Indian Kanoon - Search engine for Indian Law

1. This is a suit for injunction, rendition of accounts and delivery up of the infringing material. The plaintiff is a Company incorporated in France and is engaged in the business of manufacturing, distribution and sale of a wide range of hair care, skin care toiletries and beauty products including perfumery preparations, essential oils, cosmetics, preparations for colouring and bleaching the hair, hair dyes, hair dyes and tints, shampoos etc. The word/mark L'OREAL was adopted by the plaintiff Company in the first decade of 1900 and is being used since about 1910-1915, in relation to its goods and businesses. The plaintiff is selling its goods under the trademark L'OREAL in about 130 countries throughout the world. The trademark L'OREAL is also registered in India in Class 3, in relation to perfumery/soaps, non-medicated toilet preparations shampoos hair dyes etc. This is also the case of the plaintiff that its trademark L'OREAL enjoys an enviable goodwill and reputation in the market and has become associated/identified with the goods and business of the plaintiff company. The products of the plaintiff company are available in or above 300 towns and cities in India. The plaintiff has manufacturing plant in Chakan, near Pune in Maharashtra and employs for 400 persons. The plaintiff claims to be spending huge amount on advertisement and promotion of its product sold under the name L'OREAL. This is also the claim of the plaintiff that members of the trade and industry as well as the consumers and general public at large throughout world, including India, being well aware of the trademark of the plaintiff, it is also a well known trademark within the meaning of Section 2(1)(zg) of the Trademarks Act.

4. Since the defendant is a resident of Ahmedabad and is carrying business there, the first question which comes up for consideration is as to whether this Court has territorial jurisdiction to try the present suit. This is a suit for infringement of the registered trademarks of the plaintiff. Section 134(2) of Trademarks Act, 1999, to the extent it is relevant provides that notwithstanding the provisions contained in the Code of Civil Procedure, the Court within the local limits of whose jurisdiction the person instituting the suit resides or carries on business or personally works for gain, at the time of the institution of the suit, would have jurisdiction to try a suit for infringement of a registered trademark. It is alleged in para 29 of the plaint that the plaintiff is carrying on its business under the trademark L'OREAL in Delhi where its goods are sold and are available. In her additional affidavit Ms. Surbhi Bansal, constituted attorney of the plaintiff has stated that at the time of filing of the suit, the plaintiff-company had a subordinate office and a technical centre within the jurisdiction of this Court at 313, 3rd Floor, Saket District Centre, New Delhi and at present, the office of the plaintiff-company is situated at C- 33, First Floor, opposite PVR Plaza, Connaught Place, New Delhi. Along with an affidavit, she has filed a copy of the lease deed dated 10th October, 2006, executed by Kavita Laroia, owner of shop/commercial space No. 313, admeasuring 1245.80 square feet, situated on the third floor or Rectangle One, Saket District Centre, New Delhi in favour of L'OREAL India Private Limited which is stated to be the wholly owned subsidiary of the plaintiff in India. A perusal of this document would show that the above- referred premises in Saket, District Centre, Delhi was let out to the plaintiff-company for commercial purposes w.e.f. 10th October, 2006. Thus, the plaintiff-company did have an office in Delhi when this suit was filed.

5. In Shree Rajmoti Industries vs. Rajmoti Oil Mill Pvt. Ltd & Anr. 2005 (30) PTC 38 (Del), the plaintiff had averred in the plaint that it was carrying on business in Delhi and for this purpose it had referred to two of its distributors. This was held to be a sufficient compliance under Section 62(2) of the Copyright Act and Section 134(2) of the Trademarks Act. In Ford Motor Company & Anr vs. C.R. Borman & Anr. 2008 (38) PTC 76 (Del.) (DB), it was alleged in the plaint that the plaintiff had service stations, showrooms, authorized dealers and sales of its products within the territorial jurisdiction of this Court. Prima facie this was held to be sufficient to confer jurisdiction on Delhi Courts.

6. The purpose behind Section 134(2) of Trademarks Act, 1999 is to ensure that the proprietor of a registered trademark does not have to face the inconvenience and lost that is involved in suing the infringers at the place of their residence/business when he happens to reside/carry business at a place different from the place of the person who owns the trademark. It was realized that suing the infringer at the place of his residence/business is likely to discourage legal action against infringement, particularly if the infringers happen to be more than one and at different places. I am in agreement with the learned counsel for the plaintiff that considering the purpose behind enactment of Section 134(2) of Trademarks Act, this provision needs to be given a liberal construction and, therefore, the expression "carries on business", used in the sub-Section needs to be given a wider amplitude as compared to the scope to be given to this expression in the context of Section 20 of the Code of Civil Procedure. Moreover, if a company has an office even if that to be a subordinate office within the jurisdiction of a Court, it would be difficult to dispute that the company carried on its business at that place as well. A company may carry on business at more than one places and one of those places may be where it has a subordinate office. Establishing and maintaining a subordinate office being a part of running the business of a corporation, it would be difficult to say that a company does not carry out a business at a place where it has a subordinate or a subsidiary office. The plaintiff company not only had an office in Delhi at the time this suit was filed, issue of invoices from Delhi office of its subsidiary clearly shows that it is actually carrying business from its Delhi office as well. I need not examine the implication of the company doing business in Delhi through its Delhi based dealers/distributors.