Delhi District Court
M/S Greenply Industries Ltd vs M/S Classic Plywood & Hardware on 27 April, 2015
IN THE COURT OF SH R.L. MEENA ADDL. DISTRICT JUDGE02:
SOUTHWEST DISTRICT: DWARKA COURTS:NEW DELHI
T.M No. 08/14
Unique Identification No. 02405C0223242011
M/s Greenply Industries Ltd
2/42, WHS, Opposite DSIDC Complex,
Kirti Nagar, Delhi110015. ........Plaintiff
VERSUS
M/s Classic Plywood & Hardware
Tulja Bhawani Temple Road
Pendar Galli
Hubli 580028.
........ Defendant
Date of institution of the suit : 21.07.2011
Date of arguments : 18.02.2015
Date of pronouncement : 27.04.2015
T.M No. 08/14 M/s Greenply Industries Vs. M/s Classic Plywood & Hardware page no. 1/12
27.04.2015
EXPARTE JUDGMENT
Suit for permanent injunction, infringement of Trade Mark
and rendition of accounts etc. in respect of registered
Trade Mark "Green" & Copyrights.
1.Plaintiff has instituted a suit for permanent injunction, infringement of Trade Mark and rendition of accounts etc. filed by the plaintiff M/s Greenply Industries Ltd alleging infringement of registered trade mark/principle mark "GREEN" by the defendant who is alleged to be manufacturing/marketing similar products using the mark "GREEN TUFF".
2. Summons of the suit were issued against the defendant.
Initially, defendant appeared before the Court through his counsel. Later on, defendant did not give any instructions to his counsels regarding his case therefore, vakalatnama was withdrawn by defendant counsel and defendant was proceeded exparte vide order dated 23.04.2012. T.M No. 08/14 M/s Greenply Industries Vs. M/s Classic Plywood & Hardware page no. 2/12
3. Plaintiff, in order to prove its case, examined constituted attorney of plaintiff's company namely Dr. Raman Khanna (PW1). He tendered his evidence by way of affidavit of evidence Ex PW 1/A. In the exparte evidence, he has reiterated all the material facts of the plaint which are not reproduced here for sake of brevity. He has also placed his reliance upon the following documents:
(a)Photocopy of special power of attorney Ex PW 1/1 (OSR)
(b) Photocopies of various TM certificates in favour of plaintiff company Ex PW 1/2 to Ex PW 1/11 (OSR)
(c) Auditor's report Ex PW 1/12 (OSR)
4. It is the case of plaintiff that it is a registered user of trademark/principle mark "Green" in connection with various plywood products, block boards, laminates veneers, decorative laminates, particle boards etc. It is claimed that there are several other marks with the word "GREEN" either suffixed or prefixed registered in favour of the plaintiff namely "GREENPLY, GREENWOOD, GREENLAM, T.M No. 08/14 M/s Greenply Industries Vs. M/s Classic Plywood & Hardware page no. 3/12 GREENGLOSS, GREENMICA, GREENCLUB" etc.
5. It is alleged by the plaintiff that defendant is using the mark "GREEN TUFF" on plywoods and other similar products which is claimed to be in infringement of the trademark of the plaintiff. The plaintiff has alleged that the act of the defendant in manufacturing/marketing inferior quality plywoods under the mark "GREEN TUFF" which is deceptively similar to the registered trademark of the plaintiff is calculated to take undue advantage of the plaintiff reputation and popularity. It is prayed that defendant, their partners, proprietors, officers, servants, agents, stockists and distributors etc are to be restrained from manufacturing and marketing the infringed products. It is further prayed to pass a decree in favour of plaintiff against the defendant for a sum of Rs. 5,00,000/ for the illegal profits earned by the defendant and rendition of accounts of profits made by the defendant/damages be awarded to the plaintiff against the defendant on account of use of trade mark "GREEN" in any T.M No. 08/14 M/s Greenply Industries Vs. M/s Classic Plywood & Hardware page no. 4/12 manner whatsoever.
6. I have heard exparte final arguments and given thoughtful consideration to the arguments advanced by counsel for plaintiff and perused the record carefully.
