Allied Blenders And Distillers Pvt Ltd vs Agribiotech Industries Limited (Abil) on 15 October, 2020

[Cites 44, Cited by 0]

Delhi High Court - Orders

Allied Blenders And Distillers Pvt Ltd vs Agribiotech Industries Limited (Abil) on 15 October, 2020

1. The plaintiff is engaged in the manufacture and marketing of Indian Made Foreign Liquor (IMFL), under various distinctive registered trademarks. The present proceedings are concerned with IMFL manufactured and marketed, by the plaintiff under the tradename "Officers Choice". The plaintiff alleges infringement, by Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 1 of 54 Signing Date:16.10.2020 17:36:36 the defendant, of the trademark and trade label "Officers Choice" and "Officers Choice Blue", registered in the plaintiff's favour, in respect of IMFL manufactured and marketed by it. It is also alleged that the defendant is attempting to pass off its goods as those of the plaintiff, and has also violated the copyright, registered in the plaintiff's favour, in respect of the distinctive set up of the label, whereunder the plaintiff manufactures and clears its products. Accordingly, the suit prays for a permanent injunction, restraining the defendant from dealing, in any manner, with any material, containing any artistic work, identical or substantially similar to the artistic work contained in the "Officers Choice" and Officers Choice Blue" labels of the plaintiff, as well as from dealing in any goods bearing the trademark "Officers Choice" and "Officers Choice Blue", or any deceptively similar mark.

2. Summons have been issued in the suit, and notice in I.A. 4397/2020, preferred by the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC). Pleadings, in the suit as well as in the I.A., are being completed before the learned Joint Registrar. The order, dated 20th August, 2020, of the learned Joint Registrar, indicates that the written statement, and reply to the interlocutory application, filed by the defendant, were returned under objections, though rejoinders, thereto, stand filed by the plaintiff. I am informed, thereafter, that pleadings stand completed in the IA, which is listed for hearing on 21st October, 2020.

Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 2 of 54 Signing Date:16.10.2020 17:36:36

3. In the meanwhile, the plaintiff has prayed for an ad interim injunction, temporarily restraining the defendant from infringing the plaintiffs copyright and trademarks. Detailed submissions, on the prayer for ad interim injunction, were addressed by Mr. Rajiv Nayar, and Mr. Akhil Sibal, learned Senior Counsel for the plaintiff, and Mr. Rashmin Khandekar, learned Counsel for the defendant, and orders were reserved thereon. This order disposes of the said prayer for ad interim injunction.

4. Observations, findings and directions, in this order would, therefore, survive only till the decision on I.A. 4397/2020.

A Brief Factual Overview

5. According to the recitals in the plaint, the "Officers Choice"

trademark was coined and adopted by M/s. BDA Pvt. Ltd. (hereinafter referred to as "BDA") in 1988. The liquor business of BDA was transferred and vested in the petitioner, on a going concern basis, vide a Composite Scheme of Arrangement, which was approved by the High Court of Bombay vide order dated 23rd February, 2007. Consequent thereupon, the plaintiff became the proprietor of the trademark "Officers Choice". This trademark, it is asserted, is used by the plaintiff, not only in connection with alcoholic beverages, but also in relation to other goods such as packaged drinking water and snacks. The plaintiff's goods are claimed to have acquired enviable reputation and goodwill, and has resulted in the "Officers Choice"

brand, of the plaintiff, becoming one of the highest selling brands, and one of the largest selling Whiskys in India. It is also asserted that the Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 3 of 54 Signing Date:16.10.2020 17:36:36 "Officers Choice" trademark of the plaintiff is recognised as a well- known trademark under the Trade Marks Act, and has been so declared by this Court in order dated 16 th January, 2017 in CS (COMM) 1227/2016 (Allied Blenders and Distillers Pvt Ltd v. Surya Rao).

6. The plaintiff claims to be the registered proprietor of the "Officers Choice" and "Officers Choice Blue" trademarks, in various classes, of which an illustrative list has been provided in the plaint. These trademarks, it is claimed, have become distinctive to the Whisky products of the plaintiff.

7. There was a change, in the trade dress, whereunder the plaintiff was selling its "Officers Choice" Whisky, on or around May 2009. Prior thereto, the following labels were used by the plaintiff:

Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 4 of 54 Signing Date:16.10.2020 17:36:36

In or around May, 2009, the above trade dress was substituted by the following new label:

This new label, points out the plaintiff, contained the following distinctive features:

                                   (i)     an overall combination of red, white and gold,
                                   (ii)    a distinctive gold border,

(iii) a coat of arms allied in the centre at the top of the label with the 'OC' stylised mark,

(iv) a distinctive layout, divided by a V shaped gold line/band, running across the label from one side to the other, with a red background below the line and a white background above it,

(v) white letters in the red lower half of the label, and

(vi) "Officers Choice" written in red font, in the upper white Signature Not Verified half.

Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 5 of 54

Signing Date:16.10.2020 17:36:36

8. This new label, it is pointed out, stands duly registered, on 12 th June, 2013, with the Copyright Office, resulting in exclusive rights, in respect thereof, vesting in the plaintiff, under Section 14(c) of the Copyright Act. The new label, therefore, constitutes an "original artistic work", within the meaning of clause (c) of Section 2 of the said Act.

9. The plaintiff claims to have introduced yet another, new label, modifying the layout and colour scheme of the aforesaid label, which may be represented thus:

10. The suit avers that, on 2nd June, 2020, the plaintiff discovered that the defendant had launched a product, named "Chetak Whisky", in the market. The label employed by the defendant, on its bottle, Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 6 of 54 Signing Date:16.10.2020 17:36:36 claims the petitioner, was deceptively similar to the label of the petitioner. These were the labels of the plaintiff and the defendant:

11. The plaintiff has also placed, on record, the following images from the website of the defendant http:///www.bajoriagroup.in/Abil/ABIL.aspx , figuring under the link "Photo Gallery" which, according to the plaintiff, indicates that the defendant is holding itself out to be associated with the plaintiff, and seeking to pass off its products as those of the plaintiff:

Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 7 of 54 Signing Date:16.10.2020 17:36:36 Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 8 of 54

Signing Date:16.10.2020 17:36:36

12. The purchasing public, avers the plaintiff, is bound to be deceived into believing that the products of the defendant are manufactured by the plaintiff.

13. In these circumstances, the plaintiff has preferred the present suit, on which, as noted hereinabove, summons have been issued and pleadings are in the course of completion. The present application seeks interim relief, and the prayer clause in the application reads as under:

"27. In light of the facts and circumstances, it is, therefore, most humbly prayed that this Hon'ble Court may be pleased to issue:

a. an order for temporary injunction restraining the Defendant, its directors, wholesalers, distributors, partners, or proprietor as the case may be, its officers, servants and agents from using, manufacturing, selling, exporting, importing, offering for sale, distributing, advertising, directly or indirectly dealing in any packaging and/ or label or any material that contains any artistic work in the manner that are identical and/ a substantially similar reproduction of the artistic work of the Plaintiff's "Officers Choice" and "Officer's Choice Blue" label amounting to infringement of the Plaintiff's copyright therein;

b. An order for temporary injunction restraining the Defendant, its directors, wholesalers, distributors, partners, or proprietor as the case may be, its officers, servants and agents from using, manufacturing, selling, exporting, importing, offering for sale, distributing, advertising, directly or indirectly dealing in alcoholic beverages, especially IMFL or goods of any description and from holding out by using the impugned images on its website http://www.bajoriagroup.in/Abil/ABIL.aspx or in any other manner of being in affiliation/association with the Plaintiff, bearing the trademark "Officer's Choice"

Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 9 of 54 Signing Date:16.10.2020 17:36:36

and "Officer's Choice Blue" or any deceptively similar mark thereto , amounting to infringement of the Plaintiff's trademarks as stated in paragraph 8 of the Plaint;

c. an order for temporary injunction restraining the Defendant, its directors, wholesalers, distributors, partners, or proprietor as the case may be, its officers, servants and agents from manufacturing, selling, exporting, importing, offering for sale, distributing, advertising, directly or indirectly dealing in IMFL or other goods bearing any identical and/or deceptively similar mark/label(s) and from holding out by using the impugned images on its website http://www.bajoriagroup.in/Abil/ABIL.aspx or in any other manner of being in affiliation/association with the Plaintiff, so as to misrepresent their products as those of the Plaintiff and from doing any other thing as may cause confusion or deception leading to passing off of the Defendant's goods and business as those of the Plaintiff;

d. an order for temporary injunction restraining the Defendants, their principal officers, partners, servants, representatives and agents or any of them, from using in any manner, the impugned label and impugned images as illustrated in the Plaint or any other conceptually and deceptively similar mark or any identical trade/label mark as that of the Plaintiff's "Officer's Choice" and "Officer's Choice Blue"

including its packaging or on its website http://www.bajoriagroup.in/Abil/ABIL.aspx so as to take unfair advantage of or to the detriment of the distinctive character and reputation of the Plaintiff's registered and well known trade/label mark "Officer's Choice" "Officer's Choice Blue" including but not limited to alcoholic products, especially whisky products of any description, so as to cause dilution or tarnishment of the Plaintiff's trade mark;

e. An order granting ex-parte relief in terms of prayer 28 (a) to (d) above;

Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 10 of 54 Signing Date:16.10.2020 17:36:36

Pass such other or further order(s) as this Hon'ble Court deem fit and proper in the facts and circumstances of the case."

