Delhi District Court
M/S Oriental Aromatics Ltd vs Sadhna Trading Co on 15 December, 2022
IN THE COURT OF SH. BRIJESH KUMAR GARG
DISTRICT JUDGE COMMERCIAL COURT-01,
SHAHDARA, KARKARDOOMA COURTS, DELHI
CNR No. DLSH01-007395-2021
CS (Comm) No. 334/2021
M/s Oriental Aromatics Ltd.
(Formerly known as Camphor and Allied Products Ltd.)
Regd. Office: 133, Jehangir Building,
2nd Floor, M.G. Road, Fort,
Mumbai-400 001. .....Plaintiff.
versus
1.Sadhna Trading Co.
Through its Proprietor/Partner/Authorized Signatory At : 2116, Khari Baoli, New Delhi-110 006.
Also At :
2031, Khari Baoli, New Delhi-110 006.
2. M/s Agarwal & Sons Through its Proprietor/Partner/Authorized Signatory Sivam Agarwal, At: Ground Floor, Asmi Kunj, Near RBS Club, Millanpally, Siliguri-734005.
3. Flipkart Internet Private Limited A company through The Managing Director/Chief Executive Officer AKR Tech Park 1st Floor, Block "C", Krishna Reddy Industrial Area, 7th Mile, Hosur Road, Bangalore-560 068.
Karnataka India.
Email : [email protected] ....Defendants CS (Comm.) No.334/2020 page 1 of 20 D.J.(Commercial Court)-01/Shahdara/KKD/Delhi Date of institution of the case : 16.09.2021 Date of conclusion of the final arguments : 09.11.2022 Date of judgment : 15.12.2022 EXPARTE JUDGMENT
1. The present suit has been filed, on behalf of the plaintiff, under Section 134 & 135 of Trade Marks Act 1999 & Section 55 of The Copy Right Act 1957, for Permanent Injunction, Restraining Infringement, Passing Off, Delivery of and Rendition of Account etc.
2. It is stated in the plaint that the plaintiff company is engaged in the business of manufacturing, marketing and selling of all kinds of fine fragrance, flavours, synthetic camphor, incense sticks and other terpene chemicals and other allied and cognate goods under the plaintiff's Trade/Corporate name 'Oriental Aromatics Ltd.'.
3. It is further stated in the plaint that the plaintiff company has originally conceived and adopted the trademark/label 'Saraswati Camphor' and device of 'Saraswati label' in the year 1967, in relation to the said goods and business and in order to expand their business they adopted the trademark/label 'Saraswati Camphor' and device of Saraswati with different artistic feature, get up, colour scheme and combination layout and trade dress to look more impressive and modern, with same entrusted quality.
CS (Comm.) No.334/2020 page 2 of 20 D.J.(Commercial Court)-01/Shahdara/KKD/Delhi
4. It is further stated in the plaint that the plaintiff company has also obtained trademark registration pertaining to the said trademark/label in India, which is still subsisting, under the provisions of the Trade Marks Act, 1999. It is further stated that the plaintiff company is the owner and proprietor of the artistic features involved in the said trademark/label and holds the Copy Right therein.
5. It is further stated in the plaint that the plaintiff company has authorized M/s Divine Camphors Pvt. Ltd., as the franchisee company, for processing, manufacturing, packing, marketing and selling of the aforesaid goods of the plaintiff and a franchisee agreement was also executed between the parties.
6. It is further stated in the plaint that for the last few days, it was observed that the sales of the plaintiff company were falling drastically and the franchisee/distributors were also receiving various complaints regarding the quality and quantity of the products of the plaintiff.
7. It is further stated in the plaint that the defendants No.1 & 2 are also engaged in the same trade of selling all kinds of fine fragrance, flavours, synsthetic camphor, incense stick and other allied and cognate goods.
8. It is further stated in the plaint that the defendant No.3, i.e. Flipkart, is India's major e-commerce cum online retail market place, which provides a single platform to its prospective buyers to buy wide range of goods and services.
