Delhi District Court
M/S Khushi Ram Behari Lal vs . M/S P. K. Overseas Pvt. on 12 March, 2014
TM No. 48/12 M/s KHUSHI RAM BEHARI LAL Vs. M/s P. K. OVERSEAS PVT. LTD. 12.03.2014 ORDER ON APPLICATIONS UNDER ORDER XXXIX RULES 1 & 2 READ WITH SECTION 151 CPC AND SECTION 135 (2)(c) OF THE TRADEMARKS ACT, 1999 OF THE PLAINTIFF, APPLICATION UNDER ORDER XXXIX RULE 4 & SECTION 151 CPC AND APPLICATION UNDER ORDER VII RULE 10 & SECTION 151 CPC OF THE DEFENDANT . 1. Before delving into the applications, it is necessary to narrate the crucial facts set up by the parties. Plaintiff partnership firm has filed the suit for permanent injunction for restraining infringement and passing off by the defendant and rendition of accounts etc. under Section 134 & 135 read with Section 27 (2) of The Trademarks Act, 1999 and Section 51 of the Copyright Act, 1957 through its managing partner Sh. Anil Kumar Mittal contending that since the beginning of its establishment in 1978, it has been engaged in the business of processing and marketing of Basmati Rice including export thereof. The plaintiff had honestly and bonafidely adopted the trademark 'TAJ MAHAL LABEL'(device of TAJ MAHAL) in relation to their said business and goods and has been uninterruptedly, openly, exclusively and commercially using the same as proprietor and has built up valuable goodwill and reputation both in India and overseas. It has become one of the established export houses of basmati rice. The plaintiff carved an exclusive branch namely M/s Khushi TM No. 48 of 2012 Page 1 of 47 Ram Behari Lal (Export Division) which had been exporting rice to Kuwait, Saudi Arabia, Hongkong, Australia, UK and other countries under the TAJ MAHAL label. 2. The Export Division also adopted the trademark/label 'INDIA GATE'with device of INDIA GATE in 1993 in relation to rice and used the same continuously in the course of trade and has acquired proprietary right therein. Vide an agreement dated 01.04.1996, the Export Division of the plaintiff was taken over as a going concern with all its assets and liabilities including the rights in the trademark/label 'INDIA GATE' by the company M/s Khushi Ram Behari Lal Ltd. which name has subsequently been changed to M/s KRBL Ltd. The plaintiff also permitted the said company to use the trademark/label TAJ MAHAL'in relation to their business and goods i.e. processing and marketing of all kinds of rice. 3. The trademark/label TAJ MAHAL'of the plaintiff has become distinctive with which the plaintiff is identified in trade/industry and consumers and goods sold there under are regarded as high quality products. Besides maintaining excellent quality and standard of its said goods, the plaintiff lays great emphasis on innovation and through consistent research and development involving huge amount, the quality of products and services is being consistently improved with a view to enhance customers satisfaction and increase its profits. The products of plaintiff under the trademark/label 'TAJ MAHAL'are extremely popular and in great demand. The total exports of TM No. 48 of 2012 Page 2 of 47 plaintiff in 198081 to 31.03.1989 rose from Rs.11,57,848.05 to Rs. 11,68,26,741.10. The exports sales of M/s KRBL Ltd. under the trademark/label TAJ MAHAL'& INDIA GATE'rose from Rs.1.07 Crores in 199394 to Rs.366.23 Crores in 200809 and the domestic sales from Rs.5.45 Crores in 19992000 to Rs.275.21 Crores in 200809. The sales under trademark/label 'TAJ MAHAL'is approximately 10% of the sale figures. The plaintiff has been regularly promoting its trademark/label, goods and business there under through advertisements, publicity material, marketing research, participation in exhibitions, offering special discounts and by way of other programmes with big and renowned retailers in different parts of the country. 4. In order to acquire statutory rights in the trademark/label 'TAJ MAHAL' the plaintiff had filed registration application under no. 506080 on 27.02.1989 in Class30 in relation to 'rice for export' claiming user since 01.01.1978. It was advertised in Journal No. 1080 dated 01.06.1994 with proviso 'confining the goods to read as rice for export only'. M/s New Bharat Rice Mills (NBRM), one of the competitors of the plaintiff, filed opposition to the registration application on the basis of their malafide registrations and false claim of user of the said trademark/label. Immediately on coming to know of the passing off their goods by NBRM, the plaintiff had filed Suit no. 2230 of 1989 before Hon'ble High Court of Delhi and for cancellation of their registrations. The said suit and related proceedings with NBRM are pending wherein an order of IPAB allowing the appeal of NBRM against application no. 506080 has been stayed by Hon'ble High Court of Delhi vide order dated 20.03.2012. TM No. 48 of 2012 Page 3 of 47 5. The plaintiff's goods and business are demanded, known and recognized with reference to its trademark/label 'TAJ MAHAL'which has become 'well known trademark' within the meaning of Section 2 (1)(zg) of the Trademarks Act, 1999. In view of the plaintiff's proprietary rights both statutory and under common law in the said trademark/label and its copyrights, the plaintiff has exclusive rights to use the same and none else can be permitted to use it or any other deceptively similar trademark/label/copyright in any manner. 6. The defendant is engaged in the business of processing, marketing, sale and export of rice and have their unit at GT Karnal Road, Alipur, Delhi. The defendant has adopted and started using identical/deceptively similar trademark/label 'TAJ MAHAL'by incorporating the essential features of plaintiff's device of 'TAJ MAHAL'on its packaging material in relation to their goods and business. The defendant has also copied the artistic features of plaintiff's trademark/label and has thus infringed their copyright. False description is being used by the defendant on their goods to wrongly link them with the plaintiff and to convey to its consumers that the source and origin of their goods is plaintiff. The defendant thus is diluting the plaintiff's intellectual proprietary rights by indulging in unfair and unethical trade practice. The defendant is fully aware of the plaintiff's rights in the trademark/label 'TAJ MAHAL'. The resemblance between the rival devices of TAJ MAHAL is so close that it can hardly occur except by deliberate imitation. TM No. 48 of 2012 Page 4 of 47 7. Beside copying the device of TAJ MAHAL on their packaging material, the defendant has also copied the colour combination of one of the well known trademark 'INDIA GATE'of M/s KRBL Ltd. of which Sh. Anil Kumar Mittal is the Chairman and Managing Director, with word mark 'INDIA SALAM'in respect whereof M/s KRBL Ltd. has already filed a suit at the District Courts, Saket and an appeal against the dismissal of an injunction application of M/s KRBL Ltd. is pending before the Hon'ble High Court of Delhi. Although the plaintiff had learnt about the impugned goods of defendant bearing the device of TAJ MAHAL in the second week of June, 2010 in South Delhi market yet its claim over the trademark/label 'TAJ MAHAL'being under cloud in view of the IPAB order in proceedings with NBRM, it could not immediately move for the relief prayed for in this suit. Now on the order of IPAB having been stayed, the plaintiff is within its rights to file the suit and avert day to day losses in the goodwill and business. It is claimed that the defendant is supplying the impugned goods and offering them for sale from its registered office 18/20 West Extension Area, Arya Samaj Road, Karol Bagh, New Delhi05 and is supplying the same to dealers and distributors of Central Delhi, jurisdiction of this court has been invoked. By way of an interim injunction, the defendant, its Partners, Directors, Agents, Distributors, Assigns, Heirs, Successors, Stockiest, Representatives etc. are sought to be restrained from using, selling, soliciting, exporting, displaying, advertising or in any other manner dealing in the trademark/label 'TAJ MAHAL'or any other identical or deceptively similar trademark/label in relation to their business of processing, marketing, sale and export of rice and other related and allied products and TM No. 48 of 2012 Page 5 of 47 from doing any other act which may amount to passing off their goods as that of the plaintiff by use of TAJ MAHAL (device) or from diluting the plaintiff's trademark/label. 8. In its defence, filed through Sh. Fakhre Alam, Manager who has been authorized to conduct the proceedings vide resolution dated 13.08.2010, the defendant clarified that it was incorporated as PK Agro Enterprises Pvt. Ltd on 16.05.1994 which name was subsequently changed to that of the defendant with effect from 29.12.1994. The registered office of the defendant at 18/20, WEA, Arya Samaj Road, Karol Bagh, New Delhi is not being used for a long time. Vide a resolution dated 29.02.2012 passed by its Board of Directors, it was shifted to 4043/2, Naya Bazar, Lahori Gate, Delhi with effect from 01.03.2012 and from there to 4039/3, Naya Bazar, Lahori Gate, Delhi with effect from 29.03.2012 by passing another resolution dated 28.03.2012. It has a processing plant and Godown at 95/9, Alipur, G T Karnal Road, Delhi. The office of the Registrar of Companies has been informed of the status of registered office of the defendant by filing relevant documents. Their address on certificate of ImporterExporter Code issued by the Director General of Foreign Trade of 04.08.1995 has also been amended in this behalf. Appropriate applications have also been moved before the Registrar of Trademarks for amendment in the address of the defendant in the pending registration applications. Even the associate concern of plaintiff M/s KRBL Ltd. has filed a suit bearing TM No. 5/2010 in the District Court (South), Delhi against the defendant by mentioning their address as 4043/2, Naya Bazar, Lahori Gate, Delhi06. TM No. 48 of 2012 Page 6 of 47 9. The plaintiff has not filed any document even to primafacie show that the defendant has sold their goods within the territorial jurisdiction of this court, who are, in fact exporting their goods to different countries. The territorial jurisdiction of this court thus does not cover the case of passing off as is required under Section 20 of CPC. Few precedents have been cited to contend that an order passed by the court having no territorial jurisdiction, would be nullity. It is claimed that the suit is based on concealment and suppression of material facts which are well within the knowledge of partners of the plaintiff and their associate namely KRBL Ltd. that the defendant through its promoter Sh. Prem Manchanda, Proprietor of P. K. Enterprises had adopted the packaging material having the trademark 'INDIA SALAAM'with device of Taj Mahal in January, 1985 in respect of rice and the present packaging material in January, 2006 and has been exporting the said goods to a few countries in the world. 10. M/s KRBL Ltd., 5190, Lahori Gate, Naya Bazar, Delhi06 had issued a legal notice to the defendant on 14.04.2010 at its Karol Bagh and Naya Bazar addresses as well as to Sh. Ahmed Jalil Bilal of Norway taking exception to the incorporation of the device of TAJ MAHAL by the defendant alleging it to be with an intention to cause confusion to the unwary customers. It was also alleged therein that the defendant does not have proprietary rights over the device of TAJ MAHAL. The defendant had sent its reply dated 29.04.2010 interalia contending that packaging of their rice bags has original artistic work viz. the picture of MAHAL presented in background colours reflecting old TM No. 48 of 2012 Page 7 of 47 world charm value to the packaging. The placement of a rice bowl, colour scheme used on the bags, style of the letters appearing thereon, placement of brand name and other attributes of packaging including the appearance of a flag with word 'ANITA'in the right hand corner provides it distinctiveness from others and make its layout unique. 11. Said associate of the plaintiff had filed three suits on 06.07.2010 at Saket Courts including the one against the defendant being TM No. 5/2010 under signature and verification of Sh. Anil Mittal seeking to restrain the defendant from using the packaging/colourcombination having trademark 'INDIA SALAAM'. The District Court dismissed the injunction application of M/s KRBL Ltd. on 27.08.2011 against which FAO No. 532/2011 has been preferred by them in the Hon'ble High Court of Delhi. On the said associate failing to obtain an injunction order against the packaging of defendant, they have chosen to file the present suit through the same Sh. Anil Mittal taking exception to the use of device of TAJ MAHAL by the defendant. It is therefore not maintainable and is liable to be dismissed. M/s KRBL Ltd. had not sought specific relief in the said suit bearing TM No. 5/2010 against the defendant for use of device of TAJ MAHAL of which mention had been made in the notice of 14.04.2010. 12. The defendant has filed two applications for registration of Trademark 'INDIA SALAM'and 'INDIA SALAAM'with device of 'TAJ MAHAL'for rice, pulses, maida, besan, atta, spices which are pending. The application under former name is under opposition from M/s KRBL Ltd. In the TM No. 48 of 2012 Page 8 of 47 notice of opposition dated 11.11.2010 however no grievance about the said device was made. 13. It is vehemently stated that the plaintiff had discontinued the sale of goods after 198687 whereafter the goods were sold through M/s Khushi Ram Behari Lal (Export Division) and on 01.04.1996 said division transferred all their rights in the name of M/s Khushi Ram Behari Lal Ltd. Even the packaging materials filed by the plaintiff in the present proceedings specify the name of KRBL Ltd. The plaintiff therefore being a nonexistence firm, cannot maintain the suit. 14. It is asserted that the trademark and/or device of TAJ MAHAL is neither originated by the plaintiff nor their associate nor is it registered in their names. It is being used in respect of edible goods by different persons in the country even much prior to the plaintiff. A list of 49 such trademarks with number and dates of their applications, statement of user, goods and status downloaded from website of the Registrar of Trademarks has been submitted. It is stated that some of them are known to learned Counsel for the plaintiff who had filed the applications on behalf of other persons. 15. According to the defendant, the trademarks have to be considered as a whole and in so doing it will be clear that the packaging of defendant can solely be related to them being entirely different from the packaging of the plaintiff. The defendant therefore claims to be the exclusive owner of the packaging bearing the trademark 'INDIA SALAAM'including the pictorial TM No. 48 of 2012 Page 9 of 47 device 'TAJ MAHAL'which is heritage of the nation and no one can claim ownership and proprietary rights therein. The device of TAJ MAHAL represented by the defendant indicates that the goods are processed and manufactured in India. 16. The plaintiff and M/s KRBL Ltd. are family concern carrying on business under one roof and Sh. Anil Mittal is the key person in both the establishments. M/s KRBL Ltd. is well aware of the adoption and use of packaging material by the defendant with representation of device of TAJ MAHAL about which notice dated 14.04.2010 was issued to the defendant. However when the said KRBL Ltd. failed to obtain injunction against the defendant, the plaintiff was motivated to file the present suit, which is liable to be dismissed. The reasons for delay in filing furnished by the plaintiff are neither convincing nor satisfactory as the dispute between plaintiff and NBRM had noting to do with the defendant. The stay of order of IPAB however would not amount to confirming the proprietary rights of the plaintiff in the trademark 'TAJ MAHAL'. Moreover the pendency of proceedings before IPAB did not prevent the plaintiff to initiate legal action against the defendant. It is stated that defendant is not a flybynight company. It is claimed that the defendant will suffer irreparable loss and injury to its business in case interim injunction were not vacated and its export business will ruin which is being conducted by representing the device of TAJ MAHAL since January, 1985 well within the knowledge of the plaintiff. 17. On merits, the defendant has controverted that the plaintiff is TM No. 48 of 2012 Page 10 of 47 carrying on any business activity or is competent to maintain the present suit. The plaintiff has been called upon to prove the adoption of packaging in 1978 so as to proclaim itself as the proprietor of the device of TAJ MAHAL. It is contended that the plaintiff has deliberately concealed and suppressed the issuance of notice dated 14.04.2010 through M/s KRBL Ltd. to the defendant not only in this suit but also in TM No. 5/2010. In view thereof the suit and the injunction application are liable to be dismissed with heavy costs. It is claimed that the defendant has every right to represent the device of TAJ MAHAL on their packaging, it being a historical monument and heritage of the country, no rights of the plaintiff are thereby violated. The present suit has been filed by the plaintiff with malafide intention to secure illegal rights in the trademark which cannot become their exclusive property. The present proceedings have been initiated in order to harass and victimize the defendant. 18. Vide exparte interim order dated 11.12.2012, a Local Commissioner was appointed to visit the processing unit and godown of defendant at Alipur, Delhi to seize the impugned goods including stationary, packaging materials, containers, cartoons, display/sign boards, dies, blocks, advertising material, packed and semipacked goods containing the device of TAJ MAHAL, wrappers etc. and in the meanwhile the defendant was restrained from selling, exporting, promoting or displaying the device of TAJ MAHAL or any other label/device identical or deceptively similar thereto in relation to the business of sale and export of rice and any other related/allied products till the next date. TM No. 48 of 2012 Page 11 of 47 19. In their application under Order XXXIX Rule 4 & Section 151 CPC, the defendant has mainly repeated the contents of written statement to urge for vacation/setting aside of exparte adinterim injunction granted in favour of the plaintiff. It is stated that in 1979 Sh. Prem Manchanda had commenced business of food grains including sale of rice as sole proprietor of M/s P. K. Enterprise at 4043/2, Lahori Gate, Naya Bazar, Delhi. He had adopted various trademarks from time to time including TRIMURTI, TMT, NEELKAMAL, RATH, MANSA, DIYA etc. He had adopted the trademark 'INDIA SALAM/INDIA SALAAM'in respect of rice in January, 1985. Sh. Manchanda is the PromoterDirector of defendant company since its incorporation on 16.05.1994. It is stated that seven employees of the plaintiff, three of their advocates, photographer and local police had accompanied the Local Commissioner on 14.12.2012 at their godown cum processing plant seeing whom the employees of defendant were shocked. On receipt of copy of order dated 11.12.2012 however Director of the defendant had fully cooperated with the local commission proceedings and in making the inventory of goods/ packaging material lying in different areas of the godown. It is stated that the Local Commissioner be asked to explain permitting so many persons to join the inspection at the premises of defendant who is a well established businessman, which has got him mental disturbance and loss of reputation amongst his business associates and employees. It is averred that the plaintiff has been able to get an exparte interim injunction from this court by concealing/ suppressing some of the material facts and by misleading the court. 20. Plaintiff has filed reply to the application of defendant wherein TM No. 48 of 2012 Page 12 of 47 preliminary objections have been taken to the effect that it has been moved with oblique motives to prejudice the plaintiff before the court and obtain unjust benefit. The averments raised in the application are irrelevant and extraneous for the purpose of vacating the interim order dated 11.12.2012. The defendant has not been able to make out any ground falling within the ambit of invoked provision hence the application is not maintainable. The averments of the defendant are a matter of trial and adjudication and the same cannot be decided by way of applications. No document has been filed by the defendant to substantiate their claim regarding use of the impugned trademark/device TAJ MAHAL. On merits, the authorization of Sh. Fakhre Alam and the adoption of trademark by Sh. Prem Manchanda in respect of rice are refuted. It is claimed that the presence of employees of plaintiff was necessary for locating the impugned goods and to avoid the possibility of obstruction and physical harm by the employees of the defendant despite the presence of police official. The Local Commissioner had executed the commission in an efficient manner despite great resistance of the defendant. It is denied that the Local Commissioner had any ill intention in executing the commission proceeding. There was no question of the employees of defendant working at the plant getting shocked. Taking of photographs was necessary for effective execution of the commission proceedings. It is denied that this court does not have territorial jurisdiction to entertain and try this suit. 21. The plaintiff itself has disclosed the filing of suit bearing TM No. 5/2010 against the defendant by M/s KRBL Ltd. The cause of action for this suit being continuous in nature and filing thereof now was duly explained. The TM No. 48 of 2012 Page 13 of 47 mention of device of TAJ MAHAL in the notice of M/s KRBL Ltd., who has permissive right to use it and nonmention thereof in the plaint is not a material fact. The said notice was on different premise and the defendant had also not responded to the mention of device of TAJ MAHAL. The suit bearing TM No. 5/2010 had been filed when the plaintiff came across the impugned goods of the defendant in South Delhi market. As the defendant has its office within the jurisdiction of this court and sells the impugned goods on continuous basis, this suit was filed. The exparte order to some extent falsifies the plea of the defendant about the plaintiff having concealed/suppressed the material facts. 22. It is asserted that the plaintiff is the owner and proprietor of trademark/label TAJ MAHAL and thus competent to initiate legal proceedings on that basis. M/s KRBL Ltd. is only a permissive user of said trademark/label of the plaintiff and the relief claimed in Suit bearing TM No. 5/2010 and this suit are different. Nonmentioning of M/s KRBL Ltd. having opposed the registration application of the defendant does not amount to concealment/suppression of material facts. The plaintiff has never acquiesced the use of device of TAJ MAHAL by the defendant. The plaintiff denied that it has not been carrying on any business in its name or that it is nonexistence. The permissive use of subject trademark of export division has only been taken over by M/s KRBL Ltd. It is settled principle of law that use of a trademark by licensee is use by its owner claim of use/right of trademark/label TAJ MAHAL in relation to different edible goods by various persons is untested and not a subject matter of the present suit. The plaintiff is taking appropriate steps against unauthorized use of their trademark. The plea of defendant or TM No. 48 of 2012 Page 14 of 47 trademark being'common to trade'is baseless and untenable particularly when the defendant itself is seeking registration of the device of TAJ MAHAL. 23. Plaintiff has denied the trademark'INDIA SALAAM'with device of TAJ MAHAL on their packaging is associated with goods and business of the defendant or that the same is entirely different from the label of plaintiff. The device of TAJ MAHAL is an essential feature of the packaging of the defendant which the plaintiff has been using for its rice business since 1978. The plea of defendant is self contradictory as they are seeking monopoly over the device of TAJ MAHAL through their registration application. The allegation of interim order having been obtained by the plaintiff by making false and incomplete statements and by suppression of material facts is refuted. It is denied that the defendant has been put to great hardship thereby. The defendant is stated to be pirate and his modusoperendi has been to copy the essential features of two or more well known trademarks therefore the plea of suffering hardship is not available to him. There is no question of defendant being victimized by the passing of interim injunction. The dismissal of application therefore was urged. 24. In application under Order VII Rule 10 & Section 151 CPC, the defendant relying upon the various judgments quoted therein urged for return of the plaint for being filed in the competent court having territorial jurisdiction in the matter as neither the plaintiff nor the defendant have their offices within territorial jurisdiction of this court. In any case the relief of passing off does not fall within the purview of this court. No cause of action has accrued to the plaintiff in whole or part for pursuing the remedy here and the averment about jurisdiction of this court in the plaint are false. TM No. 48 of 2012 Page 15 of 47 25. In support of its case, the parties have relied upon more than 100 judgments. Following are the precedents submitted on behalf of the plaintiff: (i) Charak Pharmaceuticals Vs. Deepharma Ltd., 1998 PTC (18) 455 (Delhi): "user of a mark in relation to goods to be exported from India is to be deemed to constitute trademark user in India as per Section 55(1) of The Trademarks Act". (ii) Ajanta Pharma Ltd. Vs. God Gift Laboratory Pvt. Ltd., 2012 (50) PTC 112 (Bombay): "goods bearing impugned trademark meant for export does not mean that the proprietor of mark will not suffer substantial damage as even such goods are exposed to residence and citizens of this country during the process of inspection, quality control and export etc. Relied: Cadila Pharmaceuticals Ltd. Vs. Sami Khatib of Mumbai, 2011 (3) Bom. CR 587. (iii) Indian Hotels Company Ltd. Vs. Jiva Institute of Vedic Science & Culture, 2008 (37) PTC 468 (Delhi): "party having applied for registration of trademark cannot be heard to argue that the mark is descriptive/generic. (Automatic Electric Company Vs. R. K. Dhawan, 1999 (19) PTC 81 (Delhi)) Further where the plaintiff has not proceeded against other parties to contain violation of its trademark, it would not disentitle him from proceeding against the defendant". Relied: Info Edge (India) Pvt. Ltd. Vs. Shailesh Gupta, 2002 (24) PTC 355 (Delhi) ; Essel Packaging Ltd. Vs. Shreedhar Narra, 2002 (25) TM No. 48 of 2012 Page 16 of 47 PTC 233 Delhi. (iv) Coolways India Vs. Princo Air Conditioning & Refrigeration, 1993 (1) Arb. LR 401 (Delhi) : "even if plaintiff is not the originator of trademark and it is actually registered in the name of other party, the matter is between the plaintiff and said party. The defendant cannot take up cause on behalf of said party and claim protection on that score". (v) Century Traders Vs. Roshan Lal Dugar, AIR 1978 Delhi 250: "there is a distinction between a mark being 'common on register'and 'common to trade'. When there is no evidence of actual user of the mark by any party other than the suit parties, the invasion of the property right should be protected. (vi) L. T. Foods Ltd. Vs. Sun Star Overseas Ltd, 2012 (50) PTC 27 (Delhi): "the court has to apply mind to believe the documents filed by the parties short of holding a mini trial. The description of trademark on the copies of invoices produced by the parties to the custom authorities along with shipping documents were found to be different from their copies filed in the court, regarding which no justification was offered. It was observed that respective strength of the cases of parties has to be considered including the right to see the genuineness and credibility of the documents. Reference is also made to this effect in D. K. Electricals Industries Vs. Sancheti Appliances Pvt. Ltd., 2013 (54) PTC 320 Delhi. TM No. 48 of 2012 Page 17 of 47 (vii) Metro Playing Card Company Vs. Wazirchand Kapoor, PTC (Suppl.) (1) 76 (Delhi): "the device of a tractor on the playing cards manufactured by the appellant is found to be similar to the device of the tractor of which the respondent has obtained registration. Even when the device of tractor was not printed on the carton of appellant, on visual inspection prima facie case was held in favour of appellant as playing cards are purchased not only by looking at the carton but also seeing its contents". (viii) Madan Lal Arora Vs. Soni Udyog , 1997 PTC (17) 651 Delhi "the competing marks were TIGER & LION which was not phonetically similar. It was held that wire nettings are mostly purchased by carpenters who are barely literate. Both the words are known in local dialects as 'SHER'. When a product with picture of either a tiger or lion is shown to a customer, he is not expected to first ascertain whether the other brand depicting picture of lion in a different manner is also available with his normal memory and then examine the two brands by keeping them side by side. The adinterim injunction was granted". (ix) Dinesh Bastimal Jain Vs. Nirmal Singh, Cont. Case (Crl.) 3/2011, decided by Hon'ble High Court of Delhi on 09.01.2012: "with respect to a recurring cause of action where a second suit is filed, sufficient compliance with the law requiring truthful disclosure in the pleadings would be satisfied, if it is disclosed to the court that with respect to the second action, an earlier proceeding was initiated and the result thereof stated. TM No. 48 of 2012 Page 18 of 47 (x) Bengal Waterproof Ltd. Vs. Bombay Waterproof Manufacturing Company, 1997 PTC (17) 98 SC: "it is well settled that an action for passing off is a common law remedy being an action in substance of deceit under the law of torts. Whenever and wherever fresh deceitful act is committed, the person deceived would naturally have a fresh cause of action in his favour. Thus every time a person passes off his goods as those of another, he commits the act of such deceit. In cases of continuous causes of action bar of Order II Rule 2 (3) CPC cannot be invoked. (xi) Indian Herbs Research & Supply Company Ltd. Vs. Lalji Mal, 2002 (24) PTC 318 Delhi: "while deciding the question of jurisdiction of court to entertain an application for interim injunction, the averments in the plaint are to be considered and it does not depend upon the defence taken by the defendant. Relied : John Richard Brady Vs. Chemical Process Equipments P. Ltd., AIR 1987 Delhi 372; P. M. Diesel Ltd. Vs. Patel Field Marshal Industries, 1998 PTC (18) 260. (xii) Borosil Glasswork Vs. O. P. Batra, 1998 PTC (18) Delhi 101: "in a passing off action use of trademark of the plaintiff is not sine qua non. It is deceit in passing off. An action for infringement, on the other hand is statutory remedy conferred on the registered proprietor of a trademark for vindication of exclusive right to use it in relation to goods. (xiii) Smt. Vinay Chawla Vs. M/s Chanda Mama Toytronix Pvt. Ltd, TM No. 48 of 2012 Page 19 of 47 AIR 1992 Delhi 234 : "user of impugned trademark by the plaintiff was prima facie prior to that of the defendant in respect of goods manufactured by them assuming vendible character. On invasion by defendant of proprietary right of the plaintiff, an action for passing off was held proved and injunction was granted. (xiv) Kirorimal Kashi Ram Marketing & Agencies Pvt. Ltd. Vs. Shree Sita Chawal Udyog Mill, 2010 (44) PTC 293 (Delhi): "plaintiff is the prior user and registered proprietor of trademark 'Double Deer'in respect of rice. Injunction sought against the use of trademark 'Golden Deer'by the defendant. No explanations were furnished by the defendant for adoption of mark 'Deer'. It was held to be dishonest as it is not permissible to copy a prominent part of registered mark when adoption of mark is arbitrary with respect to the product in question. (xv) James Chadwick & Bros. Ltd. Vs. The National Sewing Tread Company Ltd., AIR 1951 Bombay 147: "in deciding whether a particular trademark is likely to deceive or cause confusion what is important is to find out what is the distinguishing or essential feature of the trademark already registered and what is the main feature or the main idea underlying that trademark and if it is found that the trademark whose registration is sought contains the same distinguishing or essential feature or conveyed the same idea, then ordinarily the registrar is right if he come to the conclusion that the trademark should not have been registered. The real question is as to how a TM No. 48 of 2012 Page 20 of 47 purchaser who must be looked upon as an average man of ordinary intelligence would react to the particular trademark, what association he would form by looking at the trademark and in what respect he would connect the trademark with the goods being purchased. Reference in this behalf is also made to 'Parle Products (P) Ltd. Vs. J. P. & Company, MANU/SC/0412/1972. (xvi) In N. Gangarao & Sons Vs. Anil Garg, 2006 (32) PTC 15 Delhi relying on S. M. Dyechem Ltd. Vs. Cadbury (India) Ltd., (2000) 5 SCC 573, it was held that what is to be seen in a case of passing off action between the competing marks is the likelihood of deception or confusion. The Apex Court found that the principle of phonetic similarity cannot be jettisoned and in determing the test vis. a vis. the person who has to be kept in mind as a customer of average intelligence and imperfect recollection. (xvii) In DCM Sriram Consolidated Ltd. Vs. Shree Laxmi Traders, 2009 (41) PTC 772 Delhi: "the suppression of material facts by the plaintiff in withholding reference to cease and desist notice dated 14.02.2007 served upon defendant no. 3 was held cannot be taken advantage of the fact that the plaintiff was aware of infringement since 2009 as it was not such a material fact as would have persuaded the court not to grant interim injunction even if it were disclosed in the plaint. Moreover the defendants had not thought it fit to reply to the said notice of plaintiff. What should weigh with the court is the nature of suppression pleaded in the case. TM No. 48 of 2012 Page 21 of 47 (xviii) Per Carrefoure Vs. V. Subburaman, 2007 (35) PTC 225 (Madras) on nondisclosure of a letter of the counsel for the respondent sent through the counsel for the applicant, it was observed that nothing turned on the contents of said letter as material facts had not been pleaded therein. Disclosure of the letter by the applicant in their plaint would not have tilted the balance in favour of the respondent. The contention of suppression of fact by the applicant repelled. (xix) Hidesign Vs. HiDesign Creations, 1991 (1) Arb. LR 172: Imposition of cost on the plaintiff for not making full, frank and complete disclosure of facts was deemed just at the time of disposing of injunction application with a rider that the nondisclosure shall be a relevant fact at the time of final determination of the suit and appropriate order regarding costs will be made at that stage too. (xx) Arunima Baruah Vs. Union of India, (2007) 6 SCC 120 : The suppression must be of material fact i.e. material for the purposes of determination of the lis. The logical corollary would be that whether the same was material for grant or denial of the relief. If the fact suppressed is not material for determination of the lis between the parties, the court may not refuse to exercise its discretionary jurisdiction. It is also trite that a person invoking the discretionary jurisdiction of the court cannot be allowed to approach it with a pair of dirty hands. TM No. 48 of 2012 Page 22 of 47 (xxi) Mahendra & Mahedra Seeds Pvt. Ltd. Vs. Mahindra & Mahindra Ltd., 2003 (26) PTC 434 (Gujarat): The identification of group companies and their common interest in protecting their trademark was recognized. The diverse businesses carried on by the plaintiffs group of companies are manufacture of Cars, Jeeps, Tractors, Motor Spare Parts, Farm Equipments, Chemicals, Hotels, Real Estate, Export, Computer Software etc. with annual turnover of more than Rs. 3000 Crores and it spends substantial amount on sales promotion. These facts demonstrate and indicate that Mahindra & Mahindra is a well known group of companies and is virtually a household name known to a large number of public having acquired a distinctive meaning in connection with their business and use of such trade name or deceptively similar by the defendant in all probability and with reasonable possibility likely to confuse the public. It was relied upon in 'Atlas Cycles (Haryana) Ltd. Vs. Atlas Products Pvt. Ltd., 2008 (36) PTC 269 Delhi'& George V. Records, SARL Vs. Kiran Jogani, 2004 (28) PTC 347 (Delhi): the plaintiff and its sister concerns constitute one economic entity and it is a well known international practice for companies trading in multiple jurisdiction to work with affiliate organization which have been treated as one economic unit for the purposes of proprietary rights by the courts. (xxii) National Bell Company Vs. Metal Goods Manufacturing Company (P) Ltd., AIR 1971 SC 898: Where the evidence about the breaches remaining unchallenged by the proprietor was missing, mere neglect to proceed TM No. 48 of 2012 Page 23 of 47 against the infringer was held not to necessarily constitute abandonment of the trademark particularly the infringements which are not sufficient to affect the distinctiveness of the mark even if the proprietor is aware of them. The character and extent of trade of the infringers and their position has to be reckoned in considering whether the registered proprietor is barred by such neglect. (xxiii) M/s Kumar Electric Works Vs. Anuj Electronics, 1990 PTC (26) Delhi: the contention of defendant that Olympus is a foreign trademark and the plaintiff is also a pirator, rejected as primafacie there is no evidence that the foreign company has used the trademark. (xxiv) Smithkline Beecham Consumer Healthcare Gmbh Vs. Hindustan Liver Ltd., 2002 (25) PTC 417 (Bom.): for invoking the bar of Order II Rule 2 CPC, cause of action in the earlier suit must be the same on which subsequent suit is based. Issue involved in the previous suit was found to be different from the present suit as every fresh act of importation of a fresh mould would give a fresh cause of action under Section 51 read with Section 2 (m) of The Copyright Act. 26. On the question of jurisdiction of the court, the plaintiff has relied upon following precedent: (i) State Trading Corporation of India Ltd. Vs. Government of the Peoples Republic of Bangladesh, 63 (1996) DLT 971: Primafacie the TM No. 48 of 2012 Page 24 of 47 jurisdiction of court has to be determined from the averments made in the plaint. In Exphar SA Vs. Eupharma Laboratories Ltd., 2004 (28) PTC 251 (SC), wherein objection to the jurisdiction is raised by way of damurrer and not at trial, it must proceed on the basis that the facts as pleaded by the initiator of the impugned proceedings are true. (ii) Wipro Ltd. Vs. Oushadha Chandrika Ayurvedic India (P) Ltd., 2008 (37) PTC 269 Madras, the averments in the plaint are germane. The court is not to travel to the written statement of the defendant at the initial stage of dealing with the application. (iii) M/s Nirex Industries (P) Ltd. Vs. M/s Man Chand Footwear Industries, 1984 PTC 97 (Delhi) in view of the categorical statement of plaintiff that the defendants are selling the infringing goods in Delhi was held sufficient to invoke jurisdiction at preliminary stage of interim injunction particularly when the plaintiff is claiming infringement of copyright which Delhi court has jurisdiction to try by virtue of Section 22 (2) of The Copyright Act. Reference to Hyundai Corporation Vs. Rajmal Ganna, 2007 (35) PTC 652, Delhi and Intas Pharmaceuticals Ltd. Vs. Allergan Inc. 2006 (32) PTC 272 Delhi are also made to stress the point. (iv) Pfizer Products Inc. Vs. Rajesh Chopra, 2006 (32) PTC 301 (Delhi): threat or intention to sell the offending goods in Delhi was held sufficient to entertain the suit. Ref: M/s International Film Distributors Vs. TM No. 48 of 2012 Page 25 of 47 Rishiraj, 2008 X AD (Delhi) 169. (v) Laksham Prasad Vs. Prodigy Electronics Ltd., 2008 (37) PTC 209 SC: on a part of cause of action having arisen in Delhi as averred in the plaint, the question of jurisdiction has to be considered on the basis of such averments. (vi) Boston Scientific International Vs. Metro Hospital,136 (2007) DLT 278: Only plaint and documents in support thereof need to be looked into for disposing off an application under Order VII Rule 10 CPC. Pleas of the defendant can only be examined at the stage of trial for which purpose it would be necessary to lead evidence. Ref. Ramesh B. Desai Vs. Bipin Vadilal Mehta, JT 2006 (6) SC 253. (vii) In Badat & Company Vs. East India Trading Company, (1964) 4 SCR 19 and Pradeep Gupta Vs. Haryana Financial Corporation, 93 (2001) DLT 834 it was held that where the specific allegation of plaint have not been specifically denied in the written statement, it shall be taken to be admitted by the defendant as per Order VIII Rule 5 CPC. Ref: Pfizer Enterprises SLRL Vs. Cipla Ltd., FAO (OS) No. 356/2008, decided by Hon'ble High Court of Delhi on 24.10.2008. (viii) The territorial jurisdiction of the court where there were specific averments with regard to the activities of the defendant in the plaint, was accepted in LG Corporation Vs. Inter Market Electroplasters (P) Ltd., 2006 (32) PTC 429, Delhi, Alberto Culver USA Inc. Vs. Nexus Health & Homecare TM No. 48 of 2012 Page 26 of 47 (P) Ltd., 2009 (41) PTC 197 Delhi and Ford Motor Company Vs. C. R. Borman, 2008 (38) PTC 76 Delhi. (ix) Shree Rajmoti Industries Vs. Rajmoti Oil Mill Pvt. Ltd., 2005 (30) PTC 38 Delhi - Court can proceed on the basis that the facts as pleaded by the initiator of proceedings for invoking jurisdiction of the court are correct. (x) Conzerv Systems P. Ltd. Vs. T. K. Babu, 2009 (40) PTC 225 Delh - It is only the plaint which is to be looked into to find out the disclosure of territorial jurisdiction of the court.Same was observed in Dasmesh Mechanical Works Vs. Hari Singh, 2010 (42) PTC 288 Delhi & Varehouse Infotech. Ceebros. Arcade Vs. SAP Aktienzesellschaft, 2010 (42) PTC 650 Delhi. (xi) H. K. Mayar Ltd. Vs. Owners & Parties, Vessel M. V. Fortune Express, AIR 2006 SC 1628 - Plaint cannot be rejected on the basis of allegations made by the defendant in his written statement. Plaint discloses cause of action requires determination by the court. Mere fact that in the opinion of Judge, plaintiff may not succeed, cannot be a ground to reject the plaint. (xii) To the same effect was held in L'Oreal Vs. Dushyant Shah, 2011 (48) PTC, 240 (Delhi), Unilever Australasia Vs. Shingar Cosmetics Pvt. Ltd., 2011 (45) PTC, 318 (Kntk.)and S. Oliver Bernd Freier Gmbh. & Company Vs. TM No. 48 of 2012 Page 27 of 47 Karni Enterprises, 2006 (33) PTC 574 (Delhi). 27. The citations relied upon on behalf of the defendant are: (i) S. P. Chengalvaraya Vs. Jaganath, 1994 RLR (SC) 102 - Fraud avoids all judicial acts, ecclesiastical or temporal. If a party withholds vital document to deceive and cheat to secure unfair gain & advantage then it is fraud on the court and opponent and decree obtained is a nullity. (ii) Ram Krishan & Sons Charitable Trust Ltd. Vs. IILM Business School, 2009 (39) PTC 16 (Delhi) It needs to be emphasized that the party who approaches the court for a discretionary relief, nay any relief, should candidly and forthrightly narrate all material facts in the plaint and/or the application for injunction. Concealment and deliberate misstatement of material facts would make the plaintiff liable to be nonsuited. Similar observations were made in The fairDeal Corporation (P) Ltd. Vs. Vijay Pharmaceuticals, 1985 PTC 80 Delhi & Vijay Sayal Vs. State of Punjab, JT 2003 (5) SC 241.. (iii) R. G. Anand Vs. M/s Delux Films, AIR 1978 SC 1613 - There can be no copyright in an idea, subject matter, themes, plots or historical or legendry facts and violation of copyright in such cases is confined to the form, manner and arrangement and expression of the idea by the author of the copyright work. Where the theme is the same but is presented and treated TM No. 48 of 2012 Page 28 of 47 differently so that the subsequent work becomes a completely new work, no question of violation of copyright arises.. .
(iv) J. K. Oil Industries Vs. Adani Wilmar Ltd., 2010 (42) PTC 639 (Delhi) No similarity in appearance was found in the 'Oil King' & 'King' labels of the parties to perceive attempt to deceive the unwary customers. Different font and trade dress used. Word 'King' is common in English language. Interim injunction was refused but defendant directed to maintain the account of sales.
