Delhi High Court
Marico Limited And Another vs Madhu Gupta on 7 April, 2010
Author: Rajiv Shakdher
Bench: Rajiv Shakdher
THE HIGH COURT OF DELHI AT NEW DELHI
%
Judgment delivered on: 07.04.2010
IA No.15565/2009 & IA No. 16243/2009 in CS(OS) No. 2275/2009
MARICO LIMITED & ANR ..... PLAINTIFFS
Vs
MADHU GUPTA ..... DEFENDANT
Advocates who appeared in this case:
For the Plaintiffs : Ms Anuradha Salhotra with Mr Amritesh Mishra, Ms Doyel Sengupta & Ms Aeshna
Singh, Advocates
For the Defendant: Mr Sudhir Chandra, Sr Advocate with Mr Manish Kumar, Mr Jayant Mehta, Mr Aditya
Kant & Mr Amit Kumar, Advocates
CORAM :-
HON'BLE MR JUSTICE RAJIV SHAKDHER
1.Whether the Reporters of local papers may be allowed to see the judgment ? No
2. To be referred to Reporters or not ? Yes
3. Whether the judgment should be reported in the Digest ? Yes RAJIV SHAKDHER, J IA No.15565/2009 (under O.39 R.1 & 2 CPC by plaintiffs) & IA No. 16243/2009 (under O.39 R.4 CPC by defendant)
1. By the present order, I propose to dispose of the captioned applications filed by the plaintiffs and the defendant. While the plaintiffs have filed an interlocutory application (hereinafter referred to in short as ‗IA') being IA No.15565/2009 under the provisions of Order 39 Rule 1 and 2 of the Code of Civil Procedure, 1908 (in short ‗CPC'), the defendant has filed an IA under the provisions of Order 39 Rule 4 of the CPC being IA No. 16243/2009.
1.1 At the heart of the dispute, is the issue concerning the use of the word mark ‗Kaya'. The defendant, who is essentially running a beauty salon in Ranchi and Dhanbad CS(OS)2275-2009 Page 1 of 18 under the name and trading style of ‗The Kaya Beauty Salon & Cosmetics' - asserts her right to use the word mark ‗KAYA', as part of her trading style and name in respect of which, the plaintiffs claim proprietary rights.
2. In order to appreciate the rival submissions in this regard, the following brief facts may be noticed:-
Plaintiffs' case 2.1 Plaintiff no. 1 is a company which was incorporated on 13.10.1988 with the name Marico Foods Limited. After a change of name in 1989, and thereafter in April, 2005 it acquired the present name i.e., Marico Limited. Similarly, plaintiff no.2, which is a subsidiary of plaintiff no.1 was incorporated on 27.03.2003 with the name ‗Kaya Beauty Services Limited'. The plaintiff no.2 underwent, as in the case of plaintiff no.1, a change of name in April-October, 2003, till finally in December, 2007, it acquired the present name, which is ‗Kaya Limited'. The plaintiff no.1 claims to be in the Fast Moving Consumer Goods (in short ‗FMCG') business while, plaintiff no.2 claims that it provides services in the area of ‗beauty and wellness'.
2.2 It is further claimed by plaintiff no.1 that it is a registered proprietor of several trademarks since 2002 which consist of the word ‗Kaya'. Illustratively reference may be had to the following registrations in various classes in favour of plaintiff no.1.
(i) MARICO'S KAYA (Class 5); (ii) KAYA SKIN CLINIC (Class5); (iii) KAYA Class
10); (iv) KAYA SKIN CLINIC (Class 10); (v) MARICO'S KAYA (Class10); (vi) MARICO'S KAYA (Class16).
