Karnataka High Court
M/S Unilever Australasia vs M/S Shingar Cosmetics Private Limited on 18 March, 2010
Equivalent citations: AIR 2011 KARNATAKA 30, 2010 (4) AIR KANT HCR 730 (2010) 3 KANT LJ 381, (2010) 3 KANT LJ 381
Author: S.N.Satyanarayana
Bench: S.N.Satyanarayana
IN THE HIGH COURT OF KARNATAKA AT DATED THIS THE 28TH DAY or MARCH 2o1oj;_. A' BEFORE THE H()N'BLE MRJUSTICE _ CIVIL REVISION PETITION Nof2s2 o1af'.:Ie.oro9 " BETWEEN M / s Unilever Australasia~._ 2o«~22 Cambridge St, Eppiilg Nsw 2121, Australia, V' = Rep. by its Poweraof Atto1'ney:'Ho1der_, " «V Mr.Jayant Deshparlde. Petitioner [By Sfi.Uda'yariiorliig331%.Co:u:nsei':ifo1%.:CREST LAW PARTNERS) AND: 1. