Prakash Industries Ltd vs Manmohan Bansal & Ors on 20 July, 2016

[Cites 12, Cited by 0]

Delhi High Court

Prakash Industries Ltd vs Manmohan Bansal & Ors on 20 July, 2016

1. The plaintiff has instituted the present suit for permanent injunction to restrain the three defendants, of which the address of defendants no.1&2 i.e. Mr. Manmohan Bansal and M/s Deepak Enterprises is of Moga in Punjab and of the defendant no.3 M/s RTC (India) is of Jalandhar in Punjab, from making, selling, offering for sale, advertising or dealing in any manner in any kind of PVC pipes, PVC bends and all kinds of plastic and PVC goods using the trademark „PARKASHDEEP‟ or any other mark which is identical or deceptively similar to the plaintiff‟s trademark „PRAKASH‟ and for ancillary reliefs.

2. The suit was entertained and vide ex parte order dated 25th May, 2015 which continues to be in force, the defendants were restrained from dealing in PVC pipes and other allied/other goods using the trademark „PARKASHDEEP‟ or any other mark identical or deceptively similar to plaintiff‟s trademark „PRAKASH‟.

CS(OS) 1562/2015 Page 1 of 9

3. The pleadings have been completed. Besides the application of the plaintiff for interim relief, two applications of the defendants i.e. IA No.16337/2015 under Order VII Rule 10 and IA No.16338/2015 under Order VII Rule 11 CPC are also for consideration.

4. The counsels have been heard.

5. It is the contention of the counsel for the defendants that this Court has no territorial jurisdiction to entertain the suit and hence the application under Order VII Rule 10 CPC. It is also his contention that since this Court does not have territorial jurisdiction and the territorial jurisdiction of this Court is barred by law, hence the application under Order VII Rule 11 CPC.

6. The counsel for the defendants in this regard has drawn attention to para 31 of the plaint where the plaintiff has invoked the territorial jurisdiction of this Court on three grounds i.e. i) that the defendants are marketing their goods at Delhi; ii) that the principal place of business of the plaintiff is at Delhi and Section 134 of the Trademarks Act, 1999 permits the plaintiff to institute the suit in this Court; and, iii) that even under Section 62(2) of the Copyright Act, 1957, this Court will have jurisdiction.

7. The counsel for the defendants has argued that the plaintiff in the prayer paragraph in the plaint has not claimed any relief of infringement of copyright and in fact the plaintiff in para 7 of the reply to IA No.16337/2015 under Order VII Rule 10 of the CPC has expressly stated that the plaintiff has not instituted this suit on the basis of copyright.

8. The counsel for the defendants has next contended that the plea of the plaintiff in para 31 of the plaint of the defendants marketing their goods at Delhi is vague and no document of the subject goods being purchased by the plaintiff / its representatives at Delhi have been filed. Reliance is placed on CS(OS) 1562/2015 Page 2 of 9 Dabur India Limited Vs. K.R. Industries 2006 (33) PTC 107 (Del.), Dabur India Limited Vs. K.R. Industries 2006 (33) PTC 348 (Del.)(DB) and on Dabur India Ltd. Vs. K.R. Industries 2008 (37) PTC 332 (SC) to contend that the bald plea of the defendants selling the goods at Delhi would not create territorial jurisdiction.

9. With respect to the ground taken by the plaintiff of this Court having jurisdiction by virtue of Section 134 of the Trademarks Act, it is argued that since the defendants also are a registered proprietor of the trademark „PARKASHDEEP‟, the question of infringement or Section 134 of the Trademarks Act getting attracted does not arise and the claim of the plaintiff can only be on the basis of passing off and for which the plaintiff is required to prima facie satisfy this Court that the defendants are selling their goods at Delhi.

10. On enquiry, whether the defendants admit to selling their goods at Delhi or not, the counsel for the defendants states that the defendants are shopkeepers who are merely selling PVC goods under the brand name „PARKASHDEEP‟ from Moga and Jalandhar and that thus the question of the defendants selling their goods at Delhi does not arise.

11. I have enquired from the counsel for the defendants that if the defendants are not the manufacturers of the averred infringing goods, who else is.

12. The counsel for the defendants states that he does not know and is not required to disclose and can only state that the defendants are merely retailing the goods from Moga and Jalandhar.