2.2.1 The aforesaid registrations have been operative since October-December, 2002. 2.3 Similarly, plaintiff no.2 has acquired the following registrations:-
(i) KAYA GLOW (Class 16); (ii) KAYA GLOW (Class 3); (iii) KAYA SILKY LEGS NITE (Class 42); (iv) KAYA SKIN TALK (Class 41); (v) KAYA BACKLESS NIGHT (Class 41); and (vi) KAYA BACKLESS NIGHT (Class 42);
CS(OS)2275-2009 Page 2 of 18
2.4 As per plaintiff no.2 except for the first two registrations ‗KAYA GLOW' in Class 16 and Class 3 which are valid since 06.05.2003, the rest relate back to 2005. It is further claimed by the plaintiffs that applications for registrations of the trademark ‗Kaya' in Class 3 and 16 are pending. Plaintiffs have also alluded to the fact that trademark ‗Kaya' is registered and/or pending registration in number of countries such as Bahrain, Kuwait, Qatar, Oman, U.A.E., Saudi Arabia and Egypt. . 2.5 Plaintiff no.1, thus, has claimed that the trademark ‗Kaya' has been used by it since 2002 in relation to a wide variety of products which includes cosmetics (non- medicated), essential oils, attars, detergents (not for industrial use), incense and incense sticks, shaving creams and shaving soaps, shampoos, soaps etc., while plaintiff no.2 which was incorporated, as noted above, in 2003 is not only using the trademark ‗Kaya' as part of its corporate name but also using the mark extensively in relation to cosmetics, hair oils, hair lotions, skin care and health care preparations. It was also averred that plaintiff no.2 provides body and personal care services through its clinics and salons under the brand/mark ‗Kaya Skin Clinic'. It is claimed that it has a clientale of over 3,50,000 customers, who are provided services through 73 clinics operating under the name ‗Kaya' in 19 cities in India, in addition to 9 such clinics, in the Middle East. The plaintiff no.2 claims that over a period of five years through its clinics operating under the name ‗Kaya Skin Clinic', it has developed innovative treatment for skin care, and also established weight control centres. Plaintiff no.2 has adverted to the fact that between the period 2003-04 and 2007-08 its sales revenue has gone up from Rs 4.5 crores to Rs 81 crores. It is further averred that in order to familiarize the public at large with its trademark and services its expenses on advertisement during the very same period have increased from Rs 1.89 crores to Rs.11.10 crores. It is claimed that in view of the huge expenses incurred on publicizing its trademark, and as a result of quality of its products and services offered, the mark ‗Kaya' has become a well-known trademark in relation to CS(OS)2275-2009 Page 3 of 18 beauty care products and services. It is further averred that the trademark ‗Kaya' and its various variants help in tracing the origin of the goods and services offered under the said mark(s) to the plaintiffs. Therefore, it is the plaintiffs' contention that the defendant's use of the trademark ‗The Kaya Beauty Salon & Cosmetics' for the purposes of running its beauty care and salon outlets in Ranchi and Dhanbad, is bound to create confusion and deception in respect of origin of goods and services offered by the defendant. DEFENDANT'S CASE 2.6 The defendant, on the other hand, while accepting the fact that it is engaged in the business of providing beauty care services, through its outlets operating in Ranchi and Dhanbad; under the trademark ‗The Kaya Beauty Salon & Cosmetics'; categorically asserts that apart from the said outlets, it does not have any outlet within the territorial jurisdiction of this Court. Therefore, the defendant has sought vacation of an ex-parte interim order dated 02.12.2009 particularly on the following grounds:-
(i) this Court has no jurisdiction over the defendant as neither the defendant resides nor carries on business within the territorial jurisdiction of this Court. The defendant has challenged the attempt of the plaintiffs in extending jurisdiction over the defendant by making averments to the effect that the website operated by the defendant offers services to people at large within the jurisdiction of this court. It is averred that the website of the defendant only provides information and is not interactive in nature;
(ii) the plaintiffs have concealed the fact that the defendant has filed a rectification application on 26.11.2009. It is further averred that in view of the pendency of the rectification application, this suit would have to be first stayed, and only then order, if any, can be passed in the interlocutory application filed by the plaintiffs.
