Delhi District Court
Rukhmani Keshwani vs Naresh Jeshwani on 8 April, 2024
BEFORE THE COURT OF SH. SURINDER S. RATHI, DISTRICT
JUDGE(COMM.)-03 SHAHDARA, KKD, DELHI
CS Comm.58/22
Rukhmani Keshwani
Trading as Vishwas Agarbatti Store
Mundadi Mouhalla
Ajmer, Rajasthan ..........Plaintiff
Vs.
Naresh Jeshwani
29 B-Block, Kirti Nagar
Foy Sagar Road,
Ajmer, Rajasthan ..........Defendant
Date of Institution : 18.01.2022
Date of Final Arguments : 08.04.2024
Date of Judgment : 08.04.2024
Decision : Plaint Returned
Judgment
1. This suit is filed by plaintiff under Section 134 and 135, 27, 29 of
Trademarks Act, 1999 and Section 51, 55 of Copyright Act, 1957
seeking Permanent Injunction against infringement of Trademark,
Copyright and Passing off Rights as also for Damages etc., in respect of
Trademark 'Radhey Krishna' which is said to be a registered trademark of
plaintiff for the State of Rajasthan.
Case of the Plaintiff
2. Case of the Plaintiff as per plaint and the documents filed is that she is
carrying out business in the name and style of M/s Vishwas Agarbatti
Store and has filed this suit through her General Power of Attorney
Jasvinder Sharma. Plaintiff has claimed that she is engaged in the
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business of making and trading of Agarbatti apart from allied and cognate
products. She gets the goods manufactured through her son Prakash
Keshwani who is also trading as M/s Mahadev Agarbatti Works. She
claims that in the year 1995 she started selling Agarbattis in the name of
Radhey Krishna with a packaging and trade dress of red and yellow
colours. For ready reference the same are reproduced hereunder:
3. As per plaintiff she has been selling goods throughout India through a
wide network of distributors and dealers apart from selling it on e-
commerce platforms. She applied for registration of trade dress as a
trademark on 29.05.2012 claiming users since 07.09.1995 under Class 3
for the State of Rajasthan only.
4. Plaintiff also claims to have Copyright of the artistic work in the logo and
got copyright registered in 2014. Plaintiff honestly, bonafidely sold
agarbattis commercially and continuously under the same trade jacket.
She promoted the trademark through advertisement and marketing
research. Her product is recognised by the industry and consumers. It is
claimed that her trademark has strong goodwill and reputation.
5. In the course of business she came to know that defendant Naresh
Jeshwani is carrying out business of manufacturing and sale of Agarbattis
by adopting the trademark/label Divya-Jai Radha Krishna. It is claimed
that defendant has dishonestly and malafidely adopted the trade dress
which is strikingly similar to the one adopted by the plaintiff under the
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name Divya-Jai Radha Krishna. It is pleaded that the artistic work layout
design, makeup, colour combination etc., are identical. Defendant
adopted the identical trade dress so as to encash the goodwill of the
plaintiff's products and is violative of plaintiff's rights under Section 29
(2), Section 29 (4) of Trademarks Act, 1999.
6. It is pleaded that defendant's goods are of inferior quality and an adoption
of identical trade jacket can mislead the consumers and is an unfair trade
practice. It is further pleaded that in January 2022 plaintiff came to know
that defendant started selling the infringing products in markets of
Shahdara, Vivek Vihar, Anand Vihar, Farsh Bazar, Jagatpuri as also in
other parts of the country in clandestine manner without issuance of
formal bills. As per plaint defendant is said to have applied for
registration of trademark Divya-Jai Radha Krishna in Class-03 on
09.08.2019 by disclosing that this tradename is "proposed to be used".
7. It is claimed that since the defendant is selling products in Shahdara,
Delhi this Court has territorial jurisdiction to try this suit. No notice of
cease and desist was issued. As such the suit in hand was filed by plaintiff
for following reliefs:
Prayer:
i. For a decree of permanent injunction restraining the defendant by itself/themselves
as also through his/their individual proprietors/partners, agents, representatives,
distributors, assigns, heirs, successors, stockists and all others acting for and on
their behalf from using, selling, soliciting, exporting, displaying, advertising
(including in audio, print, visual/social media or otherwise), directly or indirectly or
dealing in any other manner or mode in the impugned trade mark/label/trade
dress/packaging Divya-Jai Radha Krishna or any other trademark/label or any other
label/artistic feature which is or which may be identical with and/or deceptively
similar to the plaintiff's said trademark/label Radhey Krishna in relation to their
impugned goods and business of Incense Sticks/Agarbatti and other allied/cognate
goods or from doing any other acts or deeds amounting to or likely to;
i. Infringement of the plaintiff's registered trademark
CS Comm.58/22
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ii. Passing off and enabling others to pass off his goods and business as that of the
plaintiff. The Defendant is thus hereby violating the plaintiff common law rights
in the plaintiff said trademark;
iii. Infringement of copyrights in the plaintiff's artistic feature/label;
iv. Diluting the Plaintiff's goodwill and reputation to well known trademark/label;
v. Further guilty of falsification and unfair and unethical trade practices.
ii. Restraining the Defendant from disposing 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 Hon'ble Court during
the course of the proceedings and on the defendants disclosure thereof and which the
Defendants are called upon to disclose and/or on its ascertainment by the plaintiff as
the plaintiff is not aware of the same as per Section 135 (2) (c) of the Trade Marks,
1999 as it could adversely affect the plaintiff's ability to recover the costs and
pecuniary reliefs thereon.
