Delhi District Court
M/S Venus Steps vs M/S Venus Footwear on 2 July, 2007
1
IN THE COURT OF SH. GIRISH KATHPALIA,
ADDITIONAL DISTRICT JUDGE, DELHI
SUIT NO.251/06
M/s VENUS STEPS ....PLAINTIFF
versus
M/s VENUS FOOTWEAR ....DEFENDANT
ORDER
1. By way of application dated 11/12/06, defendant to this suit for injunction against infringement of trade mark and passing off seeks rejection of the plaint mainly on the grounds of territorial jurisdiction of this court. Reply to the application was filed on behalf of plaintiff and I have heard ld. Counsel for both the sides who took me through records.
2. As pleaded in the plaint, plaintiff firm has been engaged in marketing footwear and allied items since 1977 from Delhi. The trade mark VENUS STEPS was conceived and adopted by plaintiff in the year 1977 in respect of its footwear and allied products. An application for registration of trade mark VENUS filed by plaintiff on 19/08/94 is pending wherein plaintiff claimed user of the trade mark since 1977. Applications of plaintiff for registration of trade mark VENUS CS/251/06 Page 1 of 31 pages 2 STEPS in respect of classes 18 and 25 are also pending with the trade marks registry. Besides, plaintiff is also registered proprietor of trade mark VENUS STEPS in class 18 leather and imitations of leather goods vide registration dated 19/08/94. Plaintiff has also applied for renewal of the said registration by the office of Registrar of Trade Marks, New Delhi. Plaintiff has marketed its footwear and allied products bearing the said trade marks extensively and continuously to such an extent that the trade mark VENUS STEPS has come to signify the products originating from the plaintiff firm exclusively. In para 10 of the plaint, the plaintiff has also tabulated its sales figures with effect from 1977 onwards till 2004-05 and pleaded that 80% of the figures relate to the sales of goods under the trade mark VENUS STEPS.
3. As pleaded by plaintiff, in second week of December 2004 for the first time it came to know that the defendant is claiming itself to be proprietor of trade mark VENUS in respect of footwear. Such a claim of the defendant came to the notice of plaintiff when the latter received the examination report from the office of Registrar of Trade Marks in respect of its CS/251/06 Page 2 of 31 pages 3 application, citing pendency of defendant's application for a conflicting trade mark. User of the trade mark VENUS is claimed by the defendant with effect from the year 1990 and since plaintiff did not notice any goods of defendant in the market, it did not agitate.
4. But in second week of August 2005, plaintiff noticed an advertisement of the defendant in the Trade Marks Journal for registration of impugned trade mark VENUS in class 25. On 22/08/05 plaintiff filed a notice of opposition against the grant of registration to the defendant. On plaintiff's applications for registration of VENUS STEPS in classes 18 and 25 being advertised in the Trade Marks Journal, the defendant also filed its notice of opposition.
5. Plaintiff pleaded that it noticed for the first time the impugned product of the defendant being sold in Karol Bagh market, New Delhi only in second week of September 2006. The impugned products are being sold clandestinely without any bill or cash memo. Since plaintiff has been using the trade mark VENUS STEPS since the year 1977, being prior user plaintiff has the sole and exclusive right to use the trade mark CS/251/06 Page 3 of 31 pages 4 VENUS STEPS and defendant is liable to be restrained from using the infringing trade mark VENUS and from passing off its goods as goods of plaintiff.
