arisen within
the territorial jurisdiction of the learned Trial Court.
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Neutral Citation Number: 2022/DHC/004649
36. Order VII Rule 10 of the CPC is reproduced herein below:
"10. Return of plaint.- (1) Subject to the
provisions of rule 10A, the plaint shall at any
stage of the suit be returned to be presented to the
court in which the suit should have been
instituted.
Explanation: For the removal of doubts, it is
hereby declared that a court of appeal or revision
may direct, after setting aside the decree passed in
a suit, the return of the plaint, under this sub-rule.
(2) Procedure on returning --On returning a
plaint, the Judge shall endorse thereon the date of
its presentation and return, the name of the party
presenting it, and a brief statement of the reasons
for returning it."
37. It is trite law that the plaint can be returned 'at any stage of the
suit‟. Therefore, on the recording of the evidence, if the Court finds that
in the given facts, the Court has no territorial jurisdiction, it will return
the plaint to be presented before the Court in which the suit should have
been instituted. The Explanation to Order VII Rule 10 of the CPC vests
this power even in the Court of appeal or revision.
38. It is also settled law that once the Court finds that it has no
territorial jurisdiction to entertain or adjudicate the suit, it must return the
plaint to be filed in a Court of appropriate jurisdiction. The finding
thereafter rendered by it, though may have to be necessarily given in
view of Order XIV Rule 2 of the CPC, shall not be binding on the parties;
the same would be a nullity, as held by the Supreme Court in Kiran
Singh & Ors. v. Chaman Paswan & Ors., (1955) 1 SCR 117.
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Neutral Citation Number: 2022/DHC/004649
39. In the present case, not only was the objection of lack of territorial
jurisdiction taken by the defendants in the suit at the initial stage of the
trial of the suit, but an issue in that regard has been framed and has been
answered by the learned Trial Court in favour of the defendants in the
suit. The proper and only course open to the learned Trial Court
thereafter was to return the plaint to the plaintiff in the suit to file the
same before a Court having jurisdiction. The learned Trial Court, having
held that it lacked territorial jurisdiction, could not have proceeded to
decree the suit in favour of the plaintiff in the suit.
RELIEF
40. In view of the above, the finding of the learned Trial Court on
issue no.1 as regard the lack of territorial jurisdiction of the court to
adjudicate the suit, is upheld. Consequently, the plaint is returned to the
plaintiff in the suit to be filed before a Court of competent jurisdiction.
The finding of the learned Trial Court on the other issues is set aside and
shall not be binding on the parties, in view of the lack of territorial
jurisdiction of the Court.
41. The decree passed by the learned Trial Court is, consequently, also
set aside.
42. The cross-appeals are disposed of in the above terms along with
the pending applications. There shall be no order as to cost.
NAVIN CHAWLA, J.
NOVEMBER 02, 2022/rv/AB/Ais Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:04.11.2022RFA-IPD 4/2022 & 5/2022 Page 21 of 21 14:43:41