(v) Wheels India Vs. S. Nirmal Singh, 2009 (41) PTC 529 (Delhi) Delibrate suppression of facts in the plaint as well as suppression of documentary evidence. The defendant was dealing in the same goods and had made a mark in his field of activity well before the plaintiff got registered his trademark. Sales figures of the defendant were four nearly times the sales figures of the plaintiff. Interim order granted in favour of the plaintiff was vacated and the defendant directed to maintain accounts of profits earned by it and to file the same in court on quarterly basis.
(vi) Uniply Industries Ltd. Vs. Unicorn Plywood Pvt. Ltd., 2001 PTC 417(SC) Relying on invoices having no clear particulars, letters of dealers addressed to both plaintiff and defendant and also statements before the Excise authorities which are found to be dubious, grant of injunction was held to be unjustified as these matters require to be investigated by the Registrar. TM No. 48 of 2012 Page 29 of 47
(vii) Cadila Healthcare Ltd. Vs. Cadial Pharmaceuticals Ltd., 2001 PTC 541 SC In an action for passing off on the basis of unregistered trademark the deceptive similarity is generally decided on following factors:
(a) The nature of the marks i.e. whether the marks are work marks or label marks or composite marks i.e. both words and label works.
(b) The degree of resembleness between the mark, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods.
(g) Any other surroundings circumstances which may be relevant in the extent of dissimilarity between the competing marks.
(viii) F. Hoffmann LA Roche & Company Ltd. Vs. Geoffrey Manners TM No. 48 of 2012 Page 30 of 47 & Company Pvt. Ltd., AIR 1970 SC 2062 it is important that the marks must be compared as whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trademark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trademark. To the similar effect was held in Kellogg Company Vs. Pravin Kumar Bhadabhai, 1996 PTC (16) 187 Delhi.
(ix) Kewal Krishan Kumar Vs. Rubi Roller Flour Mills P. Ltd., 2003 (26) PTC 175 (Delhi) where there was no striking similarity or affinity of sound between the competing marks which were found to be distinctive, the objection to registration of impugned mark was held unsustainable. The division bench upheld the order reported as 2007(35) PTC 848 (Delhi). Holding that the competing marks 'Shakti Bhog' and 'Shiv Shakti' in relation to Atta comprise of a common descriptive word 'Shakti' while rest of the components are completely distinctive features leaving no likelihood for anyone to be confused with anothers. SLP (C).No. 12835 of 2007 against the orders of Hon'ble High Court of Delhi was dismissed on 07.01.2008.
(x) New Look Textile Vs. K. N. Nagarajan, 2010 (43) PTC 116 Madras now a days consumerism is at its height and it cannot be taken that the consumers are so gullible in mistaking one product for another unless there are certain glaring similarities between the two trademarks. The competing marks TM No. 48 of 2012 Page 31 of 47 Minister Cotton and Minister White were held to be distinctive in their overall placement.
(xi) Creative Travels P. Ltd. Vs. Creative Tours & Travels (P) Ltd. 2006 (33) PTC 430 (Delhi) where the defendant by using the same word "creative" as part of trading style for quite long time has built up a reputation by doing huge business to the tune of Rs.100 Crores for 200506, they cannot be stopped from doing their business. If prior user favours the plaintiff, long user favours the defendants. Plaintiff was held not entitled to claim exclusive ownership of the contentious word.
(xii) Skyline Education Institute (I) Pvt. Ltd. Vs. S. L. Vaswani, 2010 (42) PTC 217 (SC) restraint to use name "Skyline" as part of respondents trading name in relation to the activities in the field of education and/or as trademark in relation to any printed material. Skyline is held to be generic word used by thousands of persons and institutions as their trade name in India and abroad. Plaintiff in the particular case had neither obtained approval of AICTB nor was affiliated to any University while the respondent had obtained requisite recognition and affiliation.
(xiii) M/s Virgo Industries (Eng.) P. Ltd. Vs. M/s Venturetech Solution P. Ltd., 2012 STPL (LE) 46677 SC Order 2 rule 2 CPC engrafts a laudable principle that discourages/prohibits vaxing of defendants again and again by multiple suits except in a situation where one of the several reliefs though TM No. 48 of 2012 Page 32 of 47 available to a plaintiff may not have been claimed for a good reason. The principle will apply to the second suit even during pendency of the first suit.
(xiv) Sh. Gopal Engineering & Chemical Works Vs. M/s POMX Laboratory, AIR 1992 Delhi 302 In an action against infringement and passing of for unexplained delay of 14 months in filing injunction application without establishing adverse effect on sales or sinister motive of the infringer, the injunction was refused.
(xv) Bhole Baba Milk Food Industries Ltd. Vs. Parul Food Specialties Pvt. Ltd. 2011 (45) PTC 217 (Delhi) suit for infringement of plaintiff's registered trademark 'KRISHNA' by the defendant. It was held that the word is a common name of God/deity and is being used by several manufacturers for similar goods both prior to the registration of plaintiff and thereafter. The plaintiff therefore, cannot claim monopoly over the mark 'KRISHNA'. Sales alone do not transcend in attaining the secondary meaning/distinctiveness of the mark substantial changes having been incorporated in the label of defendant regarding colour scheme and pictorial representation would allay the fear of confusion/deception of a reasonable and prudent customer. The appeal was dismissed by a Division Bench of Hon'ble Delhi High Court vide judgment reported as 2011 (48) PTC 235 (Delhi).
(xvi) Capital Plastic Industries Vs. Kapital Plastic Industries, PTC (suppl) (1) 146 (Delhi) if the plaintiff has discontinued and abandoned the TM No. 48 of 2012 Page 33 of 47 registered trademark no relief can be granted in his favour. Further where both parties, seem to have pirated/copied the trademark from a third person, none of them is entitled to claim interim relief if injunction.
(xvii) Prem Singh Vs. M/s Ceeam Auto Industries, 1990 PTC 149, Delhi
- when plaintiffs' own conduct is tainted and he himself is primafacie an imitator of another person' design, then the court should not normally at the pretrial stage, offer him protection.
(xviii) American Home Products Corporation Vs. MAC Laboratories Pvt. Ltd., AIR 1986 SC 137 there is no statutory definition of "trafficking". It must however involved trading in or dealing with the trademark for money or monies worth but it is not all dealing with a trademark for money i.e. objectionable.
(xix) Goramal Hari Ram Vs. Bharat Soap & Oil Industries, 23 (1983) DLT 401 The essential features of tort of passing off are well established. If the trademark in question enjoys a reputation in the public eye so as to be established as that of the plaintiff, then everytime the defendants used the trademark, they in essence pass off the goods as being that of the plaintiffs. In order to get any interim injunction in this type of matters reputation must be established in such a way as to leave little doubt that the plaintiff does enjoy such a connection with the trademark that the public generally associate the same with him.
TM No. 48 of 2012 Page 34 of 47 (xx) Ved Prakash Vs. Sameer Kumar, 1994 PTC 284 where the Government undertaking was found to have been incorporated much prior to coming off the plaintiff into picture and it appeared that plaintiff has pirated the trademark of government undertaking, the injunction was refused while directing the defendants to maintain true and proper accounts of their business. (xxi) Krishna Ceramic & Refractories Vs. Dr. V. S. Krishna Ceramics & Portries, LPA No. 108/2000 decided by Hon'ble High Court of Andhra Pradesh on 03.08.2000 - if a cause of action enables a person to ask for a larger and wider relief than that to which he limits his claim, he cannot afterwards seeks to sue for the balance relief by independent proceedings. (xxii) Chiranjee Lal Srilal Goenka Vs. Jasjeet Singh, (1993) 2 SCC 507
- It is settled law that a decree passed by court without jurisdiction on the subject matter or on the grounds on which the decreed made which goes to the route of its jurisdiction or lacks inherent jurisdiction is a coram nonjudice. A decree passed by such a court is a nullity and is nones. Its invalidity can be set up whenever it is sought to be enforced or is acted upon as a foundation for a right, even at the stage of execution or in collateral proceedings. The defect of jurisdiction strikes at the vary authority of the court to pass decree which cannot be cured by consent or waiver of the party. Similar observations were made in Dhodha House Vs. S. K. Maingi, 2006 (32) PTC 1 (SC). TM No. 48 of 2012 Page 35 of 47 (xxiii) Sarup Singh Vs. Union of India, JT 2010 (13) SC 69 where a particular court lacks inherent jurisdiction in passing a decree or making an order, it would be nullity and can be challenged and interfered with any subsequent stage say at the execution stage or even in collateral proceedings. (xxiv) Ajmer Kaur Vs. Punjab State, 1990 Civil Court Cases, 431 (P & H) if any court has no jurisdiction to entertain and try the suit, it cannot pass any order accepting or rejecting the application for temporary injunction. In any case it has to return or reject the plaint.