iii. For an order for delivery up of all the impugned finished and unfinished materials
bearing the impugned and violative impugned label or any other word/mark which
may be identical with or deceptively similar to the restraining the Defendants by
itself/themselves as also through his/their individual proprietors/partners, agents,
representatives, distributors, assigns, heirs, successors, stockists and all others acting
for an on their behalf from using, selling, soliciting, exporting, displaying,
advertising (including in audio,print, visual/social media or otherwise), directly or
indirectly or dealing in any other manner or mode in the impugned
trademark/label/tradedress/packaging or any other trademark/label or any other
label/artistic feature which is or which may be identical with and/or deceptively
similar to the plaintiff's said trademark including its blocks, labels, display boards,
sign boards, trade literatures and goods etc. to the plaintiff for the purposes of
destruction and erasure.
iv. For an order for rendition of accounts of profits earned by the Defendants by their
impugned illegal trade activities and a decree for the amount so found in favour of
the plaintiff on such rendition on accounts.
v. For an order for cost of proceedings, and
vi. For such other and further order as this Hon'ble Court may deem fit and proper in
the facts and circumstances of the present case.
8. Upon filing of the suit before Ld. Predecessor Local Commissioner was
appointed by Ld. Predecessor of this Court vide order dated 27.01.2022
for carrying out search and seizure at Ajmer, Rajasthan. Admittedly, no
location, place or address was shared within the jurisdiction of District
Shahdara. Relief of ad interim ex-parte injunction was also passed in
favour of plaintiff and against the defendant.
CS Comm.58/22
Rukhmani Keshwani Vs. Naresh Jeshwani
page 4
9. The search and seizure proceedings were carried out by Ld. LC on
03.02.2022. As per the report 31 bags including 22 empty packets and 9
filled packets of agarbattis were seized.
10.Summons of the suit was served upon the defendant who entered
appearance and filed detailed WS.
Case of the Defendant:
11.WS was filed by the defendant wherein he prayed for dismissal of the suit
on the ground that plaintiff has not approached this Court with clean
hands and has suppressed material facts. It is claimed that plaintiff is
selling products even though the registration of the trademark pertained
only to Rajasthan. Dismissal of the suit is also prayed under Section 41
(h) of Specific Relief Act. Objection qua territorial jurisdiction of this
Court is also taken with the plea that plaintiff is doing business in
Rajasthan and likewise defendant too is resident of and is working in
Rajasthan.
12.It is claimed that no act of infringement or passing off has taken place
within jurisdiction of this Court. It is claimed that while plaintiff is selling
Agarbattis under the name Vishwas Radhey Krishna Premium Agarbatti
while defendant is selling by the name Divya-Jai Radha Krishna and
hence there is no similarity in the names. It is stated that both the sides
have offices in Ajmer, Rajasthan.
13.In his reply on merits, defendant has denied the pleas of the plaintiff
wherein plaintiff claimed that her products have reputation in the society.
It is pointed out that the defendant's products have Hindi language used
on one side. It is also pleaded that the colour combination has no
similarity as sought to be made by the plaintiff. Defendant has denied the
documents filed by the plaintiff. It is not the case that defendant is selling
CS Comm.58/22
Rukhmani Keshwani Vs. Naresh Jeshwani
page 5
infringing material online. With these pleas dismissal of the suit is
prayed.
Replication:
14.Replication is filed wherein plaintiff reiterated her pleaded case and
denied the assertion of the defendant. Plaintiff has added that she is
selling products at India Mart apart from weblink as stated in the plaint.
15.The Order 7 Rule 11 CPC application of defendant qua territorial
jurisdiction of this Court was allowed on 14.11.2022. In the said order
this Court while applying the dictum laid by Hon'ble Supreme Court in
Indian Performing Rights Society Ltd. Vs. Sanjay Dalia and Ors.,
2015 Latest Caselaw 419 SC concluded that even if benefit of Section
134 of Trademarks Act, Section 62 of Copyright Act alongwith Section
20 CPC is granted to the plaintiff, the plaintiff does not disclose any iota
of evidence to show that the suit can be maintained before District Court
Shahdara.
16.The order highlighted that combined reading of the above three stautory
provisions provides that a suit for infringement of trademark and
copyright apart from passing off can be filed firstly at a place where
plaintiff resides/works, secondly at a place where defendant
resides/works and thirdly at a place where a part cause of action arises.
The order of this Court highlights that as per IPRS Vs. Sanjay Dalia
(supra) if part cause of action arises at a place where the plaintiff resides
or carries on work for gain. The suit was filed at such place and not at a
place where neither the plaintiff or the defendant resides.
CS Comm.58/22
Rukhmani Keshwani Vs. Naresh Jeshwani
page 6
17.However, order of this Court was challenged by the plaintiff by preferring
FAO (Comm.) 06 of 2023. Vide order dated 24.05.2023 Commercial
Appellate Division of Hon'ble High Court of Delhi opined that at the
preliminary pre-trial stage, the 'Doctorine of Demurrer' shall be applied
to the contents of the plaint and as such by citing Chandra Kishore
Chaurasia Vs. R A Perfumery Works Pvt. Ltd. 2022 Latest Caselaw
2652 Del it was ruled that this Court ought not have rejected the plaint at
this preliminary stage.