7. The entire evidence of plaintiff remains unrebutted. It is pertinent to mention here that plaintiff has also filed five suits bearing No. TM 3/14, 4/14, 5/14, 6/14 and 7/14 wherein defendants appeared and moved an application u/o VII Rule 10 & 11 CPC for returning of plaint due to lack of territorial jurisdictions.
8. Defendant has been proceeded exparte in the present case but it is the utmost duty of the court to see as to whether this Court has territorial jurisdiction to try the present suit or not. For the examining of the aspect of territorial jurisdiction, it is relevant to refer the provision of Trade Mark Act, 1999. Section 134 of the said Act governs the issue of jurisdiction which reads as under: (1) No suit
(a) for the infringement of a registered trade mark; or T.M No. 08/14 M/s Greenply Industries Vs. M/s Classic Plywood & Hardware page no. 5/12
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of sub section (1), a 'District Court having jurisdiction' shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceedings, the person instituting the suit or proceeding, or , where there are more than one such person any of them actually and voluntarily resides or carries on business or personally works for gain.
Explanation - For the purpose of subsection (2), 'person' includes the registered proprietor and the registered user."
9. A bare perusal of the aforesaid provision show that in order to invoke the jurisdiction, infringement of trade mark relating to any right in registered trade mark a person instituting the suit or the proceeding should actually and voluntarily reside or personally work for gain within the jurisdiction of that court. It is admitted fact that plaintiff has its registered office at Assam and as such it can be said that T.M No. 08/14 M/s Greenply Industries Vs. M/s Classic Plywood & Hardware page no. 6/12 plaintiff is not resident of Delhi.
10. Now, coming on the claim of plaintiff regarding "carrying on business" or "personally work for gain" in Delhi. Plaintiff has invoked the jurisdiction of this court in para no.23 of the plaint which reads as under: "23.That the plaintiff is carrying on its business within territory of the hon'ble court and the plaintiff invokes jurisdiction of this hon'ble court under Section 134 and Section 134(2) of the Trade Mark Act, 1999 hence this hon'ble court has got the jurisdiction to entertain and try the present suit."
11. Bare perusal of the aforesaid averments of plaint regarding territorial jurisdiction, it is evident that plaintiff is claiming jurisdiction of this court on the basis of its office situated at Delhi and claimed that plaintiff is carrying its business or working for gain through the said office.
12. The aspect of 'working for gain' as provided under Section 134 of Trade Marks Act was considered by Hon'ble Supreme Court in Dhodha House (M/s) v. S.K. Maingi, 2006 1 AD :
2006(32) PTC 1(SC) and it was observed as under: T.M No. 08/14 M/s Greenply Industries Vs. M/s Classic Plywood & Hardware page no. 7/12 "The expression 'carries on business' and the expression 'personally works for gain' connotes two different meanings. For the purpose of carrying on business only presence of a man at a place is not necessary. Such business may be carried at a place through an agent or a manager or through a servant. The owner may not even visit that place. The phrase 'caries on business' at a certain place would, therefore, mean having an interest in a business at that place, a voice in what is done, a share in the gain or loss and some control thereover. The expression is much wider than what the expression in normal parlance connotes because of the ambit of a civil action within the meaning of section 9 of the Code. But it is necessary that the following three conditions should be satisfied namely: "(1) The agent must be a special agent who attends exclusively to the business of the principal and carries it on in the name of the principal and not a general agent who does business for any one that pays him. Thus, a trade in the mufassil who habitually sends grain to Madras for sale by a firm of commission agent who have an independent business of selling goods for others on commission, cannot be said to 'carry on business' in Madras. So a firm in England, carrying on business in the name of A.B and Co., which employs upon the usual terms a Bombay firm carrying on business in the name of C.D and Co., to act as the English firm's commission agents in Bombay, does not 'carry on business' in Bombay so as to render itself liable to be sued in Bombay. (2) The person acting as agent must be an agent in T.M No. 08/14 M/s Greenply Industries Vs. M/s Classic Plywood & Hardware page no. 8/12 the strict sense of the term. The manager of a joint Hindu family is not an 'agent' within the meaning of this condition.