6. The territorial jurisdiction of this court is pleaded in para 24 of the plaint as under:
"That this Hon'ble Court has jurisdiction to entertain and try the present suit as the defendant is itself claiming to be selling its goods bearing impugned trade mark VENUS throughout India including within the jurisdiction of this Hon'ble Court. This Hon'ble Court even otherwise has jurisdiction to entertain and try the present suit as the defendant is selling, advertising, offering for sale and carrying on its business of marketing footwear bearing the impugned trade mark VENUS within the jurisdiction of this Hon'ble Court albeit clandestinely and without issuance of any bill/cash memo and therefore part of the cause of action has arisen within the jurisdiction of this Hon'ble Court. That the plaintiff has also come to know that the defendant is intending to appoint distributors and dealers for the sale of its footwear bearing the impugned trade CS/251/06 Page 4 of 31 pages 5 mark VENUS within the jurisdiction of this Hon'ble Court and on this account also this Hon'ble Court would have the necessary jurisdiction to entertain and try the present suit of the plaintiff. The defendant has further filed an application for the registration of its impugned trade mark VENUS in the office of the Registrar of Trade Marks, New Delhi and its said application has been advertised in the Trade Marks Journal which has circulation in Delhi and further the said application has been advertised without any territorial limitations thereby clearly indicating that the defendant has every intention of marketing its impugned products within the jurisdiction of this Hon'ble Court. This Hon'ble Court even otherwise has jurisdiction to entertain and try the present suit under the provisions of section 134 of the Trade Marks Act 1999 in as much as the plaintiff is residing, carrying on business and working for gain within the jurisdiction of this Hon'ble Court."
7. In its written statement, the defendant pleaded that it is a partnership firm, named VENUS FOOTWEAR and its trade mark is VENUS SHOES. Defendant adopted the trade CS/251/06 Page 5 of 31 pages 6 mark VENUS in the year 1990 and its applications dated 30/05/97 and 27/10/04 for registration of trade marks VENUS and VENUS SHOES in class 25 are pending. Since 1990, the defendant has been using the trade mark VENUS without any objection from any quarter. The word VENUS means an ancient Italian goddess of love and beauty and the word VENUS suggests an exceptionally good shoe, fit to be worn by beautiful women, as such plaintiff has no exclusive right over the word.
8. Defendant also pleaded that plaintiff is based at Karol Bagh with no branches and is dealing with local customers only, while the defendant based in Agra has been selling its goods wholesale in Gujrat, Rajasthan, Maharashtra, West Bengal, Uttar Pradesh and Bihar etc., though the defendant has never sold its goods with trade mark VENUS in Delhi. As such there is no possibility of any confusion in the mind of a customer. As such, this court has no territorial jurisdiction over the dispute. In reply to the territorial jurisdiction pleadings of plaintiff, the defendant pleaded that it has never sold its product bearing trade mark VENUS in Delhi CS/251/06 Page 6 of 31 pages 7 and mere filing of an application in the Trade Marks Registry of Delhi does not create a territorial jurisdiction in this court. Similarly, advertisement in the Trade Marks Journal also does not create a territorial jurisdiction. Plaintiff cannot combine several causes of action unless this court has jurisdiction over all the causes.
9. Besides, the defendant also raised certain other pleas, which would give rise to mixed questions of law and fact and are not relevant for present purposes.
10. Plaintiff filed a detailed replication and pleaded that goods of both the parties are sold by same shopkeepers in the same cities of India. Plaintiff pleaded that it has customers coming from all parts of the country and it has generated the substantial goodwill having sold till date goods worth more than Rs.15 crores. Besides, plaintiff also has a right to extend its business to new areas. In replication, plaintiff reiterated that the defendant itself claims to be selling its goods bearing the trade mark VENUS throughout the country including Delhi. Defendant has been selling its goods in Delhi in a clandestine manner and is intending to appoint distributors CS/251/06 Page 7 of 31 pages 8 and dealers in Delhi for the sale of footwear under the trade mark VENUS.
11. In the application under consideration for rejection of plaint due to alleged lack of territorial jurisdiction, the defendant reproduced contents of the pleadings, including the written statement and cited certain judgments pertaining to the law on territorial jurisdiction in such suits.
12. So far as the written statement is concerned, it is trite that the same cannot be looked into at this stage while dealing with an application under Order VII Rule 11 CPC. But since the defendant has placed reliance on the same, reading the said portions would help to understand the challenge put forward by the defendant.
13. Defendant relies upon its pleadings that it has never sold any goods in Delhi under the trade mark VENUS; it is dealing in shoes and footwear only and not in class 18; it is selling all its goods with cash memo/credit memo in various parts of the country and never indulged in any clandestine sale; and mere application for registration or advertisement in trade marks journal does not create a cause of action.