CS (Comm.) No.334/2020 page 3 of 20 D.J.(Commercial Court)-01/Shahdara/KKD/Delhi
9. It is further stated in the plaint that the defendants, with malafide intention and to pass on its products as those of the plaintiff, have deliberately adopted the trademark/label 'Satyawati', with or without device of Godess Saraswati, which is referred as impugned trademark/label.
10. It is further stated in the plaint that the defendants have deliberately and intentionally copied the entire artistic work packaging/trade dress, colour scheme, colour combination, writing pattern, printing style of the products of the plaintiff company and have also deliberately and intentionally copied even the minute things of packing trademark, label, trade dress and trade name of the plaintiff.
11. It is further stated in the plaint that the impugned trademark/label of the defendants is identical with and deceptively similar to the trademark/label of the plaintiff in each and every respect, including visually, structurally, in its basic idea and essential features. It is further stated that by the impugned adoption and use, the defendants have infringed and passed off and are also infringing and passing off and enabling others to infringe and pass off and violate the proprietary rights of the trademark/label of the plaintiff company.
12. It is further stated that the defendants are not the proprietor of the impugned trademark/label and have no right to adopt and use the same as a artistic feature/label/packaging/trade dress or as a copy right or in any other manner whatsoever. It is CS (Comm.) No.334/2020 page 4 of 20 D.J.(Commercial Court)-01/Shahdara/KKD/Delhi further stated that due to impugned activities of the defendant, the plaintiff is suffering tremendously in business and goodwill and hence the present suit.
13. After filing of the present suit, summons of the suit for settlement of issues were duly issued to the defendants by the Ld. Predecessor of this court, vide orders dated 21.09.2021.
14. It is pertinent to mention here that an exparte ad-interim injunction was also passed in favour of the plaintiff and against the defendants by the ld. Predecessor of this court, vide order dated 21.09.2021, with the following directions :
"53. Accordingly, exparte ad- interim injunction is hereby granted in favour of the plaintiff and against all the defendants up till next date of hearing i.e. 11.10.2021 only as follows :
A. The defendant no. 1 and 2 are hereby restrained by themselves as also through their individual proprietors/part- ners, agents, representatives, distributors, assigns, heirs, suc- cessors, stockists and all others acting for and on their behalf from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in or using trade mark/label/trade dress/packaging SATYAWATI with or without device of Goddess Saraswati in relation to their impugned goods and business of CAMPHOR and other allied/related goods or any other trademark or any other label/artistic feature/packaging/trade dress/trade name which is or which may be identical with and/or deceptively similar to the plain- tiff's trademark/label/trade name and artistic feature/packag- ing/trade dress under the registered trademark/label "SARASWATI CAMPHOR" in relation to their impugned goods and business of camphor and other allied products or from doing any other acts or deeds amounting to or likely to:
(i) Infringing the plaintiff's registered trademark/label SARASWATI CAMPHOR.
(ii) Passing off and enabling others to pass off their goods and business as that of the plaintiff.
(iii) Infringing the plaintiff's copyright in the said SARASWATI CAMPHOR trademark and artistic work/label/trade dress/pack-
aging by inter alia using, publishing, reproducing and otherwise CS (Comm.) No.334/2020 page 5 of 20 D.J.(Commercial Court)-01/Shahdara/KKD/Delhi commercially and for the purposes of trade using the impugned identical with and deceptively similar impugned artistic feature/label/packaging/trade dress respectively for the pur- poses of its impugned goods and business as also passing off the plaintiff's common law rights therein.
B. The defendant no. 1 and 2 are hereby restrained from dis- posing 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 as may be brought to the notice of the Court during the course of the proceedings and on the defendant no.1 and 2 disclosure thereof and which the de- fendant no.1 and 2 are called upon to disclose and/or on its as- certainment by the plaintiff.
