Delhi High Court
Karans Gurukul Classes & Ors vs Gurukul Classes Iit Division & Ors on 2 May, 2019
Equivalent citations: AIRONLINE 2019 DEL 2516
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 2nd May, 2019.
+ CS(COMM) 10/2018, IA No. 131/2018 (u/O XXXIX R-1&2
CPC), IA No.5045/2018 (u/O XIIA CPC) & IA No.15098/2018
(u/S 124 of the Trade Marks Act, 1999)
KARANS GURUKUL CLASSES & ORS ..... Plaintiffs
Through: Mr. Manish Biala & Mr. Ashutosh
Upadhyaya, Advs.
Versus
GURUKUL CLASSES IIT DIVISION & ORS ..... Defendants
Through: Mr. Sagar Chandra & Ms. Srijan
Uppal, Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. The plaintiff no.1 Karan‟s Gurukul Classes, a partnership of plaintiffs
no.2&3 Hemant Kumar and Manish Kumar, has sued the defendant no.1
Gurukul Classes IIT Division, a partnership of defendants no.2&3 Pradip
Giri and Dipak Giri, for permanent injunction restraining infringement of
the device trade mark "GURUKUL CLASSES" and passing off by the
defendants of their same business as that of the plaintiffs by adopting the
mark "GURUKUL CLASSES IIT DIVISION" and for ancillary reliefs.
2. The suit was entertained, though no ex parte ad interim injunction
sought granted.
3. Pleadings have been completed.
4. The suit is ripe for framing of issues and for hearing of (i) application
of the plaintiffs for interim relief; (ii) application of the defendants for
CS(COMM) 10/2018 Page 1 of 11
summary dismissal of the suit under Order XIIIA of the Code of Civil
Procedure, 1908 (CPC) as applicable to Commercial Suits; and, (iii)
application of the defendants under Section 124 of the Trade Marks Act,
1999.
5. In accordance with the dicta of the Supreme Court in Patel Field
Marshal Agencies Vs. P.M. Diesels Ltd. (2018) 2 SCC 112, before
consideration of the application under Section 124 of the Trade Marks Act,
issues have to be framed.
6. The counsel for the defendants has handed over proposed issues
which are taken on record.
7. The counsel for the plaintiffs has not proposed any issues and the
counsels have been heard on the proposed issues of the defendants.
8. On the pleadings of the parties, the following issues are framed:
(i) Whether the registrations obtained by the plaintiffs bearing
Nos.1399868 in Class 41, 3498632 in Class 41, 3498623 in
Class 42 and 3498626 in Class 41 are invalid and liable to be
rectified on the grounds pleaded in the written statement? OPD
(ii) Whether this Court has the territorial jurisdiction to try and
entertain the present suit? OPP
(iii) Whether the use of the mark "GURUKUL CLASSES IIT
DIVISION" by the defendants amounts to infringement? OPP
(iv) Whether plaintiffs are not entitled to the reliefs claimed on
account of laches, acquiescence and waiver? OPD
CS(COMM) 10/2018 Page 2 of 11
(v) Whether the discretion implicit in the grant of relief of
injunction is not to be exercised in favour of the plaintiffs for
the reasons pleaded in the written statement? OPD
(vi) If the above issues are decided in favour of the plaintiffs and
against the defendants, to what relief, if any, is the plaintiffs
entitled to and from which of the defendants? OPP
(vii) Relief.
9. No other issue arises or is pressed.
10. While hearing the counsels on framing of issues, it was enquired
from the counsel for the defendants, why the issue as to territorial
jurisdiction of this Court should be framed and the counsels were heard
thereon.
11. On such hearing it transpires that as far as the issue no.(ii) above qua
territorial jurisdiction is concerned, the same does not require any evidence.
12. The same is thus ordered to be treated as a preliminary issue and with
consent, the counsels have been heard thereon.
13. The plaintiffs have invoked the territorial jurisdiction of this Court by
pleading in para no.52 of the plaint as under:
"52. The Plaintiffs to the present Civil Suit Work for Gain at
New Delhi through it's Head Office. The Section-134 of the
Trade Marks Act, 1999 vests the Territorial Jurisdiction to try,
decide, adjudicate & entertain the present Civil Suit within the
Territorial Jurisdiction of this Hon'ble High Court of Delhi at
New Delhi."