CS/251/06 Page 8 of 31 pages 9
14. In the application, the defendant also quoted the provisions of section 134, Trade Marks Act, 1999 and contended that in this composite suit for infringement of trade mark, infringement of copyright and passing off, a suit for passing off can be filed only where the defendant resides or where goods of defendant are available and since goods of defendant are not being sold in Delhi, nor is the defendant residing in Delhi, this court has no territorial jurisdiction to try a suit for passing off.
15. In the application under consideration, the defendant also quoted certain portions from the judgments of Hon'ble Supreme Court in the case of DHODHA HOUSE (infra) to the effect that only because two causes of action can be joined in terms of the provisions of CPC, it does not mean that jurisdiction in respect of one cause of action would in itself confer the jurisdiction for the other cause as well. Since defendant is based in Agra and its goods are not sold in Delhi, suit for passing off cannot be maintained here.
16. In reply to the application, the plaintiff contended that even if the defendant is not from Delhi, since goods of the CS/251/06 Page 9 of 31 pages 10 defendant bearing the impugned trade mark are sold in Delhi, this court has jurisdiction to entertain a suit for passing off as well. Plaintiff denied that the suit filed by it is for infringement of copyright also. Plaintiff contended that since the defendant also intends to appoint stockists/dealers/agents in Delhi, plaintiff can invoke jurisdiction of this court. As such the application deserves to be dismissed with exemplary cost.
17. During arguments on the application under consideration, ld. Counsel for defendant took me through the provisions of section 134, Trade Marks Act, 1999 and explained that the additional forum created by sub-section (2) to section 134 covers only a suit for infringement of a registered trade mark or relating to any right in a registered trade mark but does not cover an action for passing off. As such, for an action of passing off, suit has to be filed at the place of defendant or where cause of action arose in terms with the general law of civil procedure.
18. Ld. Counsel placed reliance on the judgment of Hon'ble Supreme Court in the case of DHODHA HOUSE vs S.K. MAINGI, AIR 2006 SC 730 followed by the judgment of CS/251/06 Page 10 of 31 pages 11 Hon'ble Delhi High Court in the case of DABUR INDIA LTD vs K.R. INDUSTRIES, 2006 (33) PTC 107 (Delhi), upheld in the case of DABUR INDIA LTD vs K.R. INDUSTRIES, 2006 (33) PTC 348 (Delhi) (DB) in support of his argument that merely because more than one causes of action can be joined in terms with law of civil procedure, territorial jurisdiction afforded by one cause cannot of its own confer territorial jurisdiction as regards other causes joined in the suit. As such, the territorial jurisdiction afforded by section 134 (2), Trade Marks Act for the infringement suit cannot be extended to the passing off action and territorial jurisdiction as regards both the causes of action must exist in this court separately. Since the defendant is not selling its goods in Delhi, suit for passing off cannot lie here and plaint needs to be amended in terms with the judgment of Hon'ble Delhi High Court in the case of THE JAY ENGINEERING WORKS LTD vs RAMESH AGGARWAL, 2006 (33) PTC 561 (Delhi) or returned to the plaintiff in terms with the judgment in the case of DABUR INDIA (supra).
19. Ld. Counsel for defendant also argued that a bald pleading of plaintiff to the effect that defendant is selling the CS/251/06 Page 11 of 31 pages 12 impugned goods in Delhi is of no consequence in affording territorial jurisdiction in the absence of bills. Since plaintiff has not filed any bills to show that the defendant has been selling the impugned goods in Delhi, there is no territorial jurisdiction in this court to try this passing off action. Reliance was placed on the judgments of HARYANA MILK FOODS LTD vs CHAMBEL DAIRY PRODUCTS, 2002 (25) PTC 156 (Delhi), GUPTA BROTHERS CONDUIT PIPE MANUFACTURING COMPANY vs ANIL GUPTA, 2001 (24) PTC 159 (Delhi) and DABUR INDIA LTD. (supra).
20. Ld. Counsel for defendant also argued that the phrase "carrying on business" has been explained by the Hon'ble Supreme Court in the case of DHODHA HOUSE (supra) and the present suit does not fit in the said interpretation. It was also argued that the pleading to the effect that defendant is intending to appoint distributors in Delhi is vague and cannot confer territorial jurisdiction.
21. Per contra, it was pointed out by ld. Counsel for plaintiff that all the judgments cited by the other side pertain to the interim injunctions or the final disposal of suit and not CS/251/06 Page 12 of 31 pages 13 rejection of plaint at initial stages under Order VII Rule 11 CPC. It was also pointed out that the phrase "carrying on business" discussed in DHODHA HOUSE (supra) was qua the plaintiff and not qua the defendant.
22. It was argued on behalf of plaintiff that while dealing with an application under Order VII Rule 11 CPC, this court cannot looked into the defendant's pleadings and a specific averment in the plaint to the effect that defendant is selling the impugned goods in Delhi has to be taken on its face value. Additionally, it was pointed out that this is not a case of bald allegations of sale by defendant in Delhi since plaintiff has specifically pleaded that the defendant has been engaged in clandestine sales and further more, in its opposition to the plaintiff's application for registration of its trade mark, the defendant categorically admitted that it has been selling the impugned goods throughout the length and breadth of the country.
23. It was argued on behalf of plaintiff that the injunction being a preventive relief, pleadings of the plaintiff that defendant intends to appoint distributors in Delhi for sale CS/251/06 Page 13 of 31 pages 14 of impugned goods is sufficient to clothe this court with territorial jurisdiction in view of law laid down by Hon'ble Delhi High Court in the case of PFIZER PRODUCTS INC vs RAJESH CHOPRA, 2006 (32) PTC 301 (Delhi) and INTAS PHARMACEUTICALS vs ALLERGAN INC, 2006 (33) PTC 272 (Delhi) (DB).
24. Ld. Counsel for plaintiff placed reliance on the judgment of a division bench of Hon'ble Delhi High Court in LALLI ENTERPRISES vs DHARAM CHAND, 2003 (26) PTC 239 Delhi (DB) in support of his contention that production of cash memos is not necessary since clandestine sales are often made by the wrongdoers without cash memo and an averment regarding the sale in plaint is enough atleast at the initial stages to summon the defendants.
25. I have deliberated upon the rival contentions. At the very outset, it is clarified that the present suit does not pertain to infringement of copyright. It is also to be understood that on account of lack of territorial jurisdiction, the plaint can only be returned for filing before the court of competent jurisdiction and cannot be dismissed under Order VII Rule 11 CPC, as CS/251/06 Page 14 of 31 pages 15 sought by the defendant in the application under consideration. Hence, to a certain extent the application under consideration is misplaced.
26. The suit filed by plaintiff is for infringement of registered trade mark and passing off of the goods by the defendant. So far as territorial jurisdiction for entertaining the suit to the extent of infringement of trade mark is concerned, the same is not challenged by the defendant. The only challenge thrown is as regards territorial jurisdiction of this court to hear the suit to the extent of passing off. The only ground of challenge is that the defendant is not selling the impugned goods in Delhi and plaintiff has failed to file any bill/cash memo to show that the defendant has been selling its goods under the impugned trade mark VENUS in Delhi, as such cause of action or even part thereof did not arise in Delhi.
27. In the case of RAVI SINGHAL vs SMT. MANALI SINGHAL, 87 (2000) DLT 658 DB, a division bench of Hon'ble Delhi High Court held that in asking the court to decide an issue whether the plaint discloses a cause of action or not, the defendant must be taken to admit, for the sake of argument, CS/251/06 Page 15 of 31 pages 16 that the allegations of plaintiff made in the plaint are true modo et forma. The bar to reject a plaint under Order VII Rule 11 CPC can be exercised only if a court comes to the conclusion that even if all the allegations are proved, the plaintiff would not be entitled to any relief whatsoever.
28. In the case of INSPIRATION CLOTHES & U vs COLBY INTERNATIONAL, 2001 (57) DRJ (DB), another division bench of Hon'ble Delhi High Court held that while considering the prayer to reject a plaint on the grounds that the plaint discloses no cause of action, which is essentially a demurrer, the defendant must be taken to admit for the sake of argument that the allegations of the plaintiff in the plaint are true in manner and form.