D. The defendant no.3 is hereby directed to temporarily (till the next date of hearing) take down, suspend, remove, can- cel or block/restrict access to the trade mark/label/trade dress/packaging SATYAWATI, as advertised and/or soliciting and/or offering for sale on the impugned website/portal of the defendant no. 3 through impugned weblink/URL https://www.flipkart.com/agarwalsons-satyawati0- 45gram/p/itmddadb50b3d539?
pid=HAIGY7ZJUUZF4FZK&lid=LSTHAIGY7ZJUUZF4FZKF CN1HY&marketplace=FLIPKART&q=SATYAWATI+&store=se arch.flipkart.com&srno=s_1_4&otracker=search&otracker1=s earch&fm=SEARCH&iid=a71f55bd-b57c-418e-8e94- 3862e058e2db.HAIGY7ZJUUZF4FZK.SEARCH&ppt=sp&ppn =sp&ssid=uggdfccmo00000001630400551348&qH=21c9eea3 00ad0bdd, of the defendant no.1 and 2.
E. Further defendant no.3 is hereby directed to disclose the KYC details/Basis Subscriber information of the defendant no.1 and 2 for the purpose of proper and effective compliance of the orders of this Court."
15. It is further relevant to note that the application of the plaintiff under Order XXVI Rule 9 CPC and Order XXXIX Rule 7 r/w Sec. 151 CPC, for appointment of local commissioner was also allowed by the Ld. Predecessor of this court, vide order dated 21.09.2021, with following directions :
"62. Mr. Aditya Singh Deshwal, Advocate, Enrollment No. D/3542/2016, Chamber no. F-8, LGF, Jangpura Extension, New Delhi-14. Mobile no. 9536367061. E-mail:
[email protected] is hereby appointed as Local CS (Comm.) No.334/2020 page 6 of 20 D.J.(Commercial Court)-01/Shahdara/KKD/Delhi Commissioner in this case to visit the premises of the defendant no.1 (as per memo of parties), where the impugned activities are being carried on by or on behalf of defendant no.1 or where the impugned goods/materials are expected to be found. Local Commissioner is directed to visit the addresses of defendant no. 1 with the counsel/authorized representative of the plaintiff.
63. Mr. Shubham Jain, Advocate, Enrollment No.D/2648/18, Chamber No. 1/1759, Lakshmi Niwas, Moti Ram Road, Shahdara, Delhi-110032. Mobile no.9716925609 and 9267995007. E-mail: [email protected] is hereby appointed as Local Commissioner in this case to visit the premises of the defendant no. 2 (as per memo of parties), where the impugned activities are being carried on by or on behalf of defendant no. 2 or where the impugned goods/materials are expected to be found. Local Commissioner is directed to visit the addresses of defendant no. 2 with the counsel/authorized representative of the plaintiff.
The Local Commissioners shall:
a. visit the premises of the defendant no.1 and 2 (as per memo of parties) and their godowns and take in their custody all the impugned goods of Camphor and related goods including other incriminating materials like moulds, and goods, packing material, pouches, cartons, blocks, containers, display boards, sign boards, advertising material, dies or blocks, semi-finished, unfinished packed, unpacked impugned goods or any other doc- uments, wrapper etc. bearing impugned trade mark/label/trade dress/packaging "SATYAWATI" with and without the device of Goddess Sarawati in relation to their impugned goods and business of CAMPHOR or any other trademark or any other la- bel/artistic feature/packaging/trade dress/trade name which is or which may be identical with and/or deceptively similar to the plaintiff's trademark/label/trade name and artistic feature/pack- aging/trade dress under the registered trademark/label SARASWATI CAMPHOR in relation to their impugned goods and business of camphor and other allied products.
b. visit other premises at the identification to the plaintiff where the impugned activities are being carried on by or on be- half of the defendant no.1 and 2 or where the impugned goods/materials are expected to be found.
c. sign the account book including ledgers, cash register, stock register, invoices, books etc, of the defendant no.1 and 2.
d. break upon the locks, if required, for taking possession of the impugned goods.