13. I find it hard to believe that the defendants, who admit to retailing the goods, would not know who is the manufacturer of the said goods and / or CS(OS) 1562/2015 Page 3 of 9 from whom they are acquiring the said goods for retailing. Such a stand shows the defendants to be playing hide and seek with this Court and belies the statement of the defendants of not selling their goods at Delhi, as pleaded by the plaintiff.

14. I have further enquired from the counsel for the defendants as to how the question of territorial jurisdiction can be decided on a „prima facie view‟ of the matter and whether not the framing of an issue as to jurisdiction becomes essential once the plea which vests jurisdiction in the Court is found to exist in the plaint.

15. The counsel for the plaintiff also in this regard has drawn attention to para 18 of the reply on merits of the joint written statement of the three defendants where the defendants have stated that they are using the mark since the year 2009 "on a very wide scale" and that "the impugned mark is so popular that it is hard to believe that the plaintiff never heard of the defendant no.1".

16. The counsel for the defendants though has argued that the defendants are not manufacturing and are merely retailing but is unable to show any such a plea having been taken in the written statement. The only argument which the counsel for the defendants can make in this context is that the registration in favour of the defendant no.1 is in Class 35 i.e. under the head "Services" and for advertising, business management, business administration, office functions.

17. The judgments cited by the counsel for the defendants in this regard are of no avail to the present factual controversy. It is the settled principle of law that a plaint cannot be rejected under Order VII Rule 11 where the plea on the basis of which rejection is sought requires evidence to be led.

CS(OS) 1562/2015 Page 4 of 9

Reference in this regard can be made to (i) Snowhite Apparels Ltd. Vs. K.S.A. Technopak (I) Ltd. 121 (2005) DLT 351 (DB) where a Division Bench of this Court held that rejection of the plaint is a serious matter; it non-suits the plaintiff and kills the cause and claim for good; it can't therefore be ordered cursorily and without satisfying the requirements of provisions of Order VII Rule 11; conflicting claims are proof enough of the fact that the suit cannot be held to be barred (by time in that case) on the basis of averments made in the plaint and the plea (in that case of limitation) requires determination on examination of the rival stands of the parties and in such a suit the plaint would not be liable to be rejected; (ii) Manjeet Singh Anand Vs. Sarabit Singh Anand MANU/DE/1205/2009 where another Division Bench of this Court held that a question of fact, which can be determined only after a full-fledged trial after recording of evidence by the parties, cannot form the basis of rejection of plaint under Order VII Rule 11 of the CPC; (iii) Kamla Vs. K.T. Eshwara SA (2008) 12 SCC 661 where also it was held by the Supreme Court that for the purpose of invoking Order VII Rule 11 of the CPC, no amount of evidence can be looked into and that the issues on merits of the matter which may arise between the parties would not be within the realm of the Court at that stage of Order VII Rule 11 of the CPC; and, (iv) Time Warner Entertainment Company, L.P. Vs. Mr. Harbhajan Singh 125 (2005) DLT 473 where, relying on the judgment of the Full Bench of the Allahabad High Court in Jagannath Prasad Vs. Chandrawati AIR 1970 All 309, it was held that a distinction has to be made between a case where the plaint itself does not disclose any cause of action and a case in which after the parties have produced oral and CS(OS) 1562/2015 Page 5 of 9 documentary evidence the Court on consideration of the entire material on record comes to the conclusion that there was no cause of action for the suit.

18. Similarly here, a reading of the plaint does disclose this Court to be having a territorial jurisdiction to entertain the suit. It is a different matter that the Court may after full trial hold this Court to be not having territorial jurisdiction and dismiss the suit on that ground.

19. With respect to territorial jurisdiction, a Division Bench of this Court in State Trading Corporation of India Ltd. Vs. Government of Peoples Republic of Bangladesh 63 (1996) DLT 971 has held that prima facie the jurisdiction has to be determined from the averments made in the plaint and if the jurisdictional facts are disputed, the court shall frame an issue thereon and having tried the issue may ultimately form an opinion either in favour of or against having territorial jurisdiction to try the suit. It was further held that only if from a bare reading of the plaint it appears that the Court does not have jurisdiction that the plaint at the initial stage itself may be returned under Order VII Rule 10 for presentation to the proper Court.