In this regard, provisions of Section 124 of the Trade Marks Act, 1999 (hereinafter referred to in short as ‗the Trade Marks Act') are relied upon; CS(OS)2275-2009 Page 4 of 18
(iii) the plaintiffs have failed to disclose an earlier cease and desist notice dated 06.03.2007 issued to the defendant prior to the one referred to in the plaint i.e., cease and desist notice dated 18.11.2009. The concealment of this fact being material, the interim order ought to be vacated;
(iv) the defendant has been using the trademark ‗The Kaya Beauty Salon & Cosmetics' since 01.04.2002 which in point of fact is prior in time to that claimed by the plaintiffs;
(v) the rights of a registered trademark are class specific. In the facts of the present case, the only trademark registrations which are relevant are those which the plaintiff no.2 has obtained in Class 42 these being: Kaya Silky Legs Nite and Kaya Backless Night. Both of which are registrations of April, 2005. Plaintiffs do not claim user in respect of these registrations prior to 2002, which is the point in time from which the defendant claims user. In this regard the defendant has referred to two bills dated 28.09.2002 and 12.10.2002 (See page 124 of the documents);
(vi) the plaintiffs trademark ‗Marico's Kaya' and ‗Kaya Skin Clinic' which are the registrations obtained in Class 5 and 10 respectively deliberately do not indicate the point in time from which the said marks have been used and hence, their user cannot be construed prior to 31.12.2002. Similarly, reference has been made to the trademark ‗Kaya Glow' under Class 16 and 30;
(vii) the defendant has filed an application on 14.12.2005 for registration of its trademark ‗The Kaya Beauty Salon & Cosmetics'. The said mark was advertised in the Trade Mark Journal No. 1371 on 01.07.2007. The plaintiffs filed its opposition only on 18.12.2007 well beyond the statutory limitation of three months. The proceedings are pending adjudication before the Registrar appointed under the Trade Marks Act. It is, thus, clear that the plaintiffs were aware of the CS(OS)2275-2009 Page 5 of 18 use by the defendant of its trademark ‗The Kaya Beauty Salon & Cosmetics' and hence, no interim order ought to be granted in respect of a suit instituted in 2009. It is averred that there is not only delay but also laches and acquiescence associated with the conduct of the plaintiffs;
(viii) the invoices filed by the plaintiffs dated 03.01.2008, 05.01.2008, 01.01.2004, 03.01.2005 and 02.06.2006 have been signed by and/or on behalf of ‗Kaya Limited' which came into existence only on 14.12.2007. Hence, at least the invoices prior to 14.12.2007 are demonstrably forged and fabricated. In so far as invoices dated 03.01.2008 and 05.01.2008 are concerned, they relate to sale of goods and services whereas, defendant's trademark and activities are only in relation to services;
(ix) the trademark is ‗entity specific' and hence, no one other than the registered proprietor or the permitted user can claim rights over the trademark. In the instant suit, joint rights are claimed over the trademark referred to in the plaint. The plaintiffs have not filed any documents evidencing acquisition of cross-rights over each others' trademarks; and
(x) lastly, but not the least, the word ‗Kaya' is both generic and descriptive. The word ‗Kaya' has obtained distinctiveness as it is used in collocation with other words. In any event, since the word ‗Kaya' is generic it could not have been validly registered.
3. In support of their cases, as set up by the plaintiffs and the defendant in the pleadings, their respective counsels have elucidated upon the averments broadly in the following manner:-
3.1 On behalf of plaintiffs Ms Salhotra has submitted in addition to what is noted above, that the plaintiffs are proprietors of registered mark which consist of the word ‗Kaya'. ‗Kaya' has attained special secondary distinctive meaning and is relatable to the CS(OS)2275-2009 Page 6 of 18 goods and services offered by the plaintiffs. She further contends that the said mark ‗Kaya' and its various variants have been used by the plaintiffs since 2002. 3.2 The invoices filed are of plaintiff no.2. Plaintiff No.2 was incorporated in March 2002-03, at which point in time it bore the name ‗Kaya Beauty Services Limited'. The name was changed to ‗Kaya Aesthetic Limited' in April, 2003, and once again, changed to ‗Kaya Skin Care Limited' in October, 2003; till it finally acquired the present name i.e., ‗Kaya Limited'. The invoices in respect of which an objection has been raised by the defendant, to the effect that they are fabricated, are in point of fact, attested by plaintiff no. 2 under its current name, i.e., Kaya limited. The invoices relate to the period indicated therein, and are not forged and fabricated as alleged. 3.3 She further contends that there has been no attempt to suppress any material facts from this Court, in particular, the pendency of the rectification proceedings filed by the defendant. Ms Salhotra contended that the plaintiffs have not to date been served with a notice of the rectification proceedings.
3.4 As regards the allegation of non-disclosure of an earlier cease and desist notice dated 06.03.2007 having been issued by the plaintiffs, it has been averred in the reply to the application of the defendant under Order 39 Rule 4 of the CPC, that on account of change of personnel handling the concerned department, the said legal notice had not surfaced. In any event, it was contended that the defendant did not reply to the said cease and desist notice dated 06.03.2007. There was, according to Ms Salhotra, no attempt to suppress this information which got excluded only on account of unavailability of the document at the relevant point in time. The failure to make reference to the said cease and desist notice of 06.03.2007 cannot be construed as a material fact. The plaintiffs have not acquiesced to the use by the defendant of the plaintiffs mark ‗Kaya'. This fact is clearly reflected in the opposition filed by the plaintiffs to the application for registration filed by the defendant in respect of its mark ‗The Kaya Beauty Salon & Cosmetics'. The CS(OS)2275-2009 Page 7 of 18 notice of opposition admittedly was filed in December, 2007 after the advertisement in the Journal was brought to the notice of public in October, 2007. Therefore, not only is there no acquiescence on the part of the plaintiffs but also the action of instituting an opposition has been taken well within the limitation period prescribed in that regard. 3.5 Ms Salhotra further contended that apart from the fact that the website of the defendant is interactive, this Court has jurisdiction by virtue of the provisions of Section 134 (2) of the Trade Marks Act, 1999 since the plaintiffs are carrying on business within the territorial jurisdiction of this Court. In support of this submission it was contended that in the application filed for registration by the defendant, there are no geographical limitations with regard to the use of the mark. In other words, on registration of the defendant's mark its use will not remain confined to Ranchi and Dhanbad; there is every possibility of the defendant extending its business to other parts of the country. The apprehension being real and imminent the plaintiffs are entitled to seek protection by way of the present suit, which is, in the nature of a quia timet action. 3.6 It was further contended by Ms Salhotra that the mark is neither generic nor descriptive. Assuming that it is descriptive, it was contended that it has become a well known mark which traces the origin of the goods and services offered to the plaintiffs.
She stressed that the defendant's use of the mark is unfair, which is guided by the sole purpose of trading on the goodwill acquired by the plaintiffs mark, by deceiving the unsuspecting customers. In this regard, she referred to the communication addressed by a customer (which is appended as a part of the reply filed by the plaintiffs to the application filed by the defendants under Order 7 Rule 11 of the CPC) to demonstrate the confusion which is being caused by the defendant's use of the impugned mark. In support of her submissions she cited following judgments:-
Alfred Dunhill Limited vs Kartar Singh Makkar & Ors.: 1999 PTC (19) 294; Amritdhara Pharmacy vs Satya Deo Gupta: AIR 1963 SC 449 and DCM Shriram Consolidated Limited vs Laxami Trader & Ors:
164(2009) DLT 75 CS(OS)2275-2009 Page 8 of 18
4. Mr Sudhir Chandra, the learned Senior counsel appearing on behalf of the defendant has, apart from stating the case as set out in the pleadings, stressed upon the following submissions:-
(i) the defendant is a prior user. In so far as the plaintiffs are concerned, even though a user is claimed since 2002, there is no invoice filed for the period 2002-03;
(ii) the services became registrable under the new Act only in September, 2003, therefore, plaintiff no.2 could have obtained its registration only thereafter. The registrations obtained by the plaintiffs under Class 42, which is the relevant Class, pertains to the period 2005;
(iii) the plaintiffs are guilty of delay, and suppression of material facts. In this regard particular reference is made to the pendency of rectification proceedings. It was thus urged that the injunction granted ought to be vacated in view of the settled position that while granting injunction, the Court exercises equitable jurisdiction;
(iv) the plaintiffs' invoices for the period 2004 were forged and fabricated as they referred to the fact that they had been issued by ‗Kaya Limited' which came into existence only in December, 2007;
(v) no case for infringement of trademark was made out as the defendant was not in the same line of business, which is a sine qua non for establishing infringement under the provisions of Section 29(1) of the Trade Marks Act. He, however, fairly submitted that an injunction may also be granted if there is similarity of marks without there being a similarity in the rival businesses -- provided the ingredients contained in clauses (a) to (c) of sub-Section 4 of Section 29 of the Trade Mark Act stand fulfilled.
REASONS CS(OS)2275-2009 Page 9 of 18
5. I have heard the learned counsel for the parties. As was noticed above by me, the dispute essentially relates to the use of word ‗Kaya' by the defendant as part of its trademark ‗The Kaya Beauty Salon & Cosmetics' for its Ranchi outlets, and ‗The Kaya Beauty Salon Cosmetics' for its Dhanbad outlet. Plaintiff no.1 has prima facie established that it has registrations in its favour, in various classes i.e., Classes 5, 10 and 16, which relate back to October-December, 2002. Similarly, plaintiff no.2 has registration in Classes 3 and 16 which are operative from 06.05.2003, and also registration in Classes 42 and 41, which relate back to the period 06.04.2005 and 04.08.2005, respectively. It is also not disputed that services were brought within the fold of the Act i.e., Trade Marks Act, only from September, 2003. The plaintiffs in support of their case have alluded to the fact that they have 103,50,000 customers with outlets in 73 cities. It is also contended that they have applied for registration of the trademark ‗Kaya' in countries such as Bahrain, Kuwait, Qatar, Oman, U.A.E., Saudi Arabia and Egypt. The figures of sales achieved are backed by the certificate of Chartered Accounts ―Welling and Associates‖. The certificate of the Chartered Accountants seem to suggest that the plaintiffs' sales turnover includes revenue both from sale of products as well as from skin care services offered by them. The year wise sales turnover grossed is as follows:
Total Income Vs ASP (Fig in crores) 2003-04 2004-05 2005-06 2006-07 2007-08 Service Income 4.16 17.13 38.64 53.16 69.49 Sale of Traded 0.36 1.44 4.08 8.48 11.28 products Other Income 0.02 0.03 0.05 0.03 0.27 Total Income 4.54 18.60 42.77 61.68 81.04 ASP 1.89 4.84 6.42 6.58 11.10 CS(OS)2275-2009 Page 10 of 18 Total ASP 1.89 4.84 6.42 6.58 11.10
5.1 In addition, the plaintiff no.2 has filed five invoices of the following dates:-
(i) 01.01.2004; (ii) 03.01.2005; (iii) 02.06.2006; (iv) 03.01.2008; and (v) 05.01.2008 5.2 From at least three invoices it is noticed that the CST No. 0277259 has been obtained on 24.12.2003. Mr Chandra made a pointed reference to the fact that there is only one invoice of 2004 and significantly, there is no invoice for the period 2002-03.
This assertion of Mr Chandra will have to be examined in the context of facts which have emerged qua both the plaintiffs and the defendant. In so far as plaintiff no.2 is concerned, it is quite obvious that it could not have had an invoice prior to 27.03.2003 since that was a date on which it was incorporated. There is, however, reference to the auditor's certificate, which refers to income of the plaintiffs for the year 2003-04 and thereafter. It is quite obvious that the sales revenue figures for the period 2003-04 relate to both plaintiff no.1 as well as plaintiff no.2. The other point to be noted is that in the rejoinder filed by the defendant to the reply of the plaintiff to its application under Order 39 Rule 4 CPC, the defendant for the first time brought to fore another cease and desist notice dated 26.10.2005; evidently issued by the plaintiff. During the course of arguments Ms Salhotra did not dispute the veracity of the said document. If one were to assume that the said document is genuine (an issue which at least the defendant cannot raise) it would have to be accepted at least at this stage that the assertions of the plaintiffs in the said cease and desist notice of 26.10.2005 to the effect that: the defendant had been using the mark ‗Kaya' since January, 2005; that plaintiff no. 1 at least, has been in business three years prior to the date of issuance of the notice; and that they are in the business of rendering services; are correct. This notice, as also the cease and desist notice dated 06.03.2007 issued by the plaintiffs was curiously not replied to by the defendant. In these circumstances, the defendant's contention that it has been using the CS(OS)2275-2009 Page 11 of 18 impugned mark since 01.04.2002 seems prima facie unsustainable. Therefore, in view of the fact that both sides have claimed priority of use, this is an issue on which evidence would have to be led. Prima facie, plaintiff no 1's case that it has been using the mark since 2002 at this stage seems eminently plausible. This is so for the reason: firstly, there is an averment to that effect; secondly, the averment is backed by a sales turnover of some substance (Rs 1.89 crores) for the period 2003-04. For a sales of this magnitude to occur there would have been some use of the mark in the preceding period i.e., in 2002-
03. On a comparative assessment the plaintiffs' case appears to have a ring of truth.
6. The other issue is whether the plaintiff's mark has achieved secondary distinctive meaning. This becomes relevant as the defendant has claimed that she is not in the same line of business as that of plaintiff no.1. The other issue which requires consideration is whether the use of the impugned mark by the defendant is unfair and detrimental to the interest of the plaintiffs.
6.1 In my view, prima facie the plaintiffs have been able to establish that the use of the mark ‗Kaya' has attained distinctiveness qua its goods. This is apparent at this stage from the following: While the plaintiffs have adverted to both; the sales revenue achieved by it for the period 2003-04 to 2007-08, and also the amounts spent on advertisements -- the defendant curiously has not made any reference either to the revenue earned or the amount spent on advertisements by her. By far the plaintiffs have spent huge amount of monies on advertisements. It is clear, and I have no reason to disbelieve at this stage, that its advertisement spend has increased from Rs 1.89 crores in 2003-04 to Rs. 11.10 crores in 2007-08. Similarly, the sales revenue has increased from Rs 4.54 crores in 2003-04 to Rs 81.04 crores in 2007-08. The sales revenue includes income from services rendered. In 2003-04 income from services rendered was Rs 4.16 crores, which in 2007-08 had increased to Rs 69.49 crores. Whether such sales and advertisement spends actually translated into the plaintiff's mark obtaining distinctiveness would be finally determined after further corroborative evidence is led by CS(OS)2275-2009 Page 12 of 18 the parties in that regard. At this stage at least the said indicators should prima facie satisfy the test of distinctiveness. Given these facts any further use of the impugned mark by the defendant would not only be unfair but would also cause detriment to the interest of the plaintiffs. Therefore, notwithstanding the dissimilarity in the line of business the plaintiffs' plea for injunction will have to be accepted given the similarity in the rival marks.
7. On the issue of jurisdiction, I may only note broadly the assertion made in Paragraph 24 of the plaint. The plaintiffs have asserted that they are carrying on their business within the territorial jurisdiction of this Court. It has been further averred that they have their branch office within the jurisdiction of this Court. It has also been averred that the cause of action has arisen within the jurisdiction of this Court, in as much as, the defendant maintains a website the Kaya.com, which is, accessible by the customers residing within the jurisdiction of this Court. In support of this it is said that the website attracts or is likely to attract the public/customers residing within the jurisdiction of this Court for availing services offered by the plaintiffs. It is further submitted that the plaintiffs apprehend that the defendant may offer her services within the jurisdiction of this Court as the defendant's application for registration of its mark is not restricted to any specific part of the country. The registration, if obtained by the defendant, would apply to the entire country which would include the territory falling within the jurisdiction of this Court. At this juncture I may also note Mr Chandra's submission in support of the defendant's plea for return of the plaint on the ground of lack of jurisdiction. It was contended that the plaintiffs having failed to make out a case for infringement; a passing off action, if at all, could have been filed and that too only where the defendant resides or carries on its business. As regards the accessibility of the defendant's website from within the territorial jurisdiction of this Court, he contended that the same was not ‗interactive' and hence, this Court did not have jurisdiction to entertain or try the matter. In support of this submission he relied upon the judgment of CS(OS)2275-2009 Page 13 of 18 the Division Bench of this Court in the case of Banyan Tree Holding (P) Limited vs A Murali Krishna Reddy and Anr CS(OS) No. 894/2008 dated 23.11.2009. 7.1 In my view, the issue of jurisdiction in the present case is a mixed question of fact and law. The plaintiffs' action is for both infringement of its registered trade mark as well as for passing off. Prima facie the plaintiffs' registrations appear to be in order. Therefore, the averment made in the plaint with respect to the fact that the plaintiffs carry on their business within the territorial jurisdiction of this Court through its branch office, if accepted, as it ought to be at this stage, would trigger the provisions of Section 134(2) of the Trade Marks Act. In these circumstances, the suit cannot be thrown out on the ground of lack of territorial jurisdiction at the threshold. As regards the assertions made in regard to