CS (Comm.) No.334/2020 page 7 of 20 D.J.(Commercial Court)-01/Shahdara/KKD/Delhi e. photography and videography of the proceedings regarding execution of the local commission and seizure of impugned goods shall also be made.
65. The Local Commissioners shall hand over the seized material on superdari to the plaintiff or its representatives, who shall give an appropriate undertaking that the sealed material will be produced before the Court, as and when directed."
16. In compliance of the summons of the suit for settlement of issues, the defendant No.2 appeared before the court, through counsel Ms. Monika, Advocate, and defendant No.3 appeared through counsel Sh. Ranjeet Singh, Advocate, on 11.10.2021.
But, the defendant No.1 remained unserved.
17. An application under Order I Rule 10 r/w 151 CPC was filed, on behalf of defendant No.3, for deletion of its name from the array of parties and the said application was allowed by the ld. Predecessor of this court, vide order dated 29.11.2021, and the name of defendant No.3 was deleted from the array of parties.
18. Despite issuance of process to defendant No.1, on several occasions, defendant No.1 could not be served and therefore, on 11.04.2022, a prayer was made by the Ld. Counsel for the plaintiff for withdrawal of the suit against defendant No.1. On his request, the suit of the plaintiff was dismissed as withdrawn by the ld. Predecessor of this court, qua defendant No.1, vide order dated 11.04.2022.
19. None had appeared on behalf of defendant No.2 for the last several dates of hearing and therefore, a court notice was also CS (Comm.) No.334/2020 page 8 of 20 D.J.(Commercial Court)-01/Shahdara/KKD/Delhi issued to defendant No.2, as well as his Ld. Counsel, vide order dated 06.09.2022. But despite due service of the court notice, none had appeared on its behalf and it was reported that the Ld. Counsel for defendant No.2 has also refused to accept the court notice. Therefore, vide order dated 06.10.2022, the defence of the defendant No.2 was struck off and defendant No.2 was proceeded 'exparte'.
20. In view of the judgment of 'Parsvanath Developers Ltd. v. Vikram Khosla', CS Comm No. 618 of 2019 and C.M. No. 8413 of 2020, decided on 03.03.2021, 2021 SCC Online DEL 3147 , the evidence of the plaintiff was not recorded and the matter was adjourned for final arguments on 09.11.2022.
21. Exparte final arguments were addressed by Sh. Mohit Sharma, Advocate, for the plaintiff on 09.11.2022.
22. During the course of arguments, the Ld. Counsel for the plaintiff has reiterated the contents of the plaint and prayed that the suit of the plaintiff be decreed against the defendant No.2. However, during the course of arguments, a query was raised by the Court regarding the territorial jurisdiction of this court, to try & entertain the present suit, on which, the Ld. Counsel for the plaintiff has relied upon the following judgment, in support of his contentions, and has argued that in view of these judgments, this court has the territorial jurisdiction to try & entertain the present suit :
(i) 'Chandra Kishore Chaurasiya vs. R.A. Perfumery Works Pvt. Ltd.', reported as, '2022/DHC/004454';
CS (Comm.) No.334/2020 page 9 of 20 D.J.(Commercial Court)-01/Shahdara/KKD/Delhi
(ii) 'V Guard Industries Ltd. vs. Sukan Raj Jain & Anr.' reported as, '2021 SCC OnLine 3625';
(iii) 'Shakti Fashion and Another vs. Burberry Limited', reported as, '2022 SCC OnLine Del 1636';
(iv) 'Millennium & Copthorne International Ltd. vs. Aryans Plaza Services Pvt. Ltd. & Ors.', reported as, '2018 SCC OnLine Del 8260';
(v) 'Exxon Mobile Corporation vs. Exoncorp Pvt. Ltd.', reported as, 'MANU/DE/2262/2019';
(vi) 'World Wrestling Entertainment Inc. vs. M/s Reshma Collection & Ors.' reported as, '2014 SCC OnLine Del 20131';
(vii) 'Shree Rajmoti Industries vs. Rajmoti Oil Mills Pvt.