18.Consequently, the matter was restored and following issues were
identified by this Court vide order dated 15.09.2023:
Issues:
i. Whether this Court has territorial jurisdiction to try this suit? OP Parties
ii. Whether this suit is hit by Section 41(h) of Specific Relief Act, 1963 ?OPD
iii. Whether plaintiff is entitled for permanent injunction against defendant and his
subjects to injunct them from using, selling, soliciting, exporting, displaying,
advertising products (including in audio, print, visual/social media or otherwise)
using the trademark lable "Radhey Krishna" as prayed? OPP
iv. Whether plaintiff is entitled to decree of injunction and passing off rights against
defendant and his subjects restraining them from disposing the assets violating
the goods of plaintiff's registered trademark lable "Radhey Krishna" as prayed?
OPP
v. Whether plaintiff is entitled to decree of delivery up of finished and unfinished
materials goods in violation of the plaintiff's above trademark? (OPP)
vi. Whether plaintiff is entitled to decree of rendition of accounts of profits earned
by defendant in violation of plaintiff's above trademark? (OPP)
vii. Relief
19.Evidence in this case was ordered to be recorded before Ld. LC as per
following protocol created by this Court under Order 18 Rule 4 CPC
read with Order 15A Rule 6(l) CPC as applicable to Commercial suits.
Evidence was recorded before Ld. LC Sh. Bharat Prakash, Advocate
appointed by this Court for the sake of timely disposal of this case.
CS Comm.58/22
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"Protocol for Recording of Evidence before Court Commissioner appointed by
District Judge, Commercial Court, 2022"
Part - 1
Preliminary
1. Short title- This Protocol is titled "Protocol for Recording of Evidence before Court Commissioner
appointed by District Judge Commercial Court 2022."
2. Statutory Provision- This protocol is prepared as per Order 18 Rule 4 CPC and Order 15A Rule 6(l)
CPC as applicable to Commercial Court.
3. Court- Whenever the term 'Court' appears in this Protocol it should refer to Commercial Court as
defined under Section 2(b) of Commercial Court Act 2015.
Part - 2
Preparation for Assignment
4. Recording of evidence in Commercial Cases- Recording of evidence in Commercial Cases may be
carried out before the Court Commissioner.
Explanation: For reasons to be recorded, Court may retain the case for recording of evidence before the
Court.
5. Appointment of Court Commissioner- As per the Protocol, on the first Case Management Hearing
when the issues are identified, the Court may pass an order for appointment of Court Commissioner.
6. Copy of order be shared with parties and Court Commissioner- Copy of the order of framing of
issues, appointment of Court Commissioner and the schedule of recording of evidence shall be supplied to
the parties as well as the Court Commissioner.
Part - 3
Recording of Evidence
7. Filing of list of witnesses- Both sides shall file list of witnesses preferably within one week but not
later than 15 days of identification of issues before the Court while sharing an advanced copy thereof with
the opposite party.
8. Order of assignment of Case to the Court Commissioner- While assigning the case, following
aspects shall be complied :
i. Schedule of evidence- Recording of evidence shall start within two weeks of identification of
issues. Evidence shall continue on day to day basis, till conclusion. Any alteration in schedule
for recording of evidence, if needed, shall be decided by the Court Commissioner as per
convenience of all concerned, as far as possible. However, entire evidence shall be concluded
within Eight weeks of initiation.
ii. Judicial File- Judicial file shall not be sent or summoned for the purpose of recording of
evidence by the Court Commissioner.
iii. Examination-in-Chief- An advance copy of examination in chief by way of affidavit shall be
supplied to opposite party preferably one week in advance. However, no adjournment shall be
granted in case of non-supply of advance copy.
iv. Production of documents for cross-examination- In case the opposite side is desirous of
production of any document by the witness or any other entity for the purpose of cross-
CS Comm.58/22
Rukhmani Keshwani Vs. Naresh Jeshwani
page 8
examination, an application requesting the same shall be moved well in advance before the
Court.
Part - 4
Duty of Court Commissioner
9. Recording of evidence by the Court Commissioner-
i. Place and Time- Court Commissioner shall record evidence either in Lawyer's chamber, or
Judges/Bar Library, Court Room or any other public place within the Court Complex as
mutually agreed by all concerned. Evidence shall be recorded between 10.00 AM to 5.00 PM.
It can carry on beyond 5.00 PM as well in case both parties agree. It can be recorded even on
a holiday if all the stakeholders are comfortable and agree to the same.
ii. Chronology of recording- Court Commissioner shall proceed to record the examination by
first recording the deposition of litigating party before examining additional summoned
witnesses.
iii. Oath to witnesses- Court Commissioner shall administer oath to the witnesses under
examination as a delegatee of the Court as per Oaths Act, 1969.
iv. Recording of evidence- The evidence shall be preferably typed on a computer but can also be
recorded by hand neatly.
v. Time frame- Court Commissioner shall conclude the recording of evidence, as early as
possible, but not later than eight weeks of assignment of a case. In case, for any reason the
parties are unable to adhere to the time schedule, extension can be sought from the Court.
vi. Comfortable sitting space- Witnesses and their Counsel shall be provided comfortable sitting
space by the Court Commissioner.
vii. Exhibition of documents- Court Commissioner shall exhibit all the documents sought to be
proved by a party on record. In case of any objection to exhibition of the documents by either
side, the objection shall be recorded in some detail and left open with an assurance that mere
marking of such exhibits will not be treated as conclusive proof thereof and that admissibility
of such document shall be decided by the referral Court at final stage.
viii. Original documents to be retained by parties- Court Commissioner shall make an
observation in the record of evidence of all original documents produced and shall sign the
exhibits with an endorsement OSR (original seen and returned) wherever necessary. If a party
has filed original documents alongwith pleadings in Court, the same can be taken back as per
rules for the purpose of recording of evidence before the Court Commissioner. Original
documents be submitted with the Court at the time of final arguments.
ix. Language- Recording of evidence shall preferably be carried out in English or Court
language, as the case may be, unless requested by the parties otherwise.
x. Adjournments- Once started, the cross-examination shall preferably concluded on the same
day or continue on day-to-day basis. In case of any hardship viz. ill health etc. the case can be
deferred but preferably for a day or two but not later than a week.