14. The present order is restricted to the issue of grant of ad interim relief, pending consideration of the application under Order XXXIX, Rules 1 and 2, CPC.

Rival contentions

15. I have heard, at length, Mr. Rajiv Nayar and Mr. Akhil Sibal, learned Senior Counsel for the plaintiff and Mr. Rashmin Khandekar, learned Counsel for the defendant, on the aspect of ad interim relief.

16. A serious question of the territorial jurisdiction, of this Court, to entertain the present suit, has been raised by the defendant. Essentially, therefore, only two issues arise for consideration, at the present juncture, viz.

(i) whether this Court has territorial jurisdiction to entertain the suit, and

(ii) whether, assuming the answer to (i) is in the affirmative, any case for grant of ad interim injunction is made out, or not.

17. On the issue of territorial jurisdiction 17.1 Paras 62 and 63 of the plaint aver that this Court has territorial jurisdiction to entertain these proceedings, and reads as under:

"62. This Hon'ble Court has jurisdiction under Section 134(2) of the Trade Marks Act, 1999 and Section 62(2) of the Copyright Act, as the Plaintiff, being the registered proprietor Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 11 of 54 Signing Date:16.10.2020 17:36:36 of the trademark in issue and the proprietor of the copyright in the artistic work in its labels has its office located at B-129, Okhla Industrial Area-I, New Delhi-110 020. Moreover, the Plaintiff is carrying on its business within the territorial limits of this Hon'ble Court in a variety of ways such as (but not limited to) sale of its products under the "Officer's Choice"

trademark, copyrighted logo and trade dress.

63. This Hon'ble Court has the necessary territorial jurisdiction to try and entertain the present suit under Section 20 of the Code of Civil Procedure, 1908 as the Defendant is carrying on business at Beetal House, 3rd Floor, 99 Madangir, Behind Local Shopping Centre, Near Dada Harskuhdas Mandir, New Delhi-110 062. The Defendant's website http://www.bajoriagroup.in/Abil/ABIL.aspx expressly indicates the said New Delhi address under the "Contact Us"

page. Furthermore, it is apprehended that the Defendant will soon launch its product bearing the impugned label within the territorial jurisdiction of this Hon'ble Court. The Memorandum of Association of the Defendant in its "Main Objects" explicitly states that it seeks to establish and carry on the business in India or elsewhere. Thus, the threat that the Plaintiff's rights will also be infringed within the territorial jurisdiction of this Hon'ble Court is imminent and real. Furthermore, the dynamic effect of violation of the Plaintiff's rights by the Defendant is felt within the territorial limits of the Hon'ble Court. On account of the aforesaid it is abundantly clear that a substantial and integral part of the cause of action has also arisen within the territorial jurisdiction of this Hon'ble Court."

17.2 The plaintiff is, therefore, contending that this Court has territorial jurisdiction to entertain the suit, under Section 134(2) of the Trade Marks Act, 1999 (hereinafter referred to as "the Trade Marks Act"), Section 62(2) of the Copyright Act, 1957 (hereinafter referred to as "the Copyright Act"), as well as Section 20 of the CPC, on the following premises:

Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 12 of 54 Signing Date:16.10.2020 17:36:36

(i) The office of the plaintiff is located within the territorial jurisdiction of this Court, and the plaintiff carries on its business within such jurisdiction. The defendant does not dispute this.

(ii) The defendant carries on business at Beetal House, 3rd Floor, 99 Madangir, Behind Local Shopping Centre, Near Dada Harsukhdas Mandir, New Delhi-110062 (hereinafter referred to as "the Beetal House address"). This address is also shown as the contact address, on the defendant's website.

(iii) The Memorandum of Association of the defendant, in its "Main Objects", states that it seeks to establish and carry on its business in India or elsewhere. A real and imminent threat, of infringement of the plaintiff's rights, within the territorial jurisdiction of this Court, therefore, exists.

(iv) It was apprehended that the defendant would soon launch its products, bearing the allegedly infringing label, within the territorial jurisdiction of this Court.

(v) The "dynamic effect" of violation of the plaintiff's rights by the defendant was felt within the territorial limits of this Court.

17.3 Additionally, Mr. Akhil Sibal, learned Senior Counsel for the plaintiff, submits that, on its website, the plaintiff has advertised that it was establishing a modern distillery at District Sikar, "located at 15 Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 13 of 54 Signing Date:16.10.2020 17:36:36 KM off the main Delhi-Jaipur Highway near Shahpura at a distance of approx. 220 KM from Delhi and 70 KM from Jaipur". Proximity to Delhi was, therefore, one of the main features highlighted in this advertisement.

17.4 Mr. Sibal also relied on two earlier decisions, of Division Benches of this Court, emanating from suits instituted by the present plaintiff, being Allied Blenders and Distillers v. R.K. Distilleries1 and Allied Blenders and Distillers v. Prag Distillery Pvt Ltd2, as well as the judgement of a learned Single Judge of this Court in Zenner International GMBH & Co. Kg v. Anand Zenner Company Pvt Ltd3. Additionally, reliance was placed on the judgements of this Court in World Wrestling Entertainment Inc. v. Reshma Collections4 and Burger King Corporation v. Techchand Shewakramani5. The judgements in Allied Blenders and Distillers v. R.K. Distilleries1 and Allied Blenders and Distillers v. Prag Distillery Pvt Ltd2, it is pointed out, rule that, while examining the issue of territorial jurisdiction at the initial stage, the Court is required to proceed on demurrer, treating the submissions, in the plaint, as unrebutted. These decisions, the plaintiff further points out, took into consideration the judgements of the Supreme Court in Indian Performing Rights Society Ltd v. Sanjay Dalia6 (hereinafter referred to as "IPRS"), and of this Court in 1 2017 (69) PTC 493 (Del) 2 2017 SCC OnLine Del 7225 3 2018 (73) PTC 618 (Del) 4 2014 SCC OnLine Del 2031 5 2018 SCC OnLine Del 10881 6 (2015) 10 SCC 161 Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 14 of 54 Signing Date:16.10.2020 17:36:36 Ultra Home Construction Pvt Ltd v. Purushottam Kumar Choubey7 (on which the defendant relies).

17.4 Responding to the submissions of Mr. Nayar and Mr. Sibal, learned Senior Counsel appearing for the plaintiff, Mr. Rashmin Khandekar, learned Counsel for the defendant seeks to distinguish the judgements of this Court, in Allied Blenders and Distillers v. R.K. Distilleries1 and Allied Blenders and Distillers v. Prag Distillery Pvt Ltd2, as well as the judgements in World Wrestling Entertainment Inc.4 and Burger King Corporation5 on the ground that they have been rendered in the context of Order VII Rule 10 of the CPC, the considerations governing which are totally different from those which govern applications under Order XXXIX. The stipulation that, while examining the issue of territorial jurisdiction at the initial stage, the Court is required to proceed on the basis of demurrer, according to Mr. Khandekar, may apply to Order VII Rule 10, but would not apply to an application under Order XXXIX of the CPC. Mr. Khandekar has pressed, into service, the judgement of the Supreme Court in Dhodha House v. S. K. Maingi8, to contend that the pre-conditions, for existence of territorial jurisdiction in cases such as this, as set out in the said decision, have not been pleaded by the plaintiff.

