Delhi High Court
Virajlal Manilal & Co. vs Adarsh Bidi Co. on 4 October, 2002
Equivalent citations: 101(2002)DLT143
JUDGMENT S.K. Agarwal, J.
1. This is second application of defendant, under Order 39 Rule 4 read with Section 151 CPC for varying and setting aside the order of injunction dated 20th January, 1995 and allowing the defendant to carry on his trade of Bidis in the District of Muradabad, Uttar Pradesh under the trade-mark/label '122'.
2. Facts in brief are that plaintiff filed a suit against the defendant Adarsh Bidi Company for perpetual injunction, for infringement of copyright, passing off trade-mark and for rendition of accounts etc. pleading therein that plaintiff has been carrying on business of manufacturing and marketing of Bidis for the last more than five decades. The plaintiff has been using trade-mark/labels consisting of numeral "22" on its Bidi products. The numerals '22' are duly registered in the name of the plaintiff under the provision of trade and Merchandise Marks Act, 1958. The defendant has no right to adopt or use the impugned trade-mark or label "122" which is deceptively similar to plaintiff's registered trade-mark/labels 22.
3. By order dated 17th December, 1991, the defendant was restrained form selling Bidis under the trade-mark 122. The defendant has filed written statement, inter alia, pleading that defendant is neither manufacturing Bidis in question in Delhi nor marketing the same in Delhi; and no cause of action had arisen in Delhi. Thus this Court has no jurisdiction to try the suit. He has also filed IA NO. 8016/92 on 22nd July, 1992 praying for vacation of the ex parte injunction. By detailed order dated 20th January, 1995, Hon'ble Mr. Justice R.C. Lahoti (as his Lordship then was) confirmed the interim order, restraining the defendant from using trade-mark 122 and any other trade-mark consisting of such numerals as may be deceptively similar to that of plaintiff "22". The defendant's application was dismissed. The defendant took up the matter in appeal. The application for stay of the impugned order was dismissed vide order dated 20th January, 1998, by the Division Bench.
4. Issues were framed on 14th March, 1996 including the issue relating to the jurisdiction raised, in the written statement. On 18th February, 1998, local commissioner was appointed to record the evidence and evidence of some of the witnesses has already been recorded and local commissioner has filed the report.
5. Now the defendant No.1 has again filed application, under Order 39 Rule 4 CPC praying for setting aside the injunction order dated 20th January, 1995, on the ground that this Court has no territorial jurisdiction, and that this aspect was not considered in the earlier order.
6. I have heard learned counsel for the parties and have been taken through the record.
7. Learned counsel for the defendant argued that prima facie findings with respect to the alleged breach of plaintiff's copy right were recorded in the order dated 20.1.1995, while confirming the injunction. He further argued that this court has no territorial jurisdiction to entertain and try the suit, as the defendant does not reside in Delhi; no cause of actin has arisen in Delhi; the plaintiff has not filed any document to show that the defendant was selling its products in Delhi; and that composite suit for violation of trade-mark and copy right on the basis of the averments made in the plaint, is not made out, therefore, the suit is liable to be rejected. In support of his submission reliance was placed on a decision of this Court in Gupta Brothers Conduit Pipe Manufacturing Co. Pvt. Ltd. v. Anil Gupta and Anr., 2001 (24) PTC 159 (Delhi). He further argued that the question with regard to lack of territorial jurisdiction of this Court specifically raised in the written statement and the same was not dealt with by the Court while confirming the order of injunction. Learned counsel for the plaintiff argued to the contrary.
8. I have considered the rival contentions. Ex parte injunction dated 17th December, 2001 was confirmed by order dated 20th January, 1995, holding as under:-
"10. It is common knowledge that bidis are consumed by illiterates or semi-literates. The numericals '22' and '122', as used by the parties on their labels are in English writing-style. As the labels and the wrapping paper are used on the bundles which are conical and round in shape the possibility of the unwary consumers being led away in purchasing defendants' bidis as that of the plaintiffs' cannot be ruled out. This is sufficient to give a cause of action to the plaintiffs."
9. This being an application for recalling the injunction order under Order 39 Rule 4 CPC at this stage it would be useful to reproduce second proviso to the same. It reads as under:
"4. Order for injunction may be discharged, varied or set aside.-
xxxxx Provided further that where an order for injunction has been passed after giving to a party an opportunity of being heard, the order shall not be discharged, varied or set aside on the application of that party except where such discharge, variation or setting aside has been necessitated by a change in the circumstances, or unless the Court is satisfied that the order has caused undue hardship to that party."
The two situations contemplated by the above proviso for setting aside for modifying the order of injunction passed after hearing the parties are (a) change in circumstances; or (b) undue hardship.
10. Learned counsel for the applicant failed to point out any change in circumstances. He, however, argued that the applicant has been suffering unnecessary hardship and the business is lying closed. I am unable to appreciate this contention. The injunction is only with regard to manufacture of Bidi, under the trade mark '122'. Nothing prevents the defendant from manufacturing or selling Bidis under any other trade mark. It is a matter of common knowledge that manufacturers of Bidis, sell their products under several trade names/marks. The contention is without merit and is rejected.
11. The suit has made substantial progress., Evidence of several witnesses of plaintiff has already been recorded. Admittedly, in the appeal filed by the applicant/defendant, the ground with regard to lack of territorial jurisdiction of this Court was not taken, which clearly shows that this question was neither raised before this Court nor before the appellate court. That being so, the issue with regard to lack of territorial jurisdiction is barred by principles of constructive res judicata.
12. The plaintiff has pleaded that the defendant is manufacturing and marketing its goods in Union Territory besides other parts of the country. This is a question of fact, which can be adjudicated only by permitting the parties to lead their respective evidence and cannot be decided at this stage. If plaintiff succeeds in providing that the defendant is manufacturing and marketing its goods in the Union Territory, as alleged in the plaint, it would be difficult to hold that the Court in Delhi has no territorial jurisdiction. The facts of the case relied upon by the learned counsel for defendant were different and the ratio of that decision is not applicable to the facts of this case.
In view of the above, there is no merit in the application and the same is dismissed.