14. The counsel for the defendants has drawn attention to para no.3 of
CS(COMM) 10/2018 Page 3 of 11
the preliminary objections in the written statement of the defendants as
under:
"3. At the outset, it is submitted that the present suit is liable
to be dismissed as the Hon'ble Court does not have the
territorial jurisdiction to adjudicate the present matter. It is
submitted that the Plaintiffs are conscious of the fact that the
Defendants are residents of Aurangabad and are carrying on
their business at Railway Station Road, First Floor, Sarda
Arcade, above Syndicate Bank, Padampura, Aurangabad,
Maharashtra-431001 and the same is evident from the Memo of
Parties. Furthermore, the Plaintiffs are admittedly carrying on
business in Aurangabad through their Trademark Licensee Ms.
Tanushree Nirmal Biswal and Mr. Nirmal Kumar Biswal and
the same is evident from the Caution Notice dated 6th December,
2017 wherein the Plaintiffs have claimed that Ms. Tanushree
Nirmal Biswal and Mr. Nirmal Kumar Biswal are the sole
license holders and registered user of their brand GURUKUL
CLASSES in the State of Maharashtra and have all the allied
rights with regard to the same for the business of running
education institutions. It is stated that as per the interpretation
of Section 134(2) of the Trade Marks Act, 1999 by the Hon'ble
Surpeme Court and the Division Bench of this Hon'ble Court, if
the cause of action has arisen at a place where the Plaintiff has
a branch office, the Plaintiff cannot institute a suit where the
Plaintiff has a registered office. In the present case, cause of
action if any has arisen in Aurangabad where the Plaintiffs have
a branch office through their sole trade mark licensee in the
State of Maharashtra. In light of the same, the present suit for
infringement of trade mark has to be filed in District Court at
Aurangabad. "
15. The counsel for the defendants has also drawn attention to pages no.
72 to 84 of the Part-IIIA file, being the documents filed by the plaintiff,
being a Trade Mark License Agreement dated 18th September, 2017 entered
into between the plaintiffs no.2 and 3 with one Tanushree Nirmal Biswal
CS(COMM) 10/2018 Page 4 of 11
and Nirmal Kumar Biswal, residents of Aurangabad and has contended that
since the plaintiffs through their licensee are carrying on business at
Aurangabad where alone the defendants are situated, per dicta of the
Division Bench of this Court in Ultra Home Construction Pvt. Ltd. Vs.
Purushottam Kumar Chaubey 227 (2016) DLT 320, the plaintiffs are
disentitled from invoking jurisdiction under Section 134 of the Act on the
basis of its own office or principal office being at Delhi. It is argued that
the entitlement if any of the plaintiffs to sue the defendants would be in the
Court at Aurangabad where the plaintiffs as well as the defendants are
carrying on business and this Court would not have territorial jurisdiction.
16. In Ultra Home Construction Pvt. Ltd. supra it was held that where
the plaintiff has the principal office at one place and the cause of action has
arisen at the place where its subordinate office is located, the plaintiff
would be deemed to be carrying on business within the meaning of Section
134 of the Trade Marks Act at the place of its subordinate office and not at
the place of the principal office and the plaintiff can sue at the place of
subordinate office and under the scheme of the provisions of Section 134,
cannot sue at the place of principal office.
17. The plaintiffs as well as the defendants in the present case are in the
business of imparting coaching for competitive exams. Considering the
nature of the said business, the place where the plaintiffs as well as the
defendants carry on business is the place where they are imparting
coaching.
18. The next question to be considered is whether the plaintiff can be
said to be carrying on business at Aurangabad where the defendants are
CS(COMM) 10/2018 Page 5 of 11
situated and / or carrying on business, by having a licensee at Aurangabad.
In this context, the plea of the plaintiffs in the plaint itself may be noted.