In case an evidence schedule is fixed and adjournment is sought by the opposite side, i.e the
side other than who is leading evidence, without 24 hour advance notice.
Explanation: In case a witness scheduled to be examined or under examination is reported to
be unwell or unavailable, the party leading the evidence shall produce the next witness in line
in the list for recording of evidence.
xi. Recording of objections- All the objections raised during cross-examination/reexamination
shall be recorded in the deposition under title objections and shall be left open for the decision
of the Court at the stage of final arguments. Witness shall not refuse to answer the question
asked.
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xii. Questions to be allowed- In case Court Commissioner finds any question not related to the
fact and issue, he shall record his objection but shall allow the question to be put and witness
must answer.
xiii. No third person intervention- Court Commissioner shall ensure that the witness is not
assisted by his Counsel or any other person while under examination in answering the
questions.
xiv. Recording of demeanour of witness- Court Commissioner shall record the demeanour of the
witness wherever it is found pertinent and necessary for sharing with the Court.
xv. Copy of evidence- All parties shall be provided uncertified electronic/hard copy of the
evidence recorded, free of cost by Court Commissioner.
xvi. Safe keeping of original deposition- Court Commissioner shall keep the original depositions
in his safe custody till such time they are filed in the Court in original upon completion of
each witness individually.
xvii. Miscellaneous proceedings- Court Commissioner shall maintain a miscellaneous proceeding
sheet for each day of work and shall submit it in the Court at the time of submission of final
report.
xviii. Hostile Witness- In case a witness is sought to be declared hostile, then Court Commissioner
shall refer both the parties to Court at the earliest and the Court shall decide the issue within
three days.
Part - 5
Miscellaneous
10. Summoning of Witness-
i. Summons from Court- In case a litigating party is desirous of summoning a person for
deposition or production of documents, it shall obtain summons from the Court with an
endorsement that such person shall appear before the address of Court Commissioner on
scheduled date, time and place.
ii. Diet Money- Diet money shall be paid to such witness by the party desirous of summoning
as per rules.
11. Advisory to Court Commissioner- While recording the evidence on commission, the Court
Commissioner shall ensure the following:
i. Impartial- Court Commissioner shall conduct himself in an impartial way and behave in an
indiscriminate manner while recording of evidence.
ii. Polite- Court Commissioner shall be polite with the witness and other stakeholders while
recording of evidence.
iii. Confidentiality- Court Commissioner shall maintain confidentiality during the whole
process.
iv. Keeping professional distance- Court Commissioner shall not solicit professional work
from the parties.
v. Integrity- Court Commissioner shall not accept remuneration or any favour in cash or kind
from the parties over and above the honorarium fixed by the Court.
vi. Non-judgmental- Court Commissioner shall not criticize the professional conduct of
lawyers and litigating parties on their understanding of law.
vii. Punctuality- Court Commissioner shall adhere to time schedules and shall not make excuses
like being engaged in some personal or Court work etc.
viii. Coordination- In case of any unforeseen circumstances warranting change of dates of
hearing, for his own case or the request of other side, he shall apprise the other side in
advance via phone call, email, SMS, Whatsapp Group etc..
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ix. No third party sharing- Court Commissioner shall not allow the deposition to be inspected
by any third party and shall not share a copy thereof with any stranger without permission of
the Court.
x. Inspection- Court Commissioner shall allow any party to inspect the recorded proceedings
only in his presence.
xi. Recusal- In case either of the parties or Counsel for the parties are related or closely known
to Court Commissioner, he/she shall recuse self from the case and inform the referral Court.
12. Remuneration of Court Commissioner -
i. Remuneration- In terms of Order 18 Rule 4 of the Code read with Order 15 Rule 2(l) and
Rule 2(o) of the Code, Court Commissioner shall be paid remuneration for the work carried
out.
ii. Mode of payment- Such remuneration shall be paid by the party directly for the work
carried out by way of cash, UPI, Bank Transfer, cheque or draft against due receipt.
iii. Cost to parties- Each party shall individually bear the cost incurred in leading its evidence.
iv. Fee to be paid- Remuneration fee for recording of evidence is fixed at Rs.2,000/- per
witness or Rs.2,000/- per hour whichever is more. Court Commissioner shall record the
Evidence himself and in case the Stenographer services are taken it can either be arranged
by a litigating party on its own cost or in case the same is arranged by Court Commissioner,
then the actual cost of typing shall be reimbursed by the party to the Court Commissioner.
v. Litigation Cost- Expenditure incurred in recording of evidence shall be redeemable as cost
of litigation at the end of the suit.
13. Judicial Intervention during recording of evidence-
i. Parties to cooperate- It is expected that both the sides will cooperate with Court
Commissioner as well as with each other in recording of evidence and carry out proceedings
in a cordial manner.
ii. Dissolution of hindrances- In case of any conflict resulting into hindrance recording of
evidence, it shall be resolved amicably by the parties at their own level with the active help
of the Court Commissioner.
iii. Court intervention- However, in case of any unforeseen situation requiring judicial
intervention, Court Commissioner shall fix date and time for joint appearance of both sides
before the Court for removal of any such impediment.
14. Miscellaneous Applications-
i. Moving the application- In case either of the parties is desirous of moving any
miscellaneous application viz. amending of pleadings, interim injunction etc. it shall share
an advance copy with the opposite side and reply thereof, if any, shall be filed and shared
within seven days.
ii. Date of hearing- Upon receipt of reply, both the sides shall get the application fixed for
disposal in the Court with the help of Reader of the Court and shall not wait till next date
fixed for hearing. All such miscellaneous applications shall be registered, numbered and
indexed separately.
iii. Evidence not to be stalled- It is clarified that, unless Court Commissioner is of the view
that the interim application moved by either of the parties is such that evidence cannot be
recorded before its disposal, the recording of PE/DE shall continue unabatedly.
Plaintiff's Evidence
CS Comm.58/22
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page 11
20.In the evidence recorded before Ld. LC, to prove her case plaintiff
examined her son and newly constituted Attorney PW1 Prakash
Keshwani. Vide his affidavit Ex.PW1/A, he deposed on the lines of
plaint and exhibited following documents:
i. Ex.PW1/1 is representation of Registered Trademarks/labels of the plaintiff.
ii. Ex.PW1/2 is representation of Impugned Mark/Label of the Defendant.
iii. Ex.PW1/3 is status of plaintiff's registered trademark and other application for
registration certificate.
iv. Ex.PW1/4 is copy of the receipt of application for legal proceeding certificate for
trademark no. 2339935 of the plaintiff.
v. Ex.PW1/5 is copy of the Copyright Certificate of the Plaintiff in respect of
Trademark.
vi. Ex.PW1/6 is photocopy of the Sale Invoice Bill of the Plaintiff.
vii. Ex.PW1/7 is status of defendant's impugned trademark application;
viii.Ex.PW1/8 is Copy of General power of Attorney dated 11.01.2022 in favour of
Mr. Jaswinder Sharma.
ix. Ex.PW1/9 is Copy of General Power of Attorney dated 23.05.2023 in favour of
Sh. Prakash Keshwani.
x. Ex.PW1/10 is Report of Local Commissioner dated 03.02.2022i.e. Sh. Abhijeet
Kumar;
xi. Ex.PW1/11 is Affidavit under Order 11 Rule 6 Commercial Courts, Commercial
Division and Commercial Appellate Division of High Courts Act, 2015 r/w
Section 65B of the Indian Evidence Act, 1872 dated 15.01.2022.
xii. Ex.PW1/12 is affidvit under Order 11 Rule 6 Commercial Courts, Commercial
Division & Commercial Appellate Division of High Courts Act, 2015 r/w Section
65B of the Indian Evidence Act, 1872 dated 13.10.2023.
21.In his cross-examination done by Ld. Counsel for defendant PW1
accepted that no judicial order was requested for seizure of defendant's
goods in Delhi. He, however, denied the suggestion that search and
seizure was not carried out in Delhi because defendant's goods were not
available in Delhi. He accepted that plaintiff's trademark Ex.PW1/3 is
restricted to Rajasthan only and has no legal binding beyond Rajasthan.
He accepted that several computer generated invoices filed as Ex.PW1/6
pertain to places beyond Rajasthan. He denied that invoice no. 122-124
dated 10.01.2022 were forged to show territorial jurisdiction of Delhi
Courts. PW1 accepted that no copy of Income Tax Returns have been
filed.
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page 12
Defendant's Evidence
22.On the contrary, defendant examined DW1 Naresh Jeshwani, its
Proprietor. Vide affidavit Ex.DW1/A he deposed on the lines of WS and
exhibited copy of his ID Card as Ex.DW1/1.
23.In his cross-examination carried out by Ld counsel for plaintiff he
accepted that even though he is registered with GST Department for the
last around two years but no document qua the same has been filed. He
also accepted that he has not filed any invoice issued by him in support of
the suit claim but has denied that he does not have documentary proof to
show that he is selling products Pan India.
24.He denied that he has copied the trademark and artistic work of plaintiff's
product and got the same manufactured from one Mr. Amit. He denied the
suggestion that he is selling goods in Delhi clandestinely through network
of dealers and distributors. He added that he has never visited Delhi and
that he came to Delhi only to attend this Court. He denied that his product
Divya-Jai Radha Krishna Agarbatti is deceptively similar with the
plaintiff's products.
25.I have heard arguments of Sh. Satish Kumar and Sh. Sreejan Pankaj,
Ld. Counsels for the plaintiff and Sh. Sabyasachi Mishra, Ld.
Counsel for defendant and have perused the case file carefully.
26.Now I shall dispose of individual issues framed in this case.
Issue No. 1
i. Whether this Court has territorial jurisdiction to try this suit? OP Parties
27.Law in regard to territorial jurisdiction in IPR matters is well-settled. It
would be appropriate to have a glance at the relevant Statutory Provisions
covering issues of Territorial Jurisdiction in such IPR matters. Since now
CS Comm.58/22
Rukhmani Keshwani Vs. Naresh Jeshwani
page 13
then matter is at the stage of final arguments, the Doctorine of Demurrer
available at Order 7 Rule 11 CPC stage is no longer available to the
case.
28.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 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...........
(Emphasis Supplied)
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,
CS Comm.58/22
Rukhmani Keshwani Vs. Naresh Jeshwani
page 14
where there are more than one such persons, any of them actually
and voluntarily resides or carries on business or personally works
for gain.