29. In the case of KUSUM INGOTS & ALLOYS LTD. vs UNION OF INDIA, AIR 2004 SC 2321 Hon'ble Supreme Court elaborately discussed the phrase "cause of action" appearing in section 20 (c) CPC as regards territorial jurisdiction of court and held that when a cause of action arises within one or the other High Court, the petitioner has a choice of forum. It was held that the cause of action has no relation whatsoever to the CS/251/06 Page 16 of 31 pages 17 defence which may be set up by the defendant. Hon'ble Supreme Court referred to an earlier decision in the case of ONGC vs UTPAL KUMAR BASU, 1994 (4) SCC 711 where it was held that the question as to whether the court has a territorial jurisdiction to entertain a writ petition, must be arrived at on the basis of averments made in the petition, the truth or otherwise thereof being immaterial. The Hon'ble Supreme Court described the "cause of action" thus:
"Cause of action implies a right to sue. The material facts which are imperative for the suitor to allege and prove constitutes the cause of action. Cause of action is not defined by any statute. It has, however, being judicially interpreted inter alia to mean that every fact which would be necessary for the plaintiff to prove, if traversed, in order to support his right to the judgment of the court. Negatively put, it would mean that everything which, if not proved, gives the defendant an immediate right to judgment, would be part of cause of action."
30. In the case of LG CORPORATION vs INTERMARKET ELECTROPLASTERS, IA 258/06 in CS(OS) no.1359/04 CS/251/06 Page 17 of 31 pages 18 decided on 13/02/06, Hon'ble Mr. Justice A.K. Sikri of the Delhi High Court while dealing with a similar application held as under:
"Therefore there is no doubt that as the defendant no.1 is not having any branch office or an agent in Delhi, it cannot be said that the defendant is carrying on business in Delhi. Upto this extent there is no quarrel.
However, ld. Counsel for plaintiff has submitted that since infringing goods are sold in Delhi, part of cause of action has arisen within the territorial jurisdiction of this court. It may be stated that not only this averment is specifically made in the plaint, the plaintiff has also placed on record documents to show that sale of infringing goods is taking place in Delhi. The question as to whether the court has territorial jurisdiction to entertain a suit or not has to be arrived at on the basis of averments made in the plaint, that truth or otherwise thereof being immaterial as it cannot be gone into at this stage. Sale of the goods by defendant no.1 in Delhi, which, according to the plaintiff, are the infringing goods and violate the trade mark of the plaintiff will give rise to the cause of action CS/251/06 Page 18 of 31 pages 19 and, therefore, this court will have the jurisdiction.
It has to be left to be determined in each individual case as to where cause of action arises. The jurisdiction is conferred upon a court even when part of cause of action arises. Present suit is filed on the ground that the defendant is passing off its goods as that of the plaintiff and for this purpose the goods are being sold in Delhi also. It is the sale of goods in Delhi by the defendant which has given cause to the plaintiff to enforce the legal remedy for redress. Fact of the sale of infringing goods in Delhi has the nexus and the relevance with the lis that is involved in the case. It has, infact, a direct bearing with the lis or the dispute on the basis of which grievance is raised by the plaintiff. It is this sale which has given the plaintiff right to sue."