Ltd. & Anr.' reported as, 'MANU/DF/1090/2004'.
23. I have given my considered thoughts to the arguments addressed by the Ld. Counsel for the plaintiff and I have also carefully perused the case file. I have also perused the various judgments cited by the Ld. Counsel for the plaintiff.
24. In order to decide the issue of territorial jurisdiction of this court, to try & entertain the present suit, it would be appropriate to have a glance at the relevant Statutory Provisions, covering the issues of Territorial Jurisdiction in such IPR matters:-
25. 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 CS (Comm.) No.334/2020 page 10 of 20 D.J.(Commercial Court)-01/Shahdara/KKD/Delhi more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally 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..........."
26. 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.
27. Section 134 of the Trade Marks Act, 1956 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 CS (Comm.) No.334/2020 page 11 of 20 D.J.(Commercial Court)-01/Shahdara/KKD/Delhi 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 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)
28. On considering Section 62 of The Copyright Act and Section 134 of The Trade Marks Act, it is observed 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 CS (Comm.) No.334/2020 page 12 of 20 D.J.(Commercial Court)-01/Shahdara/KKD/Delhi 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. 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 the right is founded. Section 20 of the Code of Civil Procedure recognizes 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 the cause of action, wholly or in part, arises at a particular place.
29. In case title as, 'Indian Performing Rights Society Ltd. Vs. Sanjay Dalia and Ors.', reported as, '(2015) 10SCC161', the Hon'ble Supreme Court took notice of the fact that in IPR cases, Plaintiffs tend to sue the 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 dehors 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 CS (Comm.) No.334/2020 page 13 of 20 D.J.(Commercial Court)-01/Shahdara/KKD/Delhi 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......
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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........
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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 provide for the authors/trade marks holders to sue at their ordinary residence CS (Comm.) No.334/2020 page 14 of 20 D.J.(Commercial Court)-01/Shahdara/KKD/Delhi 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........
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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........
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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.
CS (Comm.) No.334/2020 page 15 of 20 D.J.(Commercial Court)-01/Shahdara/KKD/Delhi
30. In another case title as, 'Dabur India Ltd. Vs. K R Industries', reported as, '2008 (10) SCC 595', the 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".
31. While discussing the case titled as, 'Dodha House Vs. S K Maingi', reported as, '2006 (9) SCC 41', the Hon'ble Supreme Court 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, that by itself would not mean that the plaintiff carried on any business in Delhi.
32. In the present case the plaintiff is running its business of manufacturing, marketing and selling of all kind of fine fragrance, flavours, synthetic camphor, incense sticks and other terpene chemicals and other allied and cognate goods under plaintiff's trade/corporate name of 'Oriental Aromatics Ltd.', at Mumbai, Maharashtra. The plaintiff company is alleged to be the owner and proprietor of trademark/label Saraswati camphor and device of Saraswati with its artistic features, get up, colour scheme and combination layout and trade dress etc. CS (Comm.) No.334/2020 page 16 of 20 D.J.(Commercial Court)-01/Shahdara/KKD/Delhi
33. As per the plaint, the defendants No. 1 & 2 are also engaged in trade of all kinds of fine fragrance, flavour, synthetic maphor, and other terpene chemicals and other allied and cognate goods and the impugned goods. Defendant No.3 is the ecommerce/online retail market place which provides single platform through its website to the prospective buyers to buy all range of goods including the impugned goods.
34. It is also stated in the plaint that the defendants, with malafide intention and to pass on its products as those of the plaintiff, have deliberately adopted the impugned trademark and have deliberately and intentionally copied the entire artistic work/ packaging/trade dress of the plaintiff, in the same colour combination.