Section 134 of the Trade Marks Act, 1999 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 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)
29.Upon considering Section 62 of Copyright Act and Section 134 of the
Trade Marks Act it is found 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
CS Comm.58/22
Rukhmani Keshwani Vs. Naresh Jeshwani
page 15
suit where the defendant resides or where cause of action arose. Section
20(a) and Section 20(b) usually provides the venue where the 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.
30.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 right is founded.
Section 20 of the Code of Civil Procedure recognises the Teritorial
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 cause of action
wholly or in part arises at a particular place.
31.In case title Indian Performing Rights Society Ltd. Vs. Sanjay Dalia
and Ors. (2015) 10SCC161 Hon'ble Supreme Court took notice of the
fact that in IPR cases Plaintiffs tend to sue. 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 de hors 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 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
CS Comm.58/22
Rukhmani Keshwani Vs. Naresh Jeshwani
page 16
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......
19.At the same time, the provisions of section 62 of the Copyright Act and
section 134 of the Trade Marks Act have removed the embargo of suing at
place of accrual of cause of action wholly or in part, with regard to a place
where the plaintiff or any of them ordinarily resides, carries on business or
personally works for gain. We agree to the aforesaid extent the impediment
imposed under section 20 of the CPC to a plaintiff to institute a suit in a
court where the defendant resides or carries on business or where the cause
of action wholly or in part arises, has been removed. But the right is
subject to the rider in case plaintiff resides or has its principal place of
business/carries on business or personally works for gain at a place where
cause of action has also arisen, suit should be filed at that place not at
other places where plaintiff is having branch offices etc...... .
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........
21.The provisions of section 62(2) of the Copyright Act and section 134 of the
Trade Marks Act are pari materia. Section 134(2) of the Trade Marks Act is
applicable to clauses (a) and (b) of section 134(1) of the Trade Marks Act. Thus, a
procedure to institute suit with respect to section 134(1)(c) in respect of "passing
CS Comm.58/22
Rukhmani Keshwani Vs. Naresh Jeshwani
page 17
off" continues to be governed by section 20 of CPC.
22. If the interpretation suggested by the appellant is accepted, several mischiefs
may result, intention is that the plaintiff should not go to far flung places than that
of residence or where he carries on business or works for gain in order to deprive
defendant a remedy and harass him by dragging to distant place. It is settled
proposition of law that the interpretation of the provisions has to be such which
prevents mischief.
23. The provisions enabled the plaintiff or any of them to file a suit at the
aforesaid places. But if they were residing or carrying on business or
personally worked for gain already at such place, where cause of action
has arisen, wholly or in part, the said provisions have not provided
additional remedy to them to file a suit at a different place. The said
provisions never intended to operate in that field. The operation of the
provisions was limited and their objective was clearly to enable the plaintiff
to file a suit at the place where he is ordinarily residing or carrying on
business etc., as enumerated above, not to go away from such places. The
Legislature has never intended that the plaintiff should not institute the suit
where he ordinarily resides or at its Head Office or registered office or
where he otherwise carries on business or personally works for gain where
the cause of action too has arisen and should drag the defendant to a
subordinate office or other place of business which is at a far distant place
under the guise of the fact that the plaintiff/corporation is carrying on
business through branch or otherwise at such other place also. If such an
interpretation is permitted, as rightly submitted on behalf of the
respondents, the abuse of the provision will take place. Corporations and
big conglomerates etc. might be having several subordinate offices throughout the country. Interpretation otherwise would permit them to institute infringement proceedings at a far flung place and at unconnected place as compared to a place where plaintiff is carrying on their business, and at such place, cause of action too has arisen. In the instant cases, the principal place of business is, admittedly, in Mumbai and the cause of action has also arisen in Mumbai. Thus, the provisions of section 62 of the Copyright Act and section 134 of the Trade Marks Act cannot be interpreted in a manner so as to confer jurisdiction on the Delhi court in the aforesaid circumstances to entertain such suits. The Delhi court would have no territorial jurisdiction to entertain it.
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 providefor the authors/trade marks holders to sue at their ordinary residence 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 CS Comm.58/22 Rukhmani Keshwani Vs. Naresh Jeshwani page 18 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........
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........
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.
(Emphasis Supplied)
32.This Judgment of Hon'ble Supreme Court is a Benchmark for deciding disputes qua territorial jurisdiction in IPR cases in India and was rightly followed by Single Bench of Hon'ble Delhi High Court in case titled Ultra Home Construction Pvt. Ltd. Vs. Purushottam Chaubey and Ors., 2015 Latest Caselaw 5143 Del decided on 20.07.2015. In the cited case the plaintiff company had Registered Office at Karkardooma, Delhi. The defendant was allegedly infringing its registered trademark CS Comm.58/22 Rukhmani Keshwani Vs. Naresh Jeshwani page 19 "AMARPALI" by adopting a strikingly similar tradename "AMBAPALI GREEN" at Deogarh, Jharkhand wherein plaintiff was also running a hotel in association with Ms. Clark under the name Amrapali Clark-Inn. In this case HMJ Valmiki Mehta, applied the ratio of Hon'ble Supreme Court of Indian Performing Rights Society Judgment (supra) returned the plaint for want of territorial jurisdication by concluding as under:
"7. I may note that it is conceded on behalf of the plaintiff that at the place where the defendants are infringing the trademark at the ogre, Jharkhand, plaintiff has a hotel, and if the plaintiff as a hotel can surely the plaintiff is carrying on business at that particular place and carrying on of the hotel business is very much a part of carrying on of the business of the plaintiff and therefore the race of the judgement in Indian Performing Rights Society Ltd's case (supra) clearly applies. The plaintiff is running the hotel with the Clark- Inn Hotel Group i.e. plaintiff company does have a share in the profits and losses in the hotel which is being run along with the Clark-Inn Hotel Group at the Deogarh, Jharkhand. Once that is so, there is a running business and plaintiff is therefore carrying on business at Deogarh, Jharkhand, and consequently the ratio of the judgement in the case of Indian performing rights Society Ltd (supra) applies and hence this court would not have territorial jurisdiction."