31. In the case of B. RATH vs DAVID BALL, 138 (2007) DLT 284, Hon'ble Delhi High Court elaborately discussed the scope of "cause of action" and detailed the fine distinction between "plaint disclosing no cause of action" and "plaintiff having no cause of action" in following words:
CS/251/06 Page 19 of 31 pages 20 "The distinction between "a plaint disclosing no cause of action" on the one hand and "the plaintiff having no cause of action" on the other have to be borne in mind. The principles which would guide the court in this consideration were elaborately laid down in a pronouncement of this court reported at 88 (2000) DLT 769, INSPIRATION CLOTHES & U vs COLBY INTERNATIONAL LIMITED. It was held thus:
"10. Having considered the submissions made at the Bar and gone through the impugned order, we are of the view that ld. Single Judge proceeded on erroneous assumption that he was entitled to go into the merits of the controversy that whether the plaintiff had any cause of action against the defendant or not or that whether the plaintiff's suit against the defendant was or was not maintainable. Such an approach is erroneous. The plea of the defendant that there is no cause of action does not amount to the plea that the plaint does not disclose any cause of action. A distinction must always be drawn between a plea that plaint does not disclose a cause of action and the plea that the plaintiff has no cause of action to sue. The grounds on which the plaint can be rejected are enumerated in clauses (a) to (d) of Rule 11 of Order 7, CPC. The first ground on which plaint can be rejected is that it does not disclose a cause of action. While considering the prayer to reject the plaint on ground (a) of Order 7, Rule 11, CPC that the plaint discloses no cause of action, which is essentially a demurrer, the CS/251/06 Page 20 of 31 pages 21 defendant must be taken to admit for the sake of argument that the allegations of the plaintiff in the plaint are true in manner and form. The power to reject the plaint on this can be exercised only if the court come to the conclusion that even if all the allegations are taken to be proved, the plaintiff would not be entitled to any relief whatsoever. A distinction must, always be drawn between a case where the plaint on the face of it discloses no cause of action and another in which after considering the entire material on the record the court come to the conclusion that there is no cause of action. In the first case the plaint can be rejected but in the latter case the plaint cannot be rejected. The suit has to be dismissed. Ld. Single Judge adopted the second approach. This was not the stage where the court was expected to enter into this controversy that whether there was a cause of action to the plaintiff against the defendant or not. No doubt that where the plaint is based on a document, the court will be entitled to consider the said document also and ascertain if a cause of action is disclosed in the plaint, but validity of the document cannot be considered at this stage. To enable a court to reject a plaint on the ground that it does not disclose a cause of action, it should look at the plaint and documents accompanying the plaint only and nothing else. The court, however, cannot look at the defence of the defendant or the documents relied upon by the defendant. See D. RAMCHANDRAN vs R.V. JANAKIRAMAN & ORS., II (1999) SLT 484=II (1999) CLT 109 (SC)=(1999) 3 SCC 267. Ld. Single Judge fell in error in placing reliance upon the material supplied by the defendant, which alone is sufficient to set aside the impugned order. Ld. CS/251/06 Page 21 of 31 pages 22 Single Judge instead of proceeding to reject the plaint dismissed the suit, which approach is also erroneous. The effect of dismissal of suit is altogether different and distinct from the effect of rejection of the plaint. In case plaint is rejected under Order 7 Rule 11, CPC, filing of a fresh plaint in respect of the same cause of action is specifically, permitted under Rule 13 of Order 7, CPC. Altogether different consequence follows in the event of dismissal of suit, which has the effect of precluding the plaintiff to file a fresh suit on the same cause of action. Rejection of plaint takes away the very basis of the suit rendering as if there was no suit at all or that no suit was instituted. Order of dismissal of suit while recognising the existence of a suit indicates its termination. While deciding the application under Order 7 Rule 11 of the CPC, ld. Single Judge ought not and could not have dismissed the suit. Even in the decision of the Supreme Court in T. ANVANDANDAM'S case (supra), relied upon by ld. counsel for the appellant, it was held that if on a meaningful 'not formal' reading of the plaint it is manifestly vexatious and meritless, in the sense of not disclosing a clear right to sue, the trial court should exercise his power under Order 7 Rule 11, CPC taking care to see that the ground mentioned therein is fulfilled. In order to fulfill that ground bare allegation made in the plaint and the documents filed therewith were required to be looked into which in the instant case clearly disclosed atleast a cause of action against the defendant that defendant was liable for damages for its acts of omission and commission. It would be an altogether different situation that the plaintiff might not ultimately succeed in obtaining a CS/251/06 Page 22 of 31 pages 23 decree against the defendant or that court might come to the conclusion that suit would not be maintainable against the defendant and that plaintiff had a cause of action only against defendant's principal and its parent unit in Hong Kong, but such aspect could not have been gone into at this stage."
32. In the case of SAMAR SINGH vs KEDAR NATH, AIR 1987 Suppl. SCC 563 Hon'ble Supreme Court held as under:
"Whether a plaint discloses a cause of action or not is essentially a question of fact. But whether it does or does not must be found out from reading the plaint itself. For the said purpose the averments made in the plaint in their entirety must be held to be correct. The test is as to whether if the averments made in the plaint are taken to be correct in their entirety, a decree would be passed."