17.5 Mr. Khandekar submits that, in its judgement in Dhodha House4, the Supreme Court has examined the scope and ambit of the expression "carry on business", as contained in Section 134 of the Trade Marks Act, as well as Section 62 of the Copyright Act, and has 7 2016 SCC OnLine Del 376 8 (2006) 9 SCC 41 Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 15 of 54 Signing Date:16.10.2020 17:36:36 held that the mere sale, of goods manufactured by a party, at a particular place, did not amount to "carrying on business" at that place. In the said decision, submits Mr. Khandekar, the Supreme Court has clarified that the mere presence of a party, at a particular location, is insufficient to sustain jurisdiction. It cannot, therefore, in Mr. Khandekar's submission, be said that the plaintiff "carries on business", within the territorial jurisdiction of this Court. Apropos Section 134, Mr. Khandekar further submits that the existence of a subordinate/branch office of the plaintiff, located at C-56, Shivar Area, Near Sodani Sweets, Bapu Nagar, Jaipur, resulted in clear and complete ouster of the jurisdiction of this Court in the present case. It was further submitted that, in Dhodha House4, the Supreme Court had held that a party could either be carrying out business at its principal place of business, or at the place where it had a subordinate office, and not in both places.

17.6 Mr. Khandekar has also castigated the reliance, by learned Senior Counsel for the plaintiffs, on the Beetal House address, as justifying the invocation of the territorial jurisdiction of this Court, by submitting that the said address was of the Registrar, who, in accordance with the provisions of the Depositories Act, 1996, read with the Companies (Prospectors and Allotment of Securities) Rules, 2014, was to be contacted in the case of transfer of shares, etc. Mr. Khandekar submits that the Beetal House address was not, as the plaintiff seeks to contend, a "contact address" of the plaintiff. The defendant was, in fact, carrying on business only within the state of Rajasthan. None of its products were manufactured or sold anywhere Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 16 of 54 Signing Date:16.10.2020 17:36:36 outside the state, either by itself or through any of its authorised representatives. The requisite licenses/approvals, for its liquor business, had been obtained, by the defendant, from the Excise Commissioner, Government of Rajasthan, and were applicable only within the territory of the said State.

17.6 Mr. Khandekar relies, further, on the judgement of this Court in Banyan Tree Holding (P) Ltd v. A. Murali Krishna Reddy9, to contend that the mere availability, or accessibility, of the website of the defendant, from any part of the country, was not enough to confer jurisdiction on this Court to entertain the present proceedings. Besides, he submits, this contention has been advanced without any pleadings in support thereof. Apropos the plaintiff's contention, that it had a "real apprehension", of infringement, by the defendant, of the plaintiff's trademark and copyright, within the territorial jurisdiction of this Court, Mr. Khandekar submits that the apprehension could not be regarded as "real". Mr. Khandekar draws attention to the law relating to threat perception in quia timet actions such as the present, as enunciated in K. Narayanan v. S. Murali10. Assuming, arguendo, that such an apprehension could reasonably be said to exist, Mr. Khandekar points out that this apprehension would cover the entire country and that, in such cases, this Court had, in its decision in Ultra Home Construction Pvt Ltd6, held that jurisdiction would vest, in that Court, within the jurisdiction of which the principal office of the defendant was situated, to the exclusion of other Courts. Mr. Khandekar also places reliance, in this context, on the judgements of 9 2009 SCC OnLine Del 3780 10 (2008) 10 SCC 479 Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 17 of 54 Signing Date:16.10.2020 17:36:36 this Court in Shree Nath Heritage Liquor Ltd v. Octaga Green Power & Sugar Co. Ltd11 and Jay Engineering Works Ltd v. Ramesh Agrawal12. This decision, additionally, he submits, holds that a cause of action cannot be created by clever drafting, for which proposition he places reliance, additionally, on the judgement of the Supreme Court in T. V. Arivanandam v. T. V. Satyapal13 and of this Court in United Phosphorus Ltd v. Ajay Garg14.

17.7 Mr. Khandekar has submitted, further, that the plaintiff's plea that it was feeling the "dynamic effect", of the defendant's actions, in Delhi, was merely "clutching at straws", and could not justify the invocation of the territorial jurisdiction of this Court. Mr. Khandekar has also pressed, into service, the principle of forum non conveniens. In any event, he submits, as the issue of jurisdiction is highly contested and debatable, no case for grant of ad interim relief exists.

17.8 Learned Senior Counsel for the plaintiff submits, in rejoinder, that the judgements, on which Mr. Khandekar seeks to rely, are all distinguishable. Apropos the decisions of this Court in Allied Blenders and Distillers v. R.K. Distilleries1 and Allied Blenders and Distillers v. Prag Distillery Pvt Ltd2, it is pointed out that , despite the fact that the defendants, in both the cases, were located in Andhra Pradesh, and neither had any office, nor carried on any business , in Delhi, this Court assumed jurisdiction. Ultra Home Construction Pvt Ltd7, it is pointed out, dealt with a defendant who had no office in 11 2017 SCC OnLine Del 9137 12 135 (2006) DLT 666 13 (1977) 4 SCC 467 14 2015 (63) PTC 188 (Del) : 2015 SCC OnLine Del 9873 Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 18 of 54 Signing Date:16.10.2020 17:36:36 Delhi, and was situated only in Jharkhand. Moreover, Section 20 of the CPC never came up for consideration in the said case, which was restricted to Section 134 of the Trademarks Act and Section 62 of the Copyrights Act. This, the plaintiff points out, was noticed in the subsequent decision in Burger King Corporation5. In IPRS6, both plaintiff and defendant were located in Bombay, with the defendant having no office in Delhi, unlike the present case. This judgement, too, did not concern itself with Section 20 of the CPC, but restricted its consideration to Sections 134 of the Trademarks Act and Section 62 of the Copyrights Act. Shree Nath Heritage Liquor Ltd11 concerned a plaintiff whose business was confined to Rajasthan, with the defendants based only in Maharashtra and Goa, with no place or office of business in New Delhi, unlike the present case, where the plaintiff and the defendant were carrying on business in New Delhi. Dhodha House8, similarly, dealt with Section 62(2) of the Copyright Act, in a situation in which the defendant was not carrying on business within the territorial jurisdiction of the Court where the suit was filed. The plaintiff has submitted, further, that, as the website of the defendant reflected that it had an office in New Delhi, and not in Mumbai, the contention, of the defendant, that the present suit should have been filed in Mumbai, was misleading.

17.9 Finally, it is contended, by the plaintiff in rejoinder, that the plaintiff, as the dominus litis, was entitled to choose its forum, among those having territorial jurisdiction to deal with the matter. The principle of forum non conveniens, it is submitted, has no application to civil suits, for which purpose reliance is placed on the judgement of Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 19 of 54 Signing Date:16.10.2020 17:36:36 a Division Bench of this Court in Horlicks Ltd v. Heinz India Pvt Ltd15.

Analysis

18. Section 134 of the Trade Marks Act, Section 62 of the Copyrights Act and Section 20 of the CPC, read thus:

Section 134, Trade Marks Act

134. Suit for infringement, etc., to be instituted before District Court. -

(1) No suit -

(a) for the infringement of a registered trade mark; or

(b) relating to any right in a registered trade mark; or

(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.

(2) For the purpose of clauses (a) and (b) of sub- section (1), a "District Court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are 15 164 (2009) DLT 539 : 2010 (42) PTC 156 (Del) Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 20 of 54 Signing Date:16.10.2020 17:36:36 more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain.

Explanation. - For the purposes of sub-section (2), "person" includes the registered proprietor and the registered user Section 62, Copyright Act

62. Jurisdiction of court over matters arising under this Chapter. -

(1) Every suit or other civil proceeding 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 proceeding, the person instituting the suit or other 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."

Section 20, CPC

20. Other suits to be instituted where defendants reside or cause of action arises. -

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 Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 21 of 54 Signing Date:16.10.2020 17:36:36 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 the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain, provided 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 works 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.

                                           Illustrations
                                           (a)    A is a tradesman in Calcutta, B carries on

business in Delhi. B, by his agent in Calcutta, buys goods of A and requests A to deliver them to the East Indian Railway Company. A delivers the goods accordingly in Calcutta. A may sue B for the price of the goods either in Calcutta, where the cause of action has arisen, or in Delhi, where B carries on business.

(b) A resides at Simla, B at Calcutta and C at Delhi. A, B and C being together at Benaras, B and C make a joint promissory note payable on demand, and deliver it to A. A may sue B and C at Benaras, where the cause of action arose. He may also sue them at Calcutta, where B resides, or at Delhi, where C resides; but in each of these cases, if the non-resident defendant objects, the suit cannot proceed without the leave of the Court.