33.The above order of HMJ Valmiki Mehta was challenged by AMRAPALI GROUP in case title Ultra Home Construction Ltd. Vs. Purushottam Chaubey and Ors. 2016 Latest Caselaw 422 Del decided on 20.01.2016 before the Division Bench of HMJs B. D. Ahmed and Sanjeev Sachdeva. The Division Bench, painstakingly discussed the interplay between Section 20 of CPC, Section 134 (2) of 1999 Act and Section 62 (2) of 1957 Act, threadbare in the backdrop of Benchmark judgment of Indian Performing Rights Society (supra) of Hon'ble Supreme Court and ruled that even though the term "Carries on Business" is used in Section 162 (2) of 1999 Act and Section 62(2) of 1957 Act but no explanation is added in the above 2 statutes. The same phrase is used in Section 20 and by virtue of Indian Performing Rights Society (supra). The meaning assigned to "carry on business" qua a Corporation as contained in CPC shall be read for both Section 134 (2) of 1999 and CS Comm.58/22 Rukhmani Keshwani Vs. Naresh Jeshwani page 20 Section 62 (2) of 1957 Act.
34.As referred to supra a Corporation can be said to "Carry on Business" at two places:
(a) Sole or principal office in India, or
(b) A place where (i) cause of action arose and a place where (ii) it also has a subordinate office.
35.While elaborating the above principal in para 13 Hon'ble Division Bench observed:
13.It is evident from the above observations that the interpretation given to the expression "carries on business" in the context of a defendant under section 20 of the Code has also been employed in the context of a plaintiff under the said sections 134(2) and 62(2). Thus, in addition to the places where suits could be filed under section 20 of the Code, the plaintiff can also institute a suit under the Trade Marks Act, 1999 and the Copyright Act, 1957, as the case may be, by taking advantage of the provisions of section 134(2) or section 62(2), respectively. Both the latter provisions are in pari materia. Under these provisions four situations can be contemplated in the context of the plaintiff being a corporation (which includes a company).
First of all, is the case where the plaintiff has a sole office. In such a case, even if the cause of action has arisen at a different place, the plaintiff can institute a suit at the place of the sole office.
Next is the case where the plaintiff has a principal office at one place and a subordinate or branch office at another place and the cause of action has arisen at the place of the principal office. In such a case, the plaintiff may sue at the place of the principal office but cannot sue at the place of the subordinate office. The third case is where the plaintiff has a principal office at one place and the cause of action has arisen at the place where its subordinate office is located. In this eventuality, the plaintiff would be deemed to carry on business at the place of his subordinate office and not at the place of the principal office. Thus, the plaintiff could sue at the place of the subordinate office and cannot sue (under the scheme of the provisions of section 134(2) and 62(2)) at the place of the principal office.
The fourth case is where the cause of action neither arises at the place of the principal office nor at the place of the subordinate office but at some other place. In this case, the plaintiff would be deemed to carry on business at the place of its principal office and not at the place of the subordinate office. And, consequently, it could institute a suit at the place of its principal office but not at the place of its subordinate office. All these four cases are set out in the table below for greater clarity:
S. Place of Plaintiff's Place of Plaintiff's Place where cause of Place where Plaintiff No Principal Office Subordinate/Branc action arose can additionally sue (Sole Office in S. h Office under Section 134 No.1) (2) and Section 62 (2)
1. A -- C A
2. A B A A CS Comm.58/22 Rukhmani Keshwani Vs. Naresh Jeshwani page 21
3. A B B B
4. A B C A
36.The above judgment of Division Bench of Hon'ble High Court was further assailed by AMRAPALI GROUP in case title Ultra Homes Construction Private Ltd. Vs. Purushotam Kumar Chaubey and Ors. SLP no. 7551 of 2016 decided on 08.04.2016, but the above order was affirmed by the Apex Court.
37.Now, the above ratio on territorial jurisdiction as elaborately dealt with and eruditely explained by the Division Bench by virtue of the above table and the ratio concluded shall be applied on the facts of the case in hand.
38.In another case title Dabur India Ltd. Vs. K R Industries 2008 (10) SCC 595 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".
39.While discussing Dodha House Vs. S K Maingi, 2005 Latest Caselaw 691 SC, the Supreme Court Bench 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 but that by itself would not mean that the plaintiff carried on any business in Delhi.
CS Comm.58/22Rukhmani Keshwani Vs. Naresh Jeshwani page 22
40.Ld. counsel for plaintiff has relied on case titled Varun Chopra Vs. Shyam Sunder Chopra, while deciding the RFA No.1735 of 2023 on 28.03.2024 in a trademark suit it is ruled that, "It is to be noticed that each of the clauses (a) to (c) of Section 20 of the Code is separated by a disjunctive word "or" preceded by a semicolon (;). Thus, it is obvious that the said clauses are independent of each other. There is nothing to indicate that they have to be rread conjunctively. If clause (c) of Section 20 of the Code is read independently, then the jurisdiction of the Court to try the suit under Section 20 (c) of the Code is dependent only on the "cause of action" and nothing else. The place of residence or business or work of the defendant is irrelevant."
41.In another case titled Exxon Mobil Corporation Vs. Exoncorp Private Ltd. which is an order passed by Hon'ble High Court on the original side in CS (Comm.) No. 111/2019 on 16.07.2019. The matter is distinguishable from the case in hand in so far as plaintiff in the cited case is an American Company and relied solely on carryingout operations through interactive website www.exxonmobil.com apart from mentioning that it had a Research and Development Centre at Bangalore and also has several subsidiary companies in India. Defendant too was alleged to be carrying on business through interactive www.exoncorp.com apart from presence at several social media websites.
42.The defendant is shown to be a Chennai based company without any branch in Delhi. On the aspect of territorial jurisdiction while citing various judgments passed by Hon'ble High Court of Delhi the only conclusion which has been drawn is that Section 134 of Trademarks Act, Section 62 of Copyright Act and Section 20 of CPC have to be construed and interpreted harmoniously and are not contrary as they compliment each other instead of excluding each other.
43.IPRS Vs. Sanjay Dalia is the only authoritative judgment of Hon'ble Supreme Court on the aspect of territorial jurisdiction of IPR suits guiding the Commercial Courts of the country since 2015 without any CS Comm.58/22 Rukhmani Keshwani Vs. Naresh Jeshwani page 23 change as discussed supra. Once it is admitted and found that plaintiff and defendant both are hailing from Ajmer, Rajasthan, the territorial jurisdiction as per Section 134 of Trademarks Act and Section 62 of Copyright Act as also Section 20 (a) and Section(b) CPC lies only at Court of District Judge (Commercial), Ajmer, Rajasthan. As regards the plea that part cause of action can be said to have arisen in Delhi as per Section 20(c) CPC, this Court finds no merit in this plea.
44.In para 24 of IPRS judgment Hon'ble Supreme Court has cautioned and warned that no plaintiff can be allowed to take the defendant to a far away farther place in the name of part cause of action by citing Section 20 (c) CPC when the suit can be easily maintained at plaintiff's place of residence/workplace as per trademark and copyright laws and defendant's place of residence/workplace as per Section 20 (a) and Section 20 (b) of CPC.
45.The case titled Icon Health and Fitness, INC Vs. Sheriff Usman and Anr. which is miscellaneous order passed in CS(Comm.) No. 216/2016 dated 12.09.2017 plaintiff is an American company carrying on business through interactive website www.ifit.com as also through mobile apps on App Store and Google Play while defendant no. 2 is said to be a resident of UAE. The suit was allowed to be maintained in Delhi on the pecularity of circumstances whereunder neither the parties belonged to Delhi and were carrying out business in Delhi in virtual world unlike the case in hand.
46.Plaintiff has also relied on M/s Bvlgari SPA Vs. M/s Smart Collection and Ors. an order passed in CS(comm.) 209/18 dated 25.07.2018 wherein plaintiff is an Italian Luxury Brand selling merchandise through interactive websites and social media handles. The defendants are also CS Comm.58/22 Rukhmani Keshwani Vs. Naresh Jeshwani page 24 shown to be selling infringing goods on interactive websites. The suit was allowed to be maintained in Delhi in the pecularity of circumstances solely on the basis of the fact that both the websites are accessible from Delhi and as such part cause of action has arisen. The cited judgment does not discuss salutory judgment of IPRS Vs. Sanjay Dalia.
47.The last judgment relied is Absogain Retail Solutions Vs. PUMA SE which is passed under RFA (Comm.)39/2023 on 15.05.2023 wherein Division Bench of Hon'ble High Court of Delhi decided an appeal preferred against injunction order passed by a Commercial Court of Tis Hazari in which the defendant was restrained from selling infringing goods online. In the cited judgment defendant appellant took a stand that Courts at Delhi had no jurisdiction to try this suit.
48.In the cited case the address of the plaintiff and the defendant could not be ascertained from the facts of the case as mentioned in the judgment so as to cross-check if the test laid by Hon'ble Supreme Court in IPRS can be squarely applied or not and in the absence thereof the cited judgment is of no avail to the plaintiff.
49.There is no qualm that the three sub-sections of Section 20 are independent in nature but in the light of IPRS Vs Sanjay Dalia a finding on the territorial jurisdiction shall be arrived at in IPR suits by conjunctive reading of Section 20 CPC alongwith Section 34 of Trademark Act r/w Section 62 of Copyright Act and they shall not be read in distinction.
50.There is nothing on record to show that the Commercial Court at Shahdara has territorial jurisdiction over and above the Commercial Courts of Ajmer, Rajasthan where admittedly plaintiff and defendant CS Comm.58/22 Rukhmani Keshwani Vs. Naresh Jeshwani page 25 resides and where also part cause of action arose on account of admitted sale of alleged infringing material.
51.In the absence of any figment of material or evidence to show that any infringement of the said Trademark, Copyright or violation of any Passing Off Rights ever took place in Delhi this suit and Plaint is ordered to be returned in terms of Order 7 Rule 10 CPC. The interim orders passed are vacated.
52.It is submitted by Ld. Counsel for defendant that in so far as plaintiff has financially burdened the defendant by making him to contest this suit at a place where there was no Territorial Jurisdiction Defendant shall be recompensated. As such plaintiff is burdened with cost of Rs.50,000/- which shall be paid by the plaintiff to the defendant within 4 weeks.
53.File be consigned to Record Room after due compliance.
(SURINDER S. RATHI) District Judge, Commercial Court -03 Shahdara District, KKD Delhi/08.04.2024 CS Comm.58/22 Rukhmani Keshwani Vs. Naresh Jeshwani page 26