33. In the case of MAYOR (H.K.) LTD vs OWNERS AND PARTIES, VESSEL MV FORTUNE EXPRESS, (2006) 3 SCC 100, Hon'ble Supreme Court observed thus:
"From the aforesaid, it is apparent that the plaint cannot be rejected on the basis of allegations made by the defendant in his written statement or in an application for rejection of the plaint. The court has to read CS/251/06 Page 23 of 31 pages 24 the entire plaint as a whole to find out whether it discloses a cause of action and if it does, then the plaint cannot be rejected by the court."
34. In view of the legal position as settled through the above mentioned and other plethora of judicial pronouncements, in order to find out as to whether there is a cause of action for filing the present suit in Delhi, it is only the plaint contents that have to be taken into consideration. Pleadings of the defendant are totally beyond the scope of consideration for present purposes. As discussed above, there are specific unambiguous pleadings of the plaintiff to the effect that the defendant is selling its product under the impugned trade mark VENUS in Delhi in a clandestine manner and defendant also intends to appoint distributors for sale of the impugned product in Delhi. Denial of defendant on both these counts in the written statement cannot be looked into for present purposes.
35. Ld. Counsel for defendant strongly emphasized with the help of above mentioned judgments that a bald pleading of the plaintiff to the effect that defendant is selling the impugned CS/251/06 Page 24 of 31 pages 25 products in Delhi is not sufficient to maintain the suit in this court in the absence of bills/cash memos. But the judgments relied upon by ld. Counsel for defendant on this aspect were under a totally distinct factual matrix, to which I shall revert at a later stage.
36. Firstly, this is not a case of mere bald pleading in the plaint that defendant is selling its impugned goods in Delhi. The statement of plaintiff is supported by documentary record, that too in the form of written admissions of the present defendant. Absence of bills/cash memos has been explained by the plaintiff by pleading that the defendant has been indulging in clandestine sales without bills/cash memos.
37. The admission referred to above is in the form of the defendant's notice of opposition to the plaintiff's application for registration of trade mark, copy whereof is document no.121 on record. The relevant paragraphs of the same are reproduced as under:
"3. That the trade mark "VENUS" has been used by the opponent extensively, continuously and uninterruptedly throughout the length and breadth of the country. Now, CS/251/06 Page 25 of 31 pages 26 the trade mark "VENUS" has become the most dominant, leading and memorable part of opponent's business.
10. That the impugned application is a crude and slavish copy to the identical well known and reputed trade mark "VENUS" of the opponent and the impugned trade mark "VENUS STEPS" is also same and identical to the opponent's trade mark "VENUS", which gives impression that the mark is connected to the opponent. Hence, applicant adopted the impugned mark dishonestly to pirate on opponent's well known and established trade mark "VENUS".
16. That the entire range of the goods manufactured by the opponent and the goods manufactured by the applicant, are the same description, all the goods of the applicant and the opponent are sold by the same shopkeepers and also at the same counters in the same cities of union of India." (emphasis supplied)
38. Defendant cannot disown its written admissions which are clear and ambiguous that entire range of goods manufactured by both the parties are same and being sold by same shopkeepers in same cities of the country across its CS/251/06 Page 26 of 31 pages 27 length and breadth.
39. Coming to the caselaw cited on behalf of the defendant, the situation in the case of HARYANA MILK FOODS (supra) was that despite a specific pleading by the defendant in the written statement to the effect that he never sold his product within the jurisdiction of Delhi court, plaintiff did not rebut the same in replication. That is not the situation in present case. Even in the case of GUPTA BROTHERS (supra), Hon'ble Delhi High Court made a reference to not just "bills" but the "documents" in support of the pleading. The argument of clandestine sales in Delhi was rejected by the Hon'ble High Court in view of the fact that since regarding sale in other cities the plaintiff had produced defendant's bills, it could not be believed that in Delhi sales no bills would be issued. In the present case, the plaintiff has not been able to produce any bill of the defendant at all. In the case of DABUR INDIA (supra) the plaintiff could not dispute that the defendant was carrying on its business in Andhra Pradesh and also could not point out sale of the impugned products in Delhi by the defendant. But as mentioned above, in the present case the plaintiff has CS/251/06 Page 27 of 31 pages 28 placed on record defendant's own admission as regards sale of the impugned products in Delhi.