35. From perusal of the record, it is clear that the plaintiff had already withdrawn it's suit against the defendant No.1 and on the request of the plaintiff, the suit of the plaintiff qua defendant No.1 was dismissed as withdrawn on 11.04.2022.
36. Perusal of the record further shows that the name of defendant No.3 was also deleted from the array of parties, vide order dated 29.11.2021, as an application was filed on behalf of defendant No.3 under Order I Rule 10 r/w Sec. 151 CPC and the plaintiff was having no objection for deletion of defendant No.3.
37. From the record, it is clear that the present suit has been continued and pursued by the plaintiff, further only against the defendant No.2 who is reported to have its office at Siliguri and CS (Comm.) No.334/2020 page 17 of 20 D.J.(Commercial Court)-01/Shahdara/KKD/Delhi is selling its goods at Siliguri.
38. Perusal of the record further shows that after filing of the present suit, the Ld. Predecessor of this court had appointed Sh.Shubham Jain, Advocate, to visit the premises of defendant No.2 at Siliguri only and to seize the infringed goods there.
39. Perusal of the record and the documents filed by the plaintiff, in support of its case, clearly indicate that the plaintiff is a registered partnership firm having it registered office at Mumbai, Maharashtra and the sole defendant i.e. defendant No.2 is also based at Siliguri, out of the territorial jurisdiction of this court. No material evidence has come on record to indicate that the defendant No.2 was indulged in sale of impugned/infringed goods at District Shahdara, Delhi, within the territorial jurisdiction of this court. However, during the course of arguments, the Ld. Counsel for the plaintiff has drawn my attention to an invoice dated 28.08.2021 and has argued that this invoice has been prepared for supply of impugned goods of the plaintiff through Flipkart (defendant No.3). But, during the arguments, the ld. Counsel for the plaintiff has conceded that the said invoice was only a test invoice and only a trap order was placed with Flipkart (defendant No.3) for supply of infringed/impugned good to a prospective buyer within the territorial jurisdiction of District Shahdra Delhi. There is no other document on record to indicate that the defendant No.2 was indulged in sale of impugned goods within the territorial jurisdiction of District Shahdara, Delhi.
CS (Comm.) No.334/2020 page 18 of 20 D.J.(Commercial Court)-01/Shahdara/KKD/Delhi 40 It has been held by the Hon'ble High court of Delhi, in case titled as, 'Vivek Purwar and Another vs. Hari Ram and Others', reported as, '2022 SCC OnLine Del 3639', as under:
"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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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 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 Mark is situated at Delhi. Though, an napplication 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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35. In Pfizer Products Inc. v. Rajesh Chopra (Supra), thie 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 CS (Comm.) No.334/2020 page 19 of 20 D.J.(Commercial Court)-01/Shahdara/KKD/Delhi 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 the 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.
(emphasis supplied)
41. In these circumstances, this court is of the considered opinion that there is nothing on record to suggest that any infringement of the trade mark, copy right or violation of any passing off rights of the plaintiff has ever taken place at District Shahdara, Delhi, i.e., within the territorial jurisdiction of this court. Therefore, this court is of the considered opinion that this court has no territorial jurisdiction to try & entertain the present suit.
Therefore, the plaintiff is not entitled for any relief from this court, in the present suit, and the same is hereby dismissed, being devoid of any merits.
No orders as to costs.
Decree sheet be prepared accordingly.
File be consigned to record room, after due compliance.
Digitally signed by BRIJESH BRIJESH KUMAR
Announced in the open Court on KUMAR GARG
Date: 2022.12.15
this 15th Day of December, 2022 GARG 16:44:14 +0530
BRIJESH KUMAR GARG
District Judge (Comm.Court)-01
Shahdara District, KKD, Delhi
CS (Comm.) No.334/2020 page 20 of 20 D.J.(Commercial Court)-01/Shahdara/KKD/Delhi