accessibility of the defendant's website by consumers/customers from within the territorial jurisdiction of this Court; the state of law as it obtains today, prima facie seem to indicate that the averments made therein are not sufficient. To that extent, I am in agreement with the submission made in that behalf by Mr Chandra. In Banyan Tree (supra), the Division Bench of this Court has clearly opined that in order to demonstrate that the forum Court has a jurisdiction it would have to be prima facie established by the plaintiffs that the defendant ‗purposefully' availed of the jurisdiction of this Court. In that behalf, the plaintiffs would have to show that the defendant engaged in some ―commercial activity‖ in the forum state by specifically targetting consumers within the State. Therefore, the plaintiffs would have to ―plead and produce‖ material to show that a ―commercial transaction‖ was entered into by the defendant with a user of her website within the forum State which resulted in an injury or harm to the plaintiffs. The Division Bench has specifically observed that ―trap transactions‖ will not attract the jurisdiction of the forum State. These crucial assertions do not find mention in Paragraph 24 of the plaint. However, in view of the fact that the plaintiffs has asserted that they carry on business within the jurisdiction of this Court, as noticed above, this objection cannot be sustained at least at this stage.
CS(OS)2275-2009 Page 14 of 18
8. On the issue of delay and acquiescence: it is the contention of the defendant that not only did the plaintiffs suppress the fact that a rectification application had been filed and that a cease and desist notice had been issued by them on 06.03.2007; they also inordinately delayed the institution of the present suit uptil 2009. Therefore, the plaintiffs' prayer for an injunction ought not to be granted since such like reliefs are granted by the Court in exercise of its equitable jurisdiction. In my view, the objection as regards the suppression of material facts and delay is intertwined. As observed by me it now transpires that plaintiff no.2 had issued another cease and desist notice dated 26.10.2005. The notice was addressed to the defendant at its Ranchi outlet. It is not disputed by the defendant that the Dhanbad outlet was opened only in 2009. In the cease and desist notice dated 26.10.2005 plaintiff no.2 has made three important assertions.
(i) that it has been in business for more than three years;
(ii) that it has come to their notice that defendant has been using the mark ‗Kaya' since January, 2005; and
(iii) that its marks ‗Kaya' and ‗Kaya Skin Clinic' have acquired goodwill and reputation which has been eroded by the defendant by using a similar mark in the same class of goods and services. It is not disputed that the defendant did not reply to the cease and desist notice. It is also come through that the defendant immediately thereafter on 14.12.2005 applied for registration of its mark. The said mark was advertised in the Trade Mark Journal admittedly on 01.07.2007. The plaintiffs assert that the journal was available in October, 2007 and opposition in that regard was filed on 18.12.2007. Therefore, by not replying to this notice, the defendant seems to have at least prima facie accepted the fact that: it has been in business only since January, 2005; plaintiffs on the other hand have been in business for a period of three years prior to the issuance of notice; and lastly, the plaintiffs are in the business of rendering services as well. As regards the fact that they have been in business for more than three years it perhaps will CS(OS)2275-2009 Page 15 of 18 also have to be borne in mind that prior to March, 2003 it was only plaintiff no.1 who was in business. In the circumstances noticed above, it cannot be said that there was delay on the part of the plaintiffs in taking requisite action, keeping in mind the fact that as soon as the defendant's application was advertised, the plaintiffs filed its opposition. In case of a registered mark mere delay by itself cannot oust the court's jurisdiction in granting relief to the plaintiffs if it is otherwise entitled to it [see Midas Hygiene Industries (P) Ltd vs Sudhir Bhatia (2004) 3 SCC 90, Hindustan Pencil (P) Ltd. vs India Stationery Products Co. & Anr. 38 (1989) DLT 54; and Bihar Tubes Ltd vs Garg Ispat Ltd 2009 (41) PTC (Del) 741]. As asserted by the plaintiffs it did not rush to Court in view of the fact that it had already filed an opposition with respect to the defendant's outlet in Ranchi. No sooner did the defendant open an outlet in 2009, in Dhanbad, the plaintiffs issued a cease and desist notice on 18.11.2009, which was followed by the institution of the present suit. In my view the delay, if any, cannot in the facts and circumstances come in the way of the plaintiffs approaching the Court for grant of an appropriate interim order.