40. Hence, it cannot be said that plaintiff has brought this suit on a mere bald averment.
41. Then, there is another aspect, which remains unchallenged by the defendant and that is the clear pleadings of the plaintiff to the effect that the defendant also intends to sell its products under the impugned trade mark VENUS in Delhi and plans to appoint distributors here. I am in agreement with ld. Counsel for plaintiff that injunction being a preventive relief, apprehension of abrogation of rights would also form part of cause of action and consequently if the apprehension arises in Delhi, this court does have territorial jurisdiction over the lis.
42. In the case of PFIZER (supra) the Hon'ble Delhi High Court observed that a threat of selling the offending goods in Delhi would in itself confer jurisdiction in the courts in Delhi to entertain a suit claiming an injunction in respect thereof. Whether the threat perception is justified or not is another matter which has to be considered and decided upon in the CS/251/06 Page 28 of 31 pages 29 application filed by the plaintiff under Order XXXIX Rule 1&2 CPC or on merits when the suit is taken up for disposal. But so far as Order VII Rule 10 CPC is concerned, which is strictly speaking the provision applicable to present case, assuming that whatever is stated in the plaint is correct, one would have to also assume that the threat or the intention of the defendants to sell and offer for sale the offending goods in Delhi is also correct and consequently Delhi courts would certainly have jurisdiction.
43. More recently in the case of S. OLIVER BERND FREIER GMBH & CO. vs KARNI ENTERPRISES, 2006 (33) PTC 574 Delhi Hon'ble Delhi High Court observed as under:
"In my view, for the present purposes, it is not necessary to advert to the issue as to whether the defendants had been selling their products in Delhi on a commercial scale or not, for the reason that a reading of the plaint as a whole shows that the defendant intends to sell their products at Delhi and in any case the threat looms large. Although moreso, as the defendants have sought registration of their trade mark on an all India basis, though the same has been sought at Kolkatta.
CS/251/06 Page 29 of 31 pages 30 In the above context, reference may be made to a division bench judgment of this court in M/s JAWAHAR ENGINEERING COMPANY & OTHERS vs M/s JAWAHAR ENGINEERS PVT. LTD. SRI RAMPUR, 1983 PTC 207 wherein it has been held that a threat that the offending goods could be sold at a particular place would definitely give jurisdiction to the court in such a place. Significantly, the division bench also held that an injunction being prohibitive in nature is intended to prevent something likely to happen and once the plaintiff had learnt that the defendants have applied for registration of trade mark in Delhi, they could claim an injunction to prevent any sale of the infringing products in Delhi. The division bench, therefore held that filing of an application for registration of trade mark in Delhi would give rise to a threat perception that the offending goods would be sold in Delhi and that would be sufficient to give the courts in Delhi jurisdiction to entertain the suit in respect of the same."
It would be relevant to observe that in the present case also, the defendant has applied for registration of its trade mark without any territorial limits.
CS/251/06 Page 30 of 31 pages 31
44. In the case of INTAS (supra) also a division bench of Hon'ble Delhi High Court observed that the place where impugned goods are sought to be sold also has territorial jurisdiction over such disputes.
45. In view of above discussion, for present purposes only the plaint has to be looked into and pleadings of the defendant are irrelevant. Plaintiff has specifically pleaded that the defendant is selling clandestinely its goods in Delhi and also intends to appoint distributors and agents in Delhi. Plaintiff has placed on record an admission on the part of the defendant that the latter is selling its goods across the length and breadth of this country. Therefore, at this stage it cannot be held that plaint does not disclose cause of action having arisen in Delhi or that this court lacks territorial jurisdiction to entertain the present suit.
46. Defendant's application 11/12/06 under Order VII Rule 11 CPC is meritless and frivolous, as such the same is dismissed with cost of Rs.3,000/- in favour of the plaintiff.
ANNOUNCED IN THE OPEN
COURT ON 02nd July 2007 (GIRISH KATHPALIA)
ADDL. DISTRICT & SESSIONS JUDGE
DELHI
CS/251/06 Page 31 of 31 pages
32
CS/251/06 Page 32 of 31 pages