(xxv) St. Ives Laboratories Inc. Vs. Arif Perfumers, 2009 (40) PTC 104 (Delhi) each and every fact pleaded in the plaint does not ipso facto lead to conclusion that those facts give rise to cause of action within the court's territorial jurisdiction. The facts pleaded must have a nexus or relevance so as to show that the court where the suit has been filed is the property court of jurisdiction. Facts, which have no bearing with the lis or the dispute involved in the case, do not give rise to a cause of action so as to confer territorial jurisdiction on the court. The judgment passed upheld by division bench of Hon'ble Delhi High Court in FAO (OS) 175/2009 decided on 06.05.2009. (xxvi) Krishna Industries Vs. Kimti Lal Sharma, 2009 (41) PTC 551 (Delhi) invoking jurisdiction of court on the basis of vague allegations that the goods of defendants were being sold through out the country including Delhi makes no sense. Courts cannot be used as a tool to put a heavy burden of TM No. 48 of 2012 Page 36 of 47 litigation at far of place on the defendant so that he is even unable to defend it. Plaintiff neither residing nor working for gain in Delhi could not have filed the case in Delhi Court.
(xxvii) Dabur India Ltd. Vs. K. R. Industries, 2006 (33) PTC 348 (Delhi) DB - Composite suit for infringement of trademark, copyright, passing off and rendition of account. There is different manner of determination of territorial jurisdiction under the trademarks and copyright law on the one hand and Code of Civil Procedure on the other. It was held that a composite suit was not maintainable in Delhi on the basis of the provisions of Copyright Act alone. The order was upheld by the Division Bench vide judgment reported as 2006 (33) PTC 348 (Delhi) and also by Hon'ble The Apex Court in 2008 (37) PTC 332 (SC).
(xxviii) Associated Electronic & Electrical Industries Pvt. Ltd. Vs. Sharp Tools, 1993 PTC 85 (Kntk.) - There can be no copyright in the word or words, but the right can only be in the artistic manner in which it is written. (xxix) Alberto Culber Company Vs. Pioneer Products BA, 2010 (44) PTC 774 (Delhi) out of more than 500 documents produced on record only 2 invoices show that the goods were dispatched from Thane to Delhi. There is no evidence to show that the defendant was either trading in Delhi or cause of action accrued here. The plaint was held liable to be returned for want of territorial jurisdiction of TM No. 48 of 2012 Page 37 of 47 Delhi Court.
(xxx) AVR Engineers Vs. Sharma Moulding Works, 2008 (38) PTC 243 Delhi both parties reside and carry on business at Jallandhar. Except one sale voucher pertaining to a transaction which took place in Delhi plaintiff has been enable to provide any material about the defendants' sale or meaningful commercial presence within the jurisdiction of Delhi court to enable it to exercise jurisdiction, the plaint was returned.
(xxxi) Matrumal Dhanna Lal Oil Mill Vs. Abhishek Enterprises, 2010 (43) PTC 26 (Delhi) Suit for infringement and passing off. Filing of an application for registration in Delhi does not give rise to a cause of action when both parties are working for gain outside Delhi and the defendant has not been selling its products here. The court was held to have no territorial jurisdiction. Same was held in Parle Products Pvt. Ltd. Vs. Surya Food & Agro Ltd., 2007 (35) PTC 542.
(xxxii) 'Smithkline Beecham Consumer Vs. Hindustan Lever Ltd., (2002)1 LLJ 453 (Bom.), the court will not grant relief to a plaintiff if he adopted previous proceeding in which he could have asked for relief which he is now trying to seek by adopting successive proceeding. The question in such a case is to find out whether it was possible for him to claim in the previous proceedings the relief which he is now trying to seek in the successive proceedings. Even if, the ground for relief in the subsequent proceeding are TM No. 48 of 2012 Page 38 of 47 different from the grounds for the relief in the earlier proceedings, if such grounds urged in the subsequent proceedings were available to the plaintiff when he initiated the earlier proceeding, the court will not grant the relief and will rather refused to entertain the subsequent proceeding, in order to prevent multiplicity of proceedings. This principle of abuse of process of law applies even where there is no final adjudication of an earlier proceeding.
28. The relevant records, documents and submissions have been perused. In view of the established principle of law that only the averments of plaint as against the defence raised in the written statement, can be looked into for the purposes of deciding an application under Order VII Rule 10 CPC. The contentions and documents referred to by the defendant in this behalf will raise a triable issue which cannot be adjudicated without affording an opportunity of leading evidence to the parties. The plaintiff has invoked the territorial jurisdiction of this court on the ground that the defendant has been carrying on business within the jurisdiction of this court from its registered office at WEA, Arya Samaj Road, Karol Bagh, New Delhi. It is further stated that the defendant has been offering and supplying its goods bearing the impugned trademark/label to the dealers and distributors in Kamla Nagar, Paharganj, Ajmeri Gate, Darya Ganj, Ranjeet Nagar etc. further the suit parties are claimed to be carrying on their business and working for gain within the jurisdiction of this court. The defendant claims that the plaintiff has surreptitiously obtained exparte interim injunction against it by misrepresenting the facts. It is well within their knowledge that the defendant has actually been operating from Lahori Gate, a place very near to their own business premises. The filing of suit by M/s KRBL TM No. 48 of 2012 Page 39 of 47 Ltd. against the defendant by specifying the address of 4043/2, Lahori Gate, Naya Bazar, Delhi amply indicates that fact. It has thus been vehemently argued that the plaintiff having indulged in forum shopping, cannot be entertained by this court. It is further contended that no document whatsoever has been produced by the plaintiff to infer sail of its products bearing impugned trademark/label by the defendant in Delhi.
29. Only by seeing the defence of defendant can one perceive the shifting of its office from Karol Bagh to Lahori Gate, Naya Bazar, Delhi, it is not denied that the defendant is still maintaining an office at the given address of Karol Bagh and the same is reflected on the website. Even if, no document of sale of impugned products of the defendant in Delhi is brought on record, by fiction of law sale of goods in Delhi for export shall tantamount to sale in Delhi and provide part of the cause of action to the plaintiff within the jurisdiction of this court. I need not further deliberate on the issue on primafacie becoming convinced that the suit can legitimately be entertained and try in this court.
30. The serious contention of defendant about notice dated 14.04.2010 issued by M/s KRBL Ltd. interalia to the defendant having been totally concealed/suppressed from the court, is sought to be sidetracked by the plaintiff by asserting that only the grievance of colour combination had been raised therein by the associate company of plaintiff. The nondisclosure thereof by the plaintiff does not tilt the balance of case. It has been offered during arguments that the court may put suitable terms to the plaintiff in this behalf. The defendant on the other hand responded to the cited precedent by contending that TM No. 48 of 2012 Page 40 of 47 no reply to the notice had been sent in the same whereas the defendant had given a suitable reply dated 29.04.2010 to M/s KRBL Ltd. which is operating from the same address from which the plaintiff claims to be carrying on its business.
31. Sh. Anil Kumar Mittal is admittedly at the helm of affairs of both the plaintiff as well as M/s KRBL Ltd. having specifically taken an objection to the user of the device of 'TAJ MAHAL' by the defendant in legal notice of April, 2010, it does not lie in his mouth to contend that the same was forgotten at the time of drafting of the present suit. By not raising the grievance about the device of 'TAJ MAHAL' against the defendant in suit bearing TM No. 5/2010, the plaintiff manifestly gave an impression to the defendant that it is satisfied with the reply dated 29.04.2010. It is difficult to cull from the surrounding facts and circumstances that the nonmention of legal notice dated 14.04.2010 was only an oversight.