19. Before adverting to any other decision on the point, I deem it appropriate to deal, in the first instance, with the judgements of the Division Bench of this Court, emanating from the two earlier suits instituted by the plaintiff itself, namely Allied Blenders and Distillers Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 22 of 54 Signing Date:16.10.2020 17:36:36 v. R.K. Distilleries1 and Allied Blenders and Distillers v. Prag Distillery Pvt Ltd2. Both these decisions examined the aspect of territorial jurisdiction, in the context of a trademark infringement suit, in the backdrop of Order VII Rule 10 of the CPC, as contradistinguished with Order XXXIX Rules 1 and 2. Mr. Khandekar seeks to discount the applicability, of these decisions to the present case, on the basis of the following disclaimer [from Allied Blenders and Distillers v. R.K. Distilleries1, and which has been echoed, almost verbatim, in Allied Blenders and Distillers v. Prag Distillery Pvt Ltd2, both judgements having been authored by Badar Durrez Ahmed, J., as he then was]:

"We must make it clear that the considerations with regard to territorial jurisdiction in the context of Order VII Rule 10, CPC are entirely different from those in the context of an application under Order XXXIX Rules 1 & 2, CPC or in the context of an issue framed in the suit with regard to territorial jurisdiction. While in the backdrop of Order VII Rule 10, it is only the averments contained in the plaint that have to be seen in the case of an application for the grant of interim relief under Order XXXIX Rules 1 & 2, the contentions of the defendant in the reply to this application as also those contained in the written statement are required to be examined to arrive at a prima facie view. So, while in the case of an Order VII Rule 10 CPC application, the issue of jurisdiction is decided on the basis of what is stated in the plaint and, that too, after assuming the statements to be correct, an application under Order XXXIX Rules 1 & 2, CPC requires the examination of the contentions of the defendants that may be contained in the written statement and / or the reply to the application as also the other material which may be placed by the defendant before the court. Here, there is no question of considering the pleas of the plaintiff by way of a demurrer. Furthermore, the standards would be higher when an issue with regard to territorial jurisdiction is to be finally decided in the course of trial of the suit. Thus, while for the purposes of an examination under Order VII Rule 10, CPC, Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 23 of 54 Signing Date:16.10.2020 17:36:36 the court may come to the conclusion that it has territorial jurisdiction, this would not come in the way of the defendant in raising a question as to territorial jurisdiction, both when the issue of temporary injunction under Order XXXIX Rules 1 & 2, CPC is being considered and when an issue as to territorial jurisdiction is being decided in the course of trial of the suit. To put it differently, while a plaintiff may succeed in demonstrating, for the purposes of Order VII Rule 10 CPC that this court has territorial jurisdiction and that the plaint ought not to be returned, he may fail in obtaining an order of interim injunction on the ground that the plaintiff's entitlement is itself shaky because the issue of territorial jurisdiction is highly debatable and prima facie not tenable. Therefore, the decision of the court in putting down an objection of the defendant and in rejecting the defendant's prayer for return of the plaint under Order VII Rule 10, CPC, would not come in the way of the defendant raising the question of territorial jurisdiction, both as an objection to the grant of an interim injunction as also at the time of decision of the issue of territorial jurisdiction, if framed, at the time of trial of the suit."

(Emphasis supplied)

20. In the above paragraph, this Court has, undoubtedly, contradistinguished the considerations which govern a prayer for interim injunction, under Order XXXIX Rules 1 and 2, with those which govern an application under Order VII Rule 10, of the CPC. This distinction, however, does not seriously impact the consideration of the present prayer, as this order is not disposing of the application, of the plaintiff, under Order XXXIX Rules 1 and 2, CPC, but is merely considering its prayer for ad interim relief, pending consideration and disposal of the application for interim relief, under Order XXXIX Rules 1 and 2. There can be no question, therefore, of this Court, at this stage, being guided by the averments in the written statement, filed by the plaintiff. Indeed, till the time orders were Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 24 of 54 Signing Date:16.10.2020 17:36:36 reserved in this matter, and for a considerable time thereafter, neither written statement, nor response to the present IA, were brought on record by the defendant, though, I am informed, they are now on record.

21. Moreover, even in the case of an application under Order XXXIX Rules 1 and 2, CPC, this Court has, in the above decisions in Allied Blenders and Distillers v. R.K. Distilleries1 and Allied Blenders and Distillers v. Prag Distillery Pvt Ltd2, clarified that, even if no case, for returning the suit, under Order VII Rule 10, on the ground of want of territorial jurisdiction, is made out, the plaintiff may, nevertheless, fail in obtaining an order of interim injunction, if the defendant is able to establish that the plaintiff's entitlement is itself shaky "because the issue of territorial jurisdiction is highly debatable and prima facie not tenable". These words occur, verbatim, in both the judgements. If, therefore, the issue of territorial jurisdiction is "highly debatable and prima facie not tenable", interlocutory injunction may justifiably be refused.

22. It is important to emphasise this position, as Mr. Khandekar has, during the course of arguments as well as in his written submissions, advanced the contention that, as the issue of territorial jurisdiction is highly debatable, no case for grant of ad interim injunction is made out. The decisions in Allied Blenders and Distillers v. R.K. Distilleries1 and Allied Blenders and Distillers v. Prag Distillery2 - specifically, the paras extracted hereinabove - reveal that this is not the correct legal position. The defendant, in Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 25 of 54 Signing Date:16.10.2020 17:36:36 order to set up territorial jurisdiction as a ground to oppose the prayer for interim injunction, would have to establish that the issue of territorial jurisdiction as both "highly debatable" and "prima facie not tenable". The use of the words "prima facie not tenable", by the Division Bench of this Court in these decisions, indicates that the onus would be on the defendant to establish, prima facie, that the plaint is not amenable to the territorial jurisdiction of this Court - or, at the least, that the contentions, of the plaintiff, for invoking the territorial jurisdiction of this Court are, prima facie, not acceptable.

23. A suit is either within jurisdiction, or without jurisdiction. A suit does not have two faces, one for being shown to Order VII Rule 10, and the other for display before Order XXXIX Rules 1 and 2. It is important to understand why this Court has, in its aforesaid decisions in Allied Blenders and Distillers v. R.K. Distilleries1 and Allied Blenders and Distillers v. Prag Distillery Pvt Ltd2, sought to distinguish the situation that obtains under Order XXXIX Rules 1 and 2, vis-à-vis Order VII Rule 10, in the matter of territorial jurisdiction. This Court has not held that the suit may be within jurisdiction for the purposes of one provision, and without jurisdiction for the purposes of the other. What it has stated, instead, is that the adjudication of an application under Order VII Rule 10 proceeds on a demurrer, whereas an application under Order XXXIX Rules 1 and 2 is to be decided after considering the averments in the written statement of the defendant. Even though a suit may appear to be within jurisdiction, based on the averments in the plaint and, therefore, a challenge under Order VII Rule 10, may fail, the written statement, which would also Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 26 of 54 Signing Date:16.10.2020 17:36:36 be taken into account while adjudicating on the application under Order XXXIX Rules 1 and 2, may disclose that, in fact, the claim, of the plaintiff, that the suit is within jurisdiction is "highly debatable and prima facie not tenable". In that event, the plaintiff may not succeed in obtaining interim relief, as prayed in the application under Order XXXIX Rules 1 and 2. That is all that the afore-extracted passage, from Allied Blenders and Distillers v. R.K. Distilleries1 says, and it would be hazardous to read anything more into it.

24. It is not, therefore, as Mr. Khandekar would seek to urge, that the observations and findings, in Allied Blenders and Distillers v. R.K. Distilleries1 and Allied Blenders and Distillers v. Prag Distillery Pvt Ltd2, are irrelevant for the present case. I have, with me, only the plaint, and no written statement, of the defendant, is on record. As such, as in the case of Allied Blenders and Distillers v. R.K. Distilleries1 and Allied Blenders and Distillers v. Prag Distillery Pvt Ltd2, I have to proceed on the basis of the averments in the plaint, for the purposes of considering the prayer for ad interim relief. To that extent, this case is at par with Allied Blenders and Distillers v. R.K. Distilleries1 and Allied Blenders and Distillers v. Prag Distillery Pvt Ltd2.

25. The factors, which would determine the sustainability of an objection, by the defendants, to the territorial jurisdiction of this Court to adjudicate on the plaint, remain the same, whether the Court is examining the objection in the course of adjudication of an application under Order VII Rule 10, or under Order XXXIX Rules 1 and 2, of Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 27 of 54 Signing Date:16.10.2020 17:36:36 the CPC. What differs, is the material that is to be taken into account, by the Court, while adjudicating the application.