20. Here, a reading of the plaint shows a categorical averment therein of the defendants retailing the goods bearing the offensive trademark at Delhi. The pleas in the written statement of the defendants, of their subject goods having a "wide circulation" and "being very popular" and "it being inconceivable that the plaintiffs had not heard of the same", support rather than contradict the plea in the plaint, of the defendants selling the impugned goods in Delhi. According to the counsel for the defendants also, if it is so, this Court would have territorial jurisdiction.

21. The counsel for the defendants on the aspects of territorial jurisdiction has also referred to ST. lves Laboratories Inc Vs. Arif Perfumers 2009 (40) CS(OS) 1562/2015 Page 6 of 9 PTC 104 (Del.) where, invoking the principle of forum conveniens, notwithstanding a portion of the cause of action having accrued within the jurisdiction of this Court, the suit was not entertained.

22. I may in this regard record that a three Judge bench of this Court in New India Assurance Company Limited Vs. Union of India AIR 2010 Del. 43 held that the principle of forum conveniens which had evolved in relation to international law cannot be made applicable to domestic law and if under the law a Court has jurisdiction, the court cannot refuse to exercise the territorial jurisdiction and order the suit to be filed in some other jurisdiction. Though a subsequent five Judge Bench in Sterling Agro Industries Ltd. Vs. Union of India AIR 2011 Delhi 174 overruled the said judgment but it may be highlighted that even the five Judge Bench was concerned with discretionary reliefs and not with substantive reliefs. As per the law laid down by the five Judge Bench where discretionary relief is claimed from the Court, the Court may be entitled to, on the ground of forum conveniens, refuse to exercise jurisdiction. However in my view the same cannot be held to be true where a substantive relief is claimed and cause of action for which substantive relief howsoever miniscule accrues within the jurisdiction of the Court.

23. I have already noticed above that the defendants have not made a clean breast of the state of affairs as they are required to make before a Court of law and are playing hide and seek.

24. In view of the aforesaid conduct of the defendants and in totality of the discussion hereinabove, the applications being IA Nos.16337/2015 & 16338/2015 are dismissed.

CS(OS) 1562/2015 Page 7 of 9

25. No arguments have been made in opposition to the application otherwise for interim relief. Even otherwise, as has been noticed by me above, the conduct of the defendants requires that the ex parte interim injunction already granted be confirmed. It is the admitted position that the registration of the plaintiff of the trademark „PRAKASH‟ is of a date prior to the registration in the name of defendants of „PARKASHDEEP‟ in Class

35. The defendants, as the professed retailers of the infringing goods, even otherwise ought not to be interested in continuing retailing the infringing goods. The stand of the defendants shows that the defendants are having the infringing goods manufactured at arm‟s length and under which arrangement are passing off their goods as those of the plaintiff. For this reason also a case for grant of interim injunction is made out.

26. IA No.11357/2015 is accordingly allowed and the ex parte ad-interim order dated 25th May, 2016 is made absolute till the disposal of the suit.

27. On the pleadings of the parties, the following issues are framed:

(i) Whether this Court has territorial jurisdiction to entertain the suit? OPP

(ii) Whether the defendants, by adopting the trademark "PARKASHDEEP" in relation to the same goods in relation whereto the plaintiff holds a prior registration have infringed the trade mark of the plaintiff and / or passed off their goods as that of the plaintiff and, if so to what effect? OPP

(iii) What is the effect if any of the registration of the mark "PARKASHDEEP" in favour of the defendants no.1 in Class 35? OPD

(iv) Whether the suit is bad for mis-joinder of the defendants? OPD CS(OS) 1562/2015 Page 8 of 9

(v) Whether the plaintiff is not entitled to the relief of infringement and / or passing off on account of any delay or laches in institution of the suit? OPD

(vi) Whether the plaintiff, if found entitled to the relief is not entitled thereto for the reason of having concealed having opposed the application of the defendant no.1 for registration of the trademark in Class 17? OPD

(vii) Relief.

28. No other issue arises or is pressed.

29. The parties to file their list of witnesses within 15 days.

30. The plaintiff to lead evidence first and to file affidavits by way of examination in chief of all its witnesses within eight weeks.

31. The counsel for the plaintiff has been given an option to have the evidence recorded before the Court Commissioner but has refused.

32. List before the Joint Registrar on 28th September, 2016 for fixing the dates of trial.

RAJIV SAHAI ENDLAW, J JULY 20, 2016 „gsr‟/pp CS(OS) 1562/2015 Page 9 of 9

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Delhi High Court