(3) To constitute 'carrying on business' at a certain place, the essential part of the business must take place in that place. Therefore, a retail dealer who sells goods in the mufassil cannot be said to 'carry on business' in Bombay merely because he has an agent in Bombay to import and purchase his stock for him. He cannot be said to carry on business in Bombay unless his agent made sales there on his behalf. A Calcutta firm that employs an agent at Amritsar who has no power to receive money or to enter into contracts, but only collects orders which are forwarded to and dealt with in Calcutta, cannot be said to do business in Amritsar. But a Bombay firm that has a branch office at Amritsar, where orders are received subject to confirmation by the head office at Bombay, and where money is paid and disbursed, is carrying on business at Amritsar and is liable to be sued at Amritsar.
Similarly a Life Assurance Company which carries on business in Bombay and employs an agent at Madras who acts merely as a Post Office forwarding proposals and sending moneys cannot be said to do business in Madras. Where a contract of insurance was made at place A and the insurance amount was also payable there, a suit filed at place B where the Insurance Co. had a branch office was held not maintainable. Where the plaintiff instituted a suit at Kozhikode alleging that its account with the defendant Bank as its Calcutta branch had been wrongly debited and it was claimed that that court had jurisdiction as the T.M No. 08/14 M/s Greenply Industries Vs. M/s Classic Plywood & Hardware page no. 9/12 defendant had a branch there, it was held that the existence of a branch was not part of the cause of action and that the Kozhikode Court therefore had no jurisdiction. But when a company through incorporated outside India gets itself registered in India and does business in a place in India through its agent authorized to accept insurance proposals, and to pay claims, and to do other business incidental to the work of agency, the company carries on business at the place of business in India."
13. In the aforesaid case, Hon'ble Supreme court also observed that it was possible that the goods manufactured by the plaintiff were available in the market in Delhi or they are sold in Delhi but that by itself would not mean that plaintiff carries on any business in Delhi.
14. Bare perusal of the law laid down in Dhodha's case (supra), it is manifest that when a business is carried out on behalf of principal at another place then it may be carried on at a place through an agent or a manager or through a servant but it is necessary that following three conditions should be satisfied which are as under:
(i) The agent must be a special agent who attends exclusively T.M No. 08/14 M/s Greenply Industries Vs. M/s Classic Plywood & Hardware page no. 10/12 to the business of the principal and carries it on in the name of the principal and not a general agent who does business for any one that pays him.
(ii) The person acting as agent must be an agent in the strict sense of the term.
(iii) To constitute 'carrying on business' at a certain place, the essential part of the business must take place in that place.
15. In view of the aforesaid conditions constituting the term "carries on business" or "cause of action" now it has to be examined by this court as to whether plaintiff has averred the aforesaid facts in the plaint or not. After having gone through the entire plaint, I find that plaintiff has not mentioned the fact that he is carrying on a business through manager or agent or any authorized person. Secondly, he has also not mentioned the name of authorized person or agent or manager in the plaint. Thirdly, he has also not brought on record any document in exparte evidence like statement of T.M No. 08/14 M/s Greenply Industries Vs. M/s Classic Plywood & Hardware page no. 11/12 earning, consolidated balance sheet, statement of cash flow etc which may show that plaintiff's business is being carried on in Delhi. By merely giving an address within the jurisdiction of this court without specifying the aforesaid facts, does not entitle a company to file a suit within the jurisdiction of this court.
16. In the absence of all these material facts, I am of the considered view that plaintiff fails to confer territorial jurisdiction on this Court therefore, present suit does not lie within the territorial jurisdiction of this Court. Accordingly, plaint is directed to be returned to the plaintiff for presentation to the proper court. File be consigned to record room.
Pronounced in the (R.L.Meena)
open court on 27.04.2015 Addl. District Judge02/SouthWest,
Dwarka Courts Complex, New Delhi
T.M No. 08/14 M/s Greenply Industries Vs. M/s Classic Plywood & Hardware page no. 12/12