9. Furthermore, in my opinion, there is no acquiescence on the part of the plaintiffs, since the plaintiffs filed their opposition, as noticed above, as far back as on 18.12.2007; which is pending adjudication. In my view, therefore, even this objection raised by the defendant is not sustainable.
10. On the issue of suppression of the rectification proceedings which the defendant claims to have filed on 26.11.2009, the plaintiffs have asserted that no notice has been issued to them in regard to the same. There is nothing brought on record by the defendant to demonstrate to the contrary. The fact that it is on the website by itself would not suffice because for many reasons it could have escaped plaintiffs' notice. The plaint, it appears, was verified on 30.11.2009 and moved before the Court for orders on 02.12.2009. In my opinion, there is nothing to show that the plaintiffs deliberately concealed this fact from the Court even assuming that the information with regard to the filing of the rectification application was available on the website of the trademark registry. CS(OS)2275-2009 Page 16 of 18
11. As regards the other allegation that the cease and desist notice dated 06.03.2007 was not disclosed, the plaintiffs explanation that because of the change in the personnel the notice did not surface; seems plausible. It may only be noticed that even the defendant referred to the cease and desist notice of 26.10.2005 only in its rejoinder to the reply filed by the plaintiffs to the defendant's application under Order 39 Rule 4 of the CPC. No motive can be attributed to either the plaintiffs or the defendant. In any event, as rightly contended by Ms Salhotra the non-disclosure of the cease and desist notice was not material in the facts of this case, as the defendant's application for registration was advertised; whereupon the plaintiffs filed their opposition with the Registrar of Trade Marks on 18.12.2007. The fact that the defendant opened another outlet at Dhanbad in 2009 gave the plaintiffs a fresh cause of action to move the Court.
12. It has also been contended that this Court, in view of the pendency of the rectification application, ought to have stayed the suit in the first instance, before considering the application for grant of interim relief. On a bare perusal of Section 124, this submission seems untenable. I do not find any such mandate contained in Section 124 of the Trade Marks Act which requires the Court to first stay the suit, and then proceed to consider the interlocutory application for grant of ad interim injunction. This objection is, accordingly, rejected.
13. Let me now deal with the judgments cited by Mr Chandra. The judgment in the case of BDA Private Limited vs Paul P. John & Anr.: 2008 (37) PTC 569(Del.) in my view is distinguishable on facts. In that case, the plaintiff had filed two suits; one in 2008, which was based on a tort of passing off and the other in 2007, after obtaining registration of its mark and thus included allegations of infringement. The Court noted the fact that the defendant's use of the mark since 1995-96 was disclosed only in the subsequent suit, and that, had it been disclosed in the earlier suit, interim injunction may not have been granted. These are the facts which are not parimateria with the facts obtaining in the present case. The case, in my view, is distinguishable. CS(OS)2275-2009 Page 17 of 18 13.1 Similarly, the judgment of this Court in the case of Pfizer Enterprises and Anr vs Dr H R Manchanda and Anr.CS(OS) 641/2007 dated 16.07.2008 is also distinguishable. The facts of the case were briefly as follows: the plaintiff invoked the jurisdiction of the Court under Section 134 of the Trade Marks Act on the ground that their product was available for sale and distribution in Delhi as also on the ground that defendant's product was available for sale in Delhi. The Court in Paragraph 18 at page 10 noticed that neither the plaintiff nor the defendant had their business in Delhi. This is quite distinct from the assertion made in the plaint in the present case. The plaintiff in the present case has invoked the jurisdiction of this Court under sub-Section 2 of Section 134. Therefore, the ratio of the decision in the case of Pfizer Enterprises (supra) is inapplicable.
14. For the reasons given hereinabove, the injunction granted on 02.12.2009 is made absolute. Accordingly, IA No. 15565/2009 is allowed, while IA No. 16243/2009 filed by the defendant is dismissed.
RAJIV SHAKDHER, J APRIL 07, 2010 mb CS(OS)2275-2009 Page 18 of 18