26. Allied Blenders and Distillers v. R.K. Distilleries1 and Allied Blenders and Distillers v. Prag Distillery Pvt Ltd2 rely on the judgement of the Supreme Court in IPRS6, the following passages, from which, are relevant:

"14. Considering the very language of Section 62 of the Copyright Act and Section 134 of the Trade Marks Act, 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 also as is being done in the instant cases. In our opinion, the expression "notwithstanding anything contained in the Code of Civil Procedure" does not oust the applicability of the provisions of Section 20 of the Code of Civil Procedure and it is clear that additional remedy has been provided to the plaintiff so as to file a suit where he is residing or carrying on business, etc. as the case may be. Section 20 of the Code of Civil Procedure enables a plaintiff to file a suit where the defendant resides or where cause of action arose. Section 20(a) and Section 20(b) usually provides the venue where the 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. The Explanation to Section 20 CPC has been added to the effect that 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 subordinate office at such place. Thus, "corporation" can be sued at a place having its sole or principal office and where cause of action wholly or in part, arises at a place where it has also a subordinate office at such place.

***** Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 28 of 54 Signing Date:16.10.2020 17:36:36

16. "Corporation" in the Explanation to Section 20 CPC would mean not only the statutory corporation but companies registered under the Companies Act, as held by this Court in Patel Roadways Ltd. v. Prasad Trading Co., (1991) 4 SCC 270 and New Moga Transport Co. v. United India Insurance Co. Ltd., (2004) 4 SCC 677. The domicile of the company is fixed by the situation of its principal place of business as held in Jones v. Scottish Accident Insurance Co. Ltd., (1886) LR 17 QBD 421 (DC). In the case of companies registered under the Companies Act, the controlling power is, as a fact, generally exercised at the registered office, and that office is therefore not only for the purposes of the Act, but for other purposes, the principal place of business, as held in Watkins v. Scottish Imperial Insurance Co., (1889) LR 23 QBD 285 (DC). A company may have subordinate or branch offices in fifty different jurisdictions and it may be sued in any one of such jurisdictions in respect of a cause of action arising there, has been held in Peoples' Insurance Co. Ltd. v. Benoy Bhusan Bhowmik, AIR 1943 Cal 199, Home Insurance Co. Ltd. v. Jagatjit Sugar Mills Co. Ltd., AIR 1952 Punj 142 and Prag Oil Mills Depot v. Transport Corpn. of India, (1978) SCC OnLine Ori 72 : AIR 1978 Ori 167.

17. Accrual 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 CPC recognises the territorial jurisdiction of the courts 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, as held by this Court in Rajasthan High Court Advocates' Assn. v. Union of India, (2001) 2 SCC 294 : AIR 2001 SC 416. Thus, a plaintiff can also file a suit where the cause of action wholly or in part arises.

*****

19. 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 Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 29 of 54 Signing Date:16.10.2020 17:36:36 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 CPC 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. Where the corporation is having ordinary residence/principal place of business and cause of action has also arisen at that place, it has to institute a suit at the said place and not at other places. The provisions of Section 62 of the Copyright Act and Section 134 of the Trade Marks Act never intended to operate in the field where the plaintiff is having its principal place of business at a particular place and the cause of action has also arisen at that place so as to enable it to file a suit at a distant place where its subordinate office is situated though at such place no cause of action has arisen. Such interpretation would cause great harm and would be juxtaposed to the very legislative intendment of the provisions so enacted.

*****

21. 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 that the impediment imposed under Section 20 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 the 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 the plaintiff is having branch offices, etc.

22. 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 CPC or any other law for the time being in force", emphasise that the Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 30 of 54 Signing Date:16.10.2020 17:36:36 requirement of Section 20 CPC 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 our 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 institute 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 judgments, 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.

*****

24. 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 the defendant a remedy and harass him by dragging to distant place...

*****

25. Considering the first aspect of the aforesaid principle, the common law which was existing before the provisions of law were passed was Section 20 CPC. It did not provide for the plaintiff to institute a suit except in accordance with the provisions contained in Section 20. The defect in existing law was inconvenience/deterrence caused to the authors suffering from financial constraints on account of having to vindicate their intellectual property rights at a place far away from their residence or the place of their business. The said mischief or defect in the existing law which did not provide for the plaintiff to sue at a place where he ordinarily resides or carries on business or personally works for gain, was sought to be removed. Hence, the remedy was provided by incorporating the provisions of Section 62 of the Copyright Act. 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 Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 31 of 54 Signing Date:16.10.2020 17:36:36 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 an unconnected place as compared to a place where the 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.

26. 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 lawmakers that both the parties would be made to travel to a distant place in spite of the fact that the plaintiff has a remedy of suing at the place where the cause of action has arisen where he is having head office/carrying on business, etc. The provisions of the Copyright Act and the Trade Marks Act provide for the authors/trade mark holders to sue at their ordinary residence or 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 Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 32 of 54 Signing Date:16.10.2020 17:36:36 understood in the manner that suit can be filed where the plaintiff ordinarily resides or carries on business or personally works for gain. Discussion was to provide remedy to the plaintiff at convenient place; he is not to travel away. Debate was not to enable the plaintiff to take the defendant to farther place, leaving behind his place of residence/business, etc. The right to remedy given is not unbridled and is subject to the prevention of abuse of the aforesaid provisions, as discussed above. Parliament never intended that the subject provisions 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 the plaintiff is carrying on the business at Mumbai and cause of action has arisen in Mumbai. The plaintiff is having branch offices at Kanyakumari and also at Port Blair, if interpretation suggested by the 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.

*****

36. This Court in Sonic Surgical v. National Insurance Company Ltd., (2010) 1 SCC 135 : (2010) 1 SCC (Civ) 28 has also laid down law to the same effect and has discussed the term "branch office" used in Section 17(2) of the Consumer Protection Act, 1986 in the context of cause of action. Section 17(2) of the said Act reads thus: (SCC p. 138, para 7) "7. ... '17. (2) A complaint shall be instituted in a State Commission within the limits of whose jurisdiction --

(a) the opposite party or each of the opposite parties, where there are more than one, at the time of the institution of the complaint, actually and voluntarily resides or carries on business or has a branch office or personally works for gain; or Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 33 of 54 Signing Date:16.10.2020 17:36:36

(b) any of the opposite parties, where there are more than one, at the time of the institution of the complaint, actually and voluntarily resides, or carries on business or has a branch office or personally works for gain, provided that in such case either the permission of the State Commission is given or the opposite parties who do not reside or carry on business or have a branch office or personally works for gain, as the case may be, acquiesce in such institution; or

(c) the cause of action, wholly or in part, arises.'"

This Court while interpreting the provision held that the term "branch office" as used in the amended Section 17(2)(b) has to be interpreted to mean only that branch office where the cause of action has arisen. Thus, the court departed from the plain and literal meaning of the words of Section 17(2)(b) of the Consumer Protection Act in order to avoid absurdity. The decision in Sonic Surgical (2010) 1 SCC 135 : (2010) 1 SCC (Civ) 28 has been approved by this Court in State of M.P. v. Narmada Bachao Andolan [(2011) 7 SCC 639 :

(2011) 3 SCC (Civ) 875 inasmuch as this Court has observed that in case the natural meaning leads to mischievous consequences, it must be avoided by accepting other permissible construction.

*****

38. The respondents have placed reliance on Patel Roadways Ltd. v. Prasad Trading Co., (1991) 4 SCC 270 in which this Court has considered the provisions of Section 20 CPC. This Court has observed thus: (SCC pp. 277-78, paras 12-13) "12. We would also like to add that the interpretation sought to be placed by the appellant on the provision in question renders the Explanation totally redundant. If the intention of the legislature was, as is said on their behalf, that a suit against a corporation could be instituted either at the place of its sole or principal office (whether or not the corporation carries on Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 34 of 54 Signing Date:16.10.2020 17:36:36 business at that place) or at any other place where the cause of action arises, the provisions of clauses (a), (b) and (c) together with the first part of the Explanation would have completely achieved the purpose. Indeed the effect would have been wider. The suit could have been instituted at the place of the principal office because of the situation of such office (whether or not any actual business was carried on there).