32. The defendant has targeted the locusstandi of plaintiff to file the suit by claiming that for last more than fifteen years M/s KRBL Ltd. is shown to have been using the trademark/label 'TAJ MAHAL' for rice in India as well as abroad. The plaintiff having failed to produce a single document of sale of its goods under this mark, is deemed to have abandoned it. According to the plaintiff however, the associate company of plaintiff has been using the trademark/label 'TAJ MAHAL' with the consent of the plaintiff. The plaintiff being the fountain head of the group companies using the trademark 'TAJ MAHAL', is equally interested in protecting its dilution. Attention to the cases TM No. 48 of 2012 Page 41 of 47 referred above where the rights of group companies in protecting their intellectual property rights have been recognized, is drawn.
33. The packaging of its products filed by the plaintiff do not at all reflect the existence of plaintiff. They bear the name and particulars of works and various offices of M/s KRBL Ltd. There is no document to reflect that it is the plaintiff who has permitted said company to use its trademark/label. Except the omnipresence of Sh. Anil Kumar Mittal in the two concerns and that they are conducting business from the same address, there is no material to discern the unity of business or common accounting. As per the figures available in the plaint, the plaintiff had not used the trademark/label after 1989 either for export or local sale. M/s KRBL Ltd. has solely been utilizing it from 1993 onwards. No document showing the expenses incurred by the plaintiff in advertisement/sales promotions activities of the subject trademark/label. The plaintiff therefore taken upon itself to secure the trademark when it is not shown to be carrying on business at all. There are therefore serious doubts about the locusstandi of the plaintiff to maintain the suit.
34. M/s KRBL Ltd. having raked up the issues by way of notice dated 14.04.2010 and being the actual beneficiary of the result of grievance, although initiated a lis against the defendant alleging that they have adopted the colour combination and other features of the celebrated packaging 'INDIA GATE' yet chose to remain silent so far as the device of 'TAJ MAHAL' used in that very impugned packaging of defendant, for unknown reasons. Even if, that company is a licensee of the 'TAJ MAHAL' trademark/label, it was eligible to take TM No. 48 of 2012 Page 42 of 47 necessary step to stop its misuse and germane to rake it up in TM No. 5/2010 itself. It would have ensured the effective and final adjudication of all the disputes concerning their packagings in one suit.
35. The plaintiff through Sh. Anil Kumar Mittal was expected to furnish reasons for not raising the entire bundle of causes of action against the defendant in the earlier suit. Applying the logic of entitlement of group companies to protect their property marks, they will also suffer the consequences of legal disabilities on the group companies choosing not to seek a particular relief in the previous proceedings for which cause of action had ripened. When plaintiff is of the opinion that the defendant is using smart modusoprendi of blending two or more established trademarks taking some of their features to carve out a new label for itself, provided all the more reasons to file a comprehensive suit in respect of the colour combination and features of the packaging of INDIA GATE & the device of 'TAJ MAHAL' so as not only to avoid the multiplicity of litigation but also the probability of diverse and varying outcome of different courts. It is not the case of plaintiff that M/s KRBL Ltd. had sought liberty of the court for taking out separate proceedings viz. a viz. the device of 'TAJ MAHAL'. Had the issuance of legal notice dated 14.04.2010 been disclosed to the court at the threshold, the court may not have passed the order of exparte injunction, in the above background.
36. From the plaint of suit bearing TM No. 5/2010, filed on record by the defendant, it had transpired that the date of accrual of cause of action of the two suits is identical i.e. second week of June, 2010. For the delay of more than TM No. 48 of 2012 Page 43 of 47 28 months in approaching the court for seeking relief in respect of alleged misuse of device of 'TAJ MAHAL' by the defendant, the plaintiff has claimed that its hands were tied by an order passed by the Intellectual Property Appellate Board in the proceedings ongoing with New Bharat Rice Mills. Even if, the plaintiff felt itself to be under disability, the rights in the subject trademark/label acquired by M/s KRBL Ltd. on account of long user of almost 20 years, could be sought to be protected through it. Even otherwise when the said proceedings with NBRM had not finalized but were subject of appeal, the plaintiff could have exercised its common law right in securing the trademark. The excuse offered to explain the delay hardly appeals to reasons. The allegation of defendant may have substance that the plaintiff had taken a chance to seek relief against the packaging of the defendant by way of TM No. 5/2010 through M/s KRBL Ltd. When the attempt did not succeed, it came forward with the present suit projecting itself to be the rightful holder of the trademark 'TAJ MAHAL' (device).
37. The plaintiff has not sincerely contested the assertion of defendant that M/s KRBL Ltd. has filed opposition to the application of defendant bearing no. 1893006 dated 08.12.2009 for registration of trademark/label 'INDIA SALAM' comprising the device of 'TAJ MAHAL' but did not raise any specific grievance with regard to the use of said device. The plaintiff has not filed any independent opposition to the said application of defendant. Knowledge of the attempt of defendant to get the impugned label registered in its name can safely be imputed to the plaintiff given the nature of its relationship with M/s KRBL Ltd. The conspicuous refrain of plaintiff further TM No. 48 of 2012 Page 44 of 47 reflects its dillydallying attitude. Here it may be relevant to note that from the office of Ld. Counsel for the plaintiff an application no. 2214436 for registration of 'TAJ MAHAL RICE TAJ GOLD' (label) with device of 'TAJ MAHAL' for goods of class 30 was submitted to the Registrar of Trademarks on behalf of S. K. Food Industries. It cannot therefore be said that the plaintiff has been meticulous in protecting its property marks.
38. Rival allegations about the parties filing incomplete/forged set of export documents in an effort to jack up their turnover, cannot be taken much of the cognizance at this preliminary stage. The allegations of the defendant against the local commission proceeding in general and the conduct of Local Commissioner in particular are not in good test particularly when there are no specific allegations against them about having exceeded the brief. There are no allegations of anybody having misbehaved with the staff or labour available at the godown of the defendant. The officials of defendant had rather manhandled and maltreated the officer and advocate of the plaintiff who were accompanying the Local Commissioner. No separate objections against the report of Local Commissioner have either been filed. It is hoped that the matter so far as the local inspection is concerned, would rest.
39. While the plaintiff has printed a close shot photograph of Taj Mahal with word mark on its packaging, the defendant has chosen a long shot of the monument of love for its packaging. In their reply dated 29.04.2010, the defendant had termed it to be a picture of Mahal providing the old world charm value to its packaging and had stopped shot of identifying it to be Taj Mahal. TM No. 48 of 2012 Page 45 of 47 The inhibition was said in the written statement by stating that the device of 'TAJ MAHAL' is being used since January, 1985. Since it is a renowned monument around the world, one cannot escape the finding of similarity in the devices on the packagings of suit parties even when the pictures have been taken from different angles. When however the overall impact of the two packagings is compared, shorn of the get up and colour combination of packaging of INDIA GATE the likelihood of potential customers getting deceived will not be very high. After all the commodity is not so cheap as to be lifted without taking into account its quality and scanning the vital details and of course the name and packaging under which these are sold.
40. From the statement of account produced on record by the defendant, it transpired that it had huge turn over of rice in 2012. The plaintiff by keeping itself under fold for more than two years after the stated accrual of cause of action due to perceived embargo, allowed the defendant to grow by leaps and bounds and thereby build huge goodwill and reputation. The growing business of defendant cannot be suddenly brought to a grinding halt. The plaintiff on its part did not show that its revenues have adversely suffered due to the emergence of defendant. Ironically, the plaintiff has not claimed any relief of copyright although it has been spelled out in the body of plaint.
41. In view of aforegoing discussions, there is no material to discern the likelihood of plaintiff suffering irreparable loss and/or injury in case the injunction sought for is declined. As against the inconvenience to the plaintiff on denial of interim relief, the defendant will comparatively suffer more on TM No. 48 of 2012 Page 46 of 47 grant thereof. The plaintiff also failed to make out a very good primafacie case in its favour. The claim rather has dents about its locus and disclosure of complete facts.
42. As a sequel, the application under Order VII Rule 10 CPC of the defendant is hereby dismissed. The injunction application under Order XXXIX Rule 1 & 2 CPC of the plaintiff is also dismissed and the interim order of 11.12.2012 is recalled. The application under Order XXXIX Rule 4 CPC of the defendant is hereby allowed. The defendant is at a liberty to utilize the goods seized by Ld. Local Commissioner during local inspection proceedings albeit on retaining one item from each category of the seized goods.
43. Put up on 15.07.2014 for admission/denial of the documents and framing of issues.
Announced (Sunil K. Aggarwal) Addl. District Judge10 (Central) Delhi/12.03.2014 TM No. 48 of 2012 Page 47 of 47