The plaintiffs in para no.12 of the plaint have pleaded to have "issued a
Master License on 18.09.2017 for the State of Maharashtra to Tanushree
Nirmal Biswal & Nirmal Kumar Biswal to render the education services
under the trade mark "GURUKUL CLASSES", who are based in the city of
Aurangabad in Maharashtra". The plaintiffs in para no.13 of the plaint have
pleaded that the defendant no.2 Pradip Giri was a business associate of the
said Nirmal Kumar Biswal vide Partnership Deed dated 21 st October, 2009
till the dissolution of the said partnership vide a deed dated 31 st March,
2016. The plaintiffs in para no.14 of the plaint have pleaded that the
defendant no.2 Pradip Giri approached the plaintiffs for the grant of license
in favour of the defendants for the city of Aurangabad in Maharashtra to
deal in the education services under the trade mark "GURUKUL
CLASSES". In para no.15 of the plaint, it is pleaded that the plaintiffs
advised the defendants to seek a business alliance from the Master
Licensee. The plaintiffs along with their documents have filed a copy of
the Master License Agreement dated 18th September, 2017 and a perusal
whereof shows (i) the plaintiffs to have granted an irrevocable but non
exclusive license to Tanushree Nirmal Biswal & Nirmal Kumar Biswal
("Biswals") to use the licensed trade mark of the plaintiffs for Maharashtra
State with permission to give sub-license in the state of Maharashtra; (ii)
the plaintiffs having permitted the Biswals use of the licensed trade mark in
respect of services related to standards of quality prescribed for the
materials, design, workmanship, use, advertising, promotion etc.; (iii)
Biswals to be responsible to furnish to the plaintiffs statistics of the
CS(COMM) 10/2018 Page 6 of 11
education services provided by them under the licensed trade mark; (iv)
Biswals to have agreed to inform the plaintiff of any infringement of the
licensed trade mark and the proceedings for such infringement though to be
initiated by the plaintiffs but at the cost and expense of the said Biswals and
the recoveries made towards damages / compensation for infringement of
the licensed trade mark to be shared equally between the plaintiffs and the
Biswals; and, (v) Biswals to have paid to the plaintiffs a sum of
Rs.22,50,000/-.
19. Section 134(2) of the Trade Marks Act vests additional jurisdiction in
a plaintiff in a suit for infringement of trade mark, to sue at the place where
the plaintiff "actually and voluntarily resides or carries on business or
personally works for gain". A clear distinction is made between "actually
and voluntarily resides", "carries on business" and "personally works for
gain". The words "actually and voluntarily resides" contemplate a case
where the plaintiff, if a natural person, actually resides and where a juristic
person like a company, has its registered office. The words "personally
works for gain" connote the plaintiff, whether a natural or a juristic person,
of its own carrying on business. However, the words "carries on business"
would in my view connote carrying on business, whether "personally" or
otherwise and which can be through an agent or through a licensee or under
any other arrangement. The words "carries on business" in my view are not
confined to only principal place of business or to the place where the
plaintiff on its own carries on the business. Reference in this regard may be
made to Dhodha House Vs. S.K. Maingi (2006) 9 SCC 41 and Wipro
Limited Vs. Oushadha Chandrika Ayurvedic India (P) Limited 2008 SCC
CS(COMM) 10/2018 Page 7 of 11
OnLine Mad 172 (DB). Thus carrying on business at a particular place
through another entity even if not registered user within the meaning of
Trade Marks Act would definitely amount to carrying on business at such
place even if through a licensee or under some other arrangement. I have
dealt with the said aspect in detail in Zenner International GMBH & CO
KG Vs. Anand Zenner Company Pvt. Ltd. 2018 SCC OnLine Del 7011 and
thus the need to elaborate further is not felt.
20. The counsel for the plaintiffs though does not controvert but
contends that the defendants have a website and which is accessible also at
Delhi and thus the Courts at Delhi also would have territorial jurisdiction.
21. However, the counsel for the plaintiffs admits that the plaintiffs have
not invoked the territorial jurisdiction of this Court on the aforesaid ground.
22. The counsel for the plaintiffs has however drawn attention to paras
no.8 and 11 of the Preliminary Submissions in the written statement of the
defendants and which are as under:
"8. It is submitted that the Defendant No.3 registered the
website www.gurukulclassesiit.com on 1st December, 2015. It is
submitted that the Defendants also have a mobile application on
the Google Play Store by the name of "GURUKUL IIT
DIVISION" which has 500-1000 Downloads. It is pertinent to
note that by downloading this Application, the students can view
marks, hall tickets, upcoming events and news etc. It is
submitted that Defendants have a Facebook Page by the name of
"GURUKUL CLASSES IIT DIVISION" which has 679 likes and
705 Followers.
11. In view of the widespread promotion, advertisement,
excellent results and continuous use of the mark GURUKUL
CLASSES since 2009 by the Defendant No.2 and GURUKUL
CLASSES IIT DIVISION since 2015 by the Defendants, the said
CS(COMM) 10/2018 Page 8 of 11
institute of the Defendants is one of India's top institutes and
enviable goodwill and reputation has been accrued to the
Defendants' GURUKUL CLASSES IIT DIVISION."