Alternatively, a suit could have been instituted at the place where the cause of action arose under clause (c) (irrespective of whether the corporation had a subordinate office in such place or not). This was, therefore, not the purpose of the Explanation. The Explanation is really an Explanation to clause (a). It is in the nature of a clarification on the scope of clause

(a) viz. as to where the corporation can be said to carry on business. This, it is clarified, will be the place where the principal office is situated (whether or not any business actually is carried on there) or the place where a business is carried on giving rise to a cause of action (even though the principal office of the corporation is not located there) so long as there is a subordinate office of the corporation situated at such place. The linking together of the place where the cause of action arises with the place where a subordinate office is located clearly shows that the intention of the legislature was that, in the case of a corporation, for the purposes of clause (a), the location of the subordinate office, within the local limits of which a cause of action arises, is to be the relevant place for the filing of a suit and not the principal place of business. If the intention was that the location of the sole or principal office as well as the location of the subordinate office (within the limits of which a cause of action arises) are to be deemed to be places where the corporation is deemed to be carrying on business, the disjunctive 'or' will not be there. Instead, the second part of the Explanation would have read 'and, in respect of any cause of action arising at any place where it has a subordinate office, also at such place'.

13. As far as we can see the interpretation which we have placed on this section does not create any practical or undue difficulties or disadvantage either to Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 35 of 54 Signing Date:16.10.2020 17:36:36 the plaintiff or a defendant corporation. It is true that, normally, under clauses (a) to (c), the plaintiff has a choice of forum and cannot be compelled to go to the place of residence or business of the corporation and can file a suit at a place where the cause of action arises. If a corporation desires to be protected from being dragged into litigation at some place merely because a cause of action arises there it can save itself from such a situation by an exclusion clause as has been done in the present case. The clear intendment of the Explanation, however, is that, where the corporation has a subordinate office in the place where the cause of action arises, it cannot be heard to say that it cannot be sued there because it does not carry on business at that place. It would be a great hardship if, in spite of the corporation having a subordinate office at the place where the cause of action arises (with which in all probability the plaintiff has had dealings), such plaintiff is to be compelled to travel to the place where the corporation has its principal place. That place should be convenient to the plaintiff; and since the corporation has an office at such place, it will also be under no disadvantage. Thus the Explanation provides an alternative locus for the corporation's place of business, not an additional one."

(emphasis in original) This Court has considered while interpreting the provision of Section 20 CPC that no practical or undue difficulties or disadvantage either to the plaintiff or the defendant corporation could be caused. It has also been observed that it would be a great hardship if in spite of the corporation having a subordinate office at a place where the cause of action arises, such plaintiff is compelled to travel where the corporation has its principal office. That place should be convenient to the plaintiff and the corporation has an office at such place, will also be under no disadvantage.

39. Under clauses (a) to (c) of Section 20 CPC, a plaintiff has a choice of forum and cannot be compelled to go to a place of business or residence of the defendant and can file a suit where the cause of action arises. The intendment of the Explanation has also been taken into consideration by this Court in New Moga Transport Co. v. United India Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 36 of 54 Signing Date:16.10.2020 17:36:36 Insurance Co. Ltd., (2004) 4 SCC 677 thus: (SCC pp. 681- 82, paras 9-10) "9. Normally, under clauses (a) to (c) the plaintiff has a choice of forum and cannot be compelled to go to the place of residence or business of the defendant and can file a suit at a place where the cause of action arises. If the defendant desires to be protected from being dragged into a litigation at some place merely because the cause of action arises there it can save itself from such a situation by an exclusion clause. The clear intendment of the Explanation, however, is that where the corporation has a subordinate office in the place where the cause of action arises it cannot be heard to say that it cannot be sued there because it does not carry on business at that place. Clauses (a) and (b) of Section 20 inter alia refer to a court within the local limits of whose jurisdiction the defendant inter alia 'carries on business'. Clause (c) on the other hand refers to a court within the local limits of whose jurisdiction the cause of action wholly or in part arises.

10. On a plain reading of the Explanation to Section 20 CPC it is clear that the Explanation consists of two parts: (i) before the word 'or' appearing between the words 'office in India' and the words 'in respect of', and (ii) the other thereafter. The Explanation applies to a defendant which is a corporation, which term would include even a company. The first part of the Explanation applies only to such corporation which has its sole or principal office at a particular place. In that event, the court within whose jurisdiction the sole or principal office of the company is situate will also have jurisdiction inasmuch as even if the defendant may not actually be carrying on business at that place, it will be deemed to carry on business at that place because of the fiction created by the Explanation. The latter part of the Explanation takes care of a case where the defendant does not have a sole office but has a principal office at one place and has also a subordinate office at another place. The expression 'at such place' appearing in the Explanation and the word 'or' which is disjunctive clearly suggest that if the case Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 37 of 54 Signing Date:16.10.2020 17:36:36 falls within the latter part of the Explanation it is not the court within whose jurisdiction the principal office of the defendant is situate but the court within whose jurisdiction it has a subordinate office which alone has the jurisdiction 'in respect of any cause of action arising at any place where it has also a subordinate office'."

40. In Exphar Sa v. Eupharma Laboratories Ltd., (2004) 3 SCC 688, this Court had considered the provisions contained in Section 62 of the Copyright Act and has observed that the word "include" shows that the jurisdiction for the purpose of Section 62 is wider than that of the court as prescribed under the Code of Civil Procedure, 1908. This Court has laid down thus: (SCC p. 693, paras 12-13) "12. We would like to emphasise the word 'include'. This shows that the jurisdiction for the purposes of Section 62 is wider than that of the court as prescribed under the Code of Civil Procedure, 1908. The relevant extract of the report of the Joint Committee published in the Gazette of India dated 23-11-1956 which preceded and laid the foundation for Section 62(2) said:

'In the opinion of the Committee many authors are deterred from instituting infringement proceedings because the court in which such proceedings are to be instituted is situated at a considerable distance from the place of their ordinary residence. The Committee feels that this impediment should be removed and the new sub-section (2) accordingly provides that infringement proceedings may be instituted in the District Court within the local limits of whose jurisdiction the person instituting the proceedings ordinarily resides, carries on business, etc.'

13. It is, therefore, clear that the object and reason for the introduction of sub-section (2) of Section 62 was not to restrict the owners of the copyright to exercise their rights but to remove any impediment from their doing so. Section 62(2) cannot be read as Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 38 of 54 Signing Date:16.10.2020 17:36:36 limiting the jurisdiction of the District Court only to cases where the person instituting the suit or other proceeding, or where there are more than one such persons, any of them actually and voluntarily resides or carries on business or presently works for gain. It prescribes an additional ground for attracting the jurisdiction of a court over and above the 'normal' grounds as laid down in Section 20 of the Code."

This Court held therein that the Delhi Court had jurisdiction since the plaintiff had averred that it has its registered office in Delhi and the cease and desist notice was also received by the appellants at Delhi. The decision in Exphar Sa (2004) 3 SCC 688, does not oust the applicability of the provisions of Section 20 of the Code of Civil Procedure as this Court has laid down that Section 62 has prescribed an additional ground other than the normal ground prescribed in Section 20 CPC. The question posed before us in the instant cases is different. In our considered opinion, the decision in Exphar Sa (2004) 3 SCC 688, buttresses the interpretation adopted by us.

41. Reliance has also been placed on decision in Dhodha House v. S.K. Maingi, (2006) 9 SCC 41 in which this Court considered the question about the maintainability of the composite suit for infringement of the Copyright Act, 1957 and the Trade and Merchandise Marks Act, 1958. The Trade Marks Act, 1999 was also considered. This Court has laid down that composite suit may be maintainable under the Copyright Act and the Trade and Merchandise Act, 1958 but that may not be relevant for the purpose of determining the question of a forum where a suit can be instituted. In case the court is not having jurisdiction under one of the Acts, merely by combining the causes of action, the jurisdiction cannot be conferred upon the court. In that context, this Court has observed thus: (SCC pp. 20 & 53-55, paras 20, 44 & 47) "20. The jurisdiction of the District Court to determine a lis under the 1957 Act as also the 1958 Act must, thus, be instituted where the whole or a part of cause of action arises. Sub-section (2) of Section 62 of the 1957 Act provides for an additional forum therefore in the following terms:

Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 39 of 54 Signing Date:16.10.2020 17:36:36

'62. (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 proceeding, the person instituting the suit or other 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.' Admittedly, no such additional forum had been created in terms of the provisions of the 1958 Act.