23. The counsel for the plaintiffs contends that since it is the case of the
defendants in their own written statement that they are advertising
themselves on the electronic media accessible from everywhere, this Court
would have territorial jurisdiction.
24. Not only am I unable to find any admission in the aforesaid
paragraphs, of the defendants carrying on business electronically at Delhi
but even otherwise Order VII Rule 1(f) of the CPC requires the plaintiff in a
suit to plead the facts on which territorial jurisdiction of the Court is
invoked. This Court in Lok Nath Prasad Gupta Vs. Bijay Kumar Gupta
57 (1995) DLT 502 held it to be well settled that the question of territorial
jurisdiction has to be decided by looking into the averments made in the
plaint and not by the plea taken in the written statement.
25. The plaintiffs in this suit for permanent injunction restraining
infringement of trade mark and passing off and for ancillary reliefs, having
opted to invoke the territorial jurisdiction of this Court only by pleading
Section 134 of the Trade Marks Act, and which as per Ultra Home
Construction Pvt. Ltd. supra is not available, and the plaintiffs having not
opted to amend the plaint till date, it is now not open to the plaintiffs to
argue beyond their pleaded case of this Court having territorial jurisdiction
otherwise also. I may emphasize that had the plaintiffs taken any such plea
in their plaint, the defendants would have had an opportunity to respond
thereto and in the absence of the plea, the defendants had no opportunity to
respond thereto.
CS(COMM) 10/2018 Page 9 of 11
26. Even otherwise, though the counsel for the plaintiffs contends
otherwise, the business of coaching services for IIT is by and large
territorial in nature. In the absence of any pleadings in support of the
arguments as are now urged, citing the example of the city of Kota,
Rajasthan to which school students from all over the country flock would
not apply.
27. As far back as in Banyan Tree Holding (P) Ltd. Vs. A. Murali
Krishna Reddy 2009 SCC OnLine Del 3780, it was held by the Division
Bench of this court that (i) mere accessibility of the defendants‟ website in
Delhi would not enable this Court to exercise jurisdiction; (ii) a passive
website, with no intention to specifically target audiences outside the State
where the host of the website is located, cannot vest the forum court with
jurisdiction; (iii) it is not enough to show that the website hosted by the
defendant is an interactive one; it would have to be shown that the nature of
the activity indulged in by the defendant by use of the website was with the
intention to conclude a commercial transaction with the website user; (iv)
the plaintiff has to show that the defendant "purposefully availed" itself of
the jurisdiction of the forum court; (v) the plaintiff must necessarily plead
and show prima facie that the specific targeting of the forum state by the
defendant resulted in an injury or harm to the plaintiff within the forum
state; (vi) to show that injurious effect has been felt by the plaintiffs, it
would have to be shown that viewers in the forum state were specifically
targeted. In Impresario Entertainment & Hospitability Pvt. Ltd. Vs. S&D
Hospitality 2018 SCC OnLine Del 6392, it was held in the context of the
business of restaurant, that though the defendant through Zomato and Dine
CS(COMM) 10/2018 Page 10 of 11
Out will be able to invite the customer and reserve a table at the restaurant
of the defendant at Hyderabad but the commercial transaction would take
place only on the customer availing the service of the defendant at
Hyderabad.
28. Needless to reiterate, there are no pleadings as have been held in the
judgments aforesaid to be required.
29. Issue no. (ii) aforesaid qua territorial jurisdiction is thus decided in
favour of the defendants and against the plaintiffs.
30. Resultantly, this Court does not have territorial jurisdiction to
entertain the suit and the plaint is rejected.
31. The plaintiffs are burdened with costs of the suit with professional
fee assessed at Rs.1 lac.
RAJIV SAHAI ENDLAW, J.
MAY 02, 2019 „gsr‟/pp CS(COMM) 10/2018 Page 11 of 11