****

44. A cause of action in a given case both under the 1957 Act as also under the 1958 Act may be overlapping to some extent. The territorial jurisdiction conferred upon the court in terms of the provisions of the Code of Civil Procedure indisputably shall apply to a suit or proceeding under the 1957 Act as also the 1958 Act. Sub-section (2) of Section 62 of the 1957 Act provides for an additional forum. Such additional forum was provided so as to enable the author to file a suit who may not otherwise be in a position to file a suit at different places where his copyright was violated. Parliament while enacting the Trade and Merchandise Marks Act in the year 1958 was aware of the provisions of the 1957 Act. It still did not choose to make a similar provision therein. Such an omission may be held to be a conscious action on the part of Parliament. The intention of Parliament in not providing for an additional forum in relation to the violation of the 1958 Act is, therefore, clear and explicit. Parliament while enacting the Trade Marks Act, 1999 provided for such an additional forum by enacting sub-section (2) of Section 134 of the Trade Marks Act. The court shall not, it is well settled, readily presume the existence of jurisdiction of a court which was not conferred by the statute. For the purpose of attracting the jurisdiction of a court in terms Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 40 of 54 Signing Date:16.10.2020 17:36:36 of sub-section (2) of Section 62 of the 1957 Act, the conditions precedent specified therein must be fulfilled, the requisites wherefor are that the plaintiff must actually and voluntarily reside to carry on business or personally work for gain.

****

47. A corporation in view of Explanation appended to Section 20 of the Code would be deemed to be carrying on business inter alia at a place where it has a subordinate office. Only because its goods are being sold at a place would thus evidently not mean that it carries a business at that place."

(Emphasis supplied)

42. In Dhodha House v. S.K. Maingi, (2006) 9 SCC 41, the question which is posed before us did not come up for consideration and it has been observed that the Act provides for an additional forum. Such additional forum was provided so as to enable a plaintiff who may not be otherwise in a position to file a suit at different places where the copyright was violated. We have anxiously considered the aforesaid observations made and the object of the Act, we find that the interpretation made by us does not militate against the observations made by this Court in Dhodha House, (2006) 9 SCC 41, the precise question which is before us, was not involved in the aforesaid case. A decision is not to be construed like a statute nor by inferential process can it be assumed that this Court has decided the question also which is before this Court in the instant cases.

*****

52. 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 the 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 the cause of action, wholly or Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 41 of 54 Signing Date:16.10.2020 17:36:36 in part, has also arisen, he has to file a suit at that place, as discussed above."

(Emphasis supplied)

27. The following legal position, therefore, emerges from IPRS6:

(i) Section 62 of the Copyright Act, and Section 134 of the Trade Marks Act, provide for additional fora, before which a suit for infringement of copyright, or trademark, could be preferred, in addition to the fora before which such a claim could be laid under Section 20 of the CPC.


                                   (ii)    Section 20 of the CPC permits suits to be instituted
                                   where
                                           (a)    the defendants
                                                  (i)     reside, or
                                                  (ii)    carry on business, or
                                                  (iii)   personally work for gain, or
                                           (b)    the cause of action arises, in whole or in part.

(iii) Where the defendant is a Corporation, it is deemed to carry on business at its overall principal office in India.

                                   (iv)    If, however,
                                           (a)    the defendant does not have a sole office, but has a

principal office within the jurisdiction of one Court, and

(b) the cause of action has arisen within the jurisdiction of another Court, within whose jurisdiction the subordinate office of the defendant is situate, Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 42 of 54 Signing Date:16.10.2020 17:36:36 the suit would have to be preferred before such latter Court, and cannot be filed before the Court having territorial jurisdiction over the principal office of the defendant. [I may observe, here, that the absence of the word "also", before the words "at such place", as they figure in the Explanation to Section 20, CPC, vouchsafes this legal position, as enunciated by the Supreme Court. The two parts of the Explanation to Section 20, therefore, deal with two different eventualities. If the defendant is a Corporation, having a sole, or a principal office in India, it is deemed to carry on business at the place where such sole, or a principal office, is located. If, however, the defendant has more than one office, and the cause of action has arisen within the jurisdiction of a Court having territorial jurisdiction over a subordinate office of the defendant, the suit would have to be preferred before that Court, and cannot be filed before the Court having territorial jurisdiction over the principal office of the defendant, as no part of the cause of action has arisen within such jurisdiction. This aspect is also underscored in the following words, from para 19 of the report in Ultra Home Construction7:

"Clearly, on the basis of the averments in the plaint itself and in the backdrop of the observations in Dhodha House (supra), the appellant/plaintiff carries on business in Deogarh, Jharkhand. It may also carry on business at Delhi. But, because the cause of action has allegedly arisen in Deogarh, Jharkhand, and not in Delhi, the appellant/plaintiff cannot sue the defendants/respondents in Delhi in view of the decision in Sanjay Dalia (supra). Thus, this court does not have the territorial jurisdiction to entertain the suit."

(Emphasis supplied)] Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 43 of 54 Signing Date:16.10.2020 17:36:36

(v) Where original jurisdiction is vested in the High Court, Section 134 of the Trade Marks Act, or Section 62 of the Copyright Act, additionally permits the institution of suit, for infringement, before the High Court having jurisdiction over the plaintiff or, if there are more than one plaintiffs, any of the plaintiffs

(a) resides, or

(b) carries on business, or

(vi) "Cause of action" refers to the bundle of facts, which are required to be proved in order to grant relief to the plaintiff. It, therefore, refers not only to the act of infringement, but also the material facts on which the right is founded.

(vii) If the plaintiff is ordinarily resident, or has its principal place of business within the jurisdiction of one High Court, the suit has to be instituted before that High Court. Section 62 of the Copyright Act, and Section 134 of the Trade Marks Act, do not permit institution of the suit before another High Court, within whose jurisdiction the plaintiff may claim to have a subordinate or branch office. The purpose of Section 62 of the Copyright Act, and of Section 134 of the Trade Marks Act, is to facilitate the plaintiff, in filing the suit close to its principal place of business, and not to compel the defendant to defend the suit before other, distant, fora.

Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 44 of 54 Signing Date:16.10.2020 17:36:36

28. Mr. Khandekar has placed especial reliance on the following passage, from Dhodha House8 [rendered in the context of Section 20, CPC, as the Trade Marks Act, 1958, with which the Supreme Court was concerned in that case, did not contain any provision analogous to Section 134 of the Trade Marks Act, 1999]:

"46. The expression "carries on business" and the expression "personally works for gain" connote two different meanings. For the purpose of carrying on business only presence of a man at a place is not necessary. Such business may be carried on at a place through an agent or a manager or through a servant. The owner may not even visit that place. The phrase "carries on business" at a certain place would, therefore, mean having an interest in a business at that place, a voice in what is done, a share in the gain or loss and some control thereover. The expression is much wider than what the expression in normal parlance connotes, because of the ambit of a civil action within the meaning of Section 9 of the Code. But it is necessary that the following three conditions should be satisfied, namely, "(1) The agent must be a special agent who attends exclusively to the business of the principal and carries it on in the name of the principal and not a general agent who does business for anyone that pays him.

Thus, a trader in the mofussil who habitually sends grain to Madras for sale by a firm of commission agents who have an independent business of selling goods for others on commission, cannot be said to 'carry on business' in Madras. So a firm in England, carrying on business in the name of A.B. & Co., which employs upon the usual terms a Bombay firm carrying on business in the name of C.D. & Co., to act as the English firm's commission agents in Bombay, does not 'carry on business' in Bombay so as to render itself liable to be sued in Bombay.

(2) The person acting as agent must be an agent in the strict sense of the term. The manager of a joint Hindu family is not an 'agent' within the meaning of this condition.

Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 45 of 54 Signing Date:16.10.2020 17:36:36

(3) To constitute 'carrying on business' at a certain place, the essential part of the business must take place in that place. Therefore, a retail dealer who sells goods in the mofussil cannot be said to 'carry on business' in Bombay merely because he has an agent in Bombay to import and purchase his stock for him. He cannot be said to carry on business in Bombay unless his agent made sales there on his behalf. A Calcutta firm that employs an agent at Amritsar who has no power to receive money or to enter into contracts, but only collects orders which are forwarded to and dealt with in Calcutta, cannot be said to do business in Amritsar. But a Bombay firm that has a branch office at Amritsar, where orders are received subject to confirmation by the head office at Bombay, and where money is paid and disbursed, is carrying on business at Amritsar and is liable to be sued at Amritsar. Similarly a life assurance company which carries on business in Bombay and employs an agent at Madras who acts merely as a post office forwarding proposals and sending moneys cannot be said to do business in Madras. Where a contract of insurance was made at place 'A' and the insurance amount was also payable there, a suit filed at place 'B' where the insurance company had a branch office was held not maintainable. Where the plaintiff instituted a suit at Kozhikode alleging that its account with the defendant Bank at its Calcutta branch had been wrongly debited and it was claimed that that court had jurisdiction as the defendant had a branch there, it was held that the existence of a branch was not part of the cause of action and that the Kozhikode Court therefore had no jurisdiction. But when a company though incorporated outside India gets itself registered in India and does business in a place in India through its agent authorised to accept insurance proposals, and to pay claims, and to do other business incidental to the work of the agency, the company carries on business at the place of business in India."

(Emphasis supplied) Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 46 of 54 Signing Date:16.10.2020 17:36:36

29. That the afore-extracted passage, from Dhodha House8, constitutes an authoritative enunciation of the expression "carries on business", as used in Section 20 of the CPC, can hardly be gainsaid. Prima facie, this enunciation of the law would also apply to the said expression, as it figures in Section 62 of the Copyright Act, or Section 134 of the Trade Marks Act.

30. Having said that, however, it is also evident that the question of whether, applying the tests, delineated in the above passage, the defendant does, or does not, carry on business, at a particular place, is essentially a question of fact. This is especially clear from criterion (3) which, as per the afore-extracted passage, has to be satisfied, before the defendant can be said to be "carrying on business" at a particular location. The case at hand presents a textbook example. The plaintiff has placed, on record, the "Contact Us" page on the website of the defendant, which carries the following recital:

"REGISTERED OFFICE:

ADDRESS:

SP-825, Road No. 14, Vishwakarma Industrial Area, Jaipur 302013 (Rajasthan) Tel. No. 0141 2331771-2, Fax. 0141 2330810 E-mail: [email protected] REGISTRARS:

ADDRESS:

Beetal House, 3rd Floor, 99 Madangir, Behind Local Shopping Centre, Near Dada Harsukhdas Mandir, New Delhi-110062 Phone - 91-11-2996 1281-83 Fax - 91-11-2996 1284 Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 47 of 54 Signing Date:16.10.2020 17:36:36 E-mail: [email protected] COMPLIANCE OFFICER:

ADDRESS:

Ms Anisha Jain, SP-825, Road No. 14, Vishwakarma Industrial Area, Jaipur-302013, (Rajasthan) Tel. No.: 0141-2331771/2 Fax. No.: 0141-2330810 E-mail: [email protected]"

Beetal House, New Delhi has, therefore, been reflected, on the website of the defendant, as an address at which it can be contacted. Prima facie, therefore, the defendant has an office at the said address. The nature of the said office, and as to whether the defendant can be said to be "carrying on business" at the said office, on the basis of the tests postulated in the passage, from Dhodha House8, is a question of fact, which would have to be decided on the basis of pleadings an evidence. Thereafter, it would have to be ascertained as to whether the nature of the work transacted at the said office is such as to substantiate the defendants contention that it does not "carry on business" there. At this ad interim stage, I have to proceed on the basis that, prima facie, the "Contact Us" page, on the website of the defendant, reflects that it does carry on business at the Beetal House address, in New Delhi.

31. Apart from the judgements in Allied Blenders and Distillers v. R.K. Distilleries1 and Allied Blenders and Distillers v. Prag Distillery Pvt Ltd2, this Court has, consistently, been holding that, in quia timet intellectual property actions, the mere apprehension of the likelihood of the defendant launching the allegedly infringing product within the Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 48 of 54 Signing Date:16.10.2020 17:36:36 territorial jurisdiction of this Court, would confer jurisdiction, on this Court, to adjudicate the lis, to wit, the judgements of the Division Bench of this Court in Teva Pharmaceutical Industries v. Natco Pharma Ltd16, and of the learned Single Judge in N. V. Distilleries Pvt Ltd v. Frost Falcon Distilleries Ltd17 and Zenner International GMBH & Co. Kg3.

32. Even on the anvil of Section 134 of the Trade Marks Act, and Section 62 of the Copyright Act, therefore, as the cause of action has arisen within the territorial jurisdiction of this Court, at least in part, it cannot be held, at a prima facie ad interim stage, that the relief can be denied to the plaintiff on the ground of want of territorial jurisdiction. Borrowing the felicitous expression used in the two Allied Blenders judgements of this Court, to which repeated reference has been made hereinbefore, it cannot be said that the plea, of the plaintiff, that this Court has jurisdiction, is "highly debatable and prima facie not tenable". It may be the former, but is certainly not the latter, at least as per the situation which presents itself on the facts pleaded in the plaint. Factors (i), (iii) and (iv), in para 6.2 supra, cited by the plaintiff as justification is for filing the present suit before this Court, prima facie justify the invocation of its jurisdiction.

33. On merits, the claim of the plaintiff, prima facie, merits acceptance. A bare comparison, of the label of the "Officers Choice"

label used by the plaintiff, vis-à-vis the "Chetak" label used by the defendant, reveals that they are deceptively similar. In both the labels, 16 210 (2014) DLT 591 (DB) 17 2019 (174) DRJ 700 : (2019) 77 PTC 333 (Del) Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 49 of 54 Signing Date:16.10.2020 17:36:36

(i) there is a gold line, dividing the label into an upper and lower half,

(ii) the lower half has a red background, whereas the upper half as a white background, (iii) the lettering, on the lower red half of the label, is in white, and the lettering, in the upper white half of the label is in red, (iv) the placement of the trademarks "Officers Choice" (in the case of the plaintiff's label) and "Chetak", in the case of the defendant's label, are similar, and covers a major portion of the upper white half of the label and (v) both labels have an outer gold border.

The overall appearance of the two labels is, at a plain glance, similar, and constitutes, therefore, similar trade dresses. The two labels are, therefore, deceptively similar, as perceived by the man of average intelligence and imperfect recollection.

34. The defendant in the written submission merely contends, in this regard, that the name of the defendant's product was different from that of the plaintiff's, there was the feature of a horse above the word "Chetak" in the label of the defendant, and the packaging of the goods was different, as the bottles were different in shape, size, and had different caps. These features do not, however, prima facie, detract from the overall similarity in the essential features of the labels used by the plaintiff and the defendant.

35. The plaintiff has also placed, on record, orders passed by this Court, in earlier suits, filed by the plaintiff, against defendants who were manufacturing and selling Whisky, under labels which infringed the "Officers Choice" trademark of the plaintiff. A tabular depiction, of these orders, with the labels which were subject matter of consideration therein, is provided thus:

Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 50 of 54 Signing Date:16.10.2020 17:36:36 Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 51 of 54

Signing Date:16.10.2020 17:36:36

36. The written submissions filed by the defendant to not dispute this position. All that is said is that the orders, on which the plaintiff relies, were either passed ex parte, or were passed in suits which were finally settled.

37. Be that as it may, it is an undeniable fact that the plaintiff has been granted ad interim relief, by this Court, on multiple occasions, against the defendants who were selling Whisky using labels which were deceptively similar to the "Officers Choice" label of the Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 52 of 54 Signing Date:16.10.2020 17:36:36 plaintiff, and which are also similar to the label used by the present defendant on its "Chetak" Whisky.

38. This fact, seen in the background of the admitted reflection, on the website of the defendant, of the plaintiff's products - which the defendant has, in its written submissions, sought to explain, by contending that it was merely representing the work earlier done, by or for the plaintiff - clearly indicates that a consumer, of average intelligence and imperfect recollection, is likely to confuse the product of the defendant with that of the plaintiff.

39. Additionally, I may note, the "triple identity" test also stands satisfied in the present case, as the mark of the defendant is deceptively similar to the trademark of the plaintiff, they are being used on identical goods, and these goods are sold through similar trade channels and are available at the same outlets.

40. For all these reasons, I am of the opinion that, pending hearing and final disposal of the present I.A., the plaintiff is entitled to ad interim relief, in terms of the prayers in the present application.

41. Accordingly, there shall be an ad interim injunction, restraining the defendant from using, manufacturing, selling, exporting, importing, offering for sale, distributing or otherwise dealing in any product, under the impugned "Chetak" label, or under any trademark or tradename which is deceptively similar to the "Officers Choice"

and "Officers Choice Blue" trademarks, registered in favour of the plaintiff.

Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 53 of 54 Signing Date:16.10.2020 17:36:36

42. I have been informed that pleadings in this I.A. have been completed. Accordingly, list on 21st October, 2020 for hearing and disposal.

C. HARI SHANKAR, J.

OCTOBER 15, 2020 HJ Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI I.A. 4397/2020 IN CS (COMM) 166/2020 Page 54 of 54 Signing Date:16.10.2020 17:36:36

Unlock Advanced Research with PRISMAI

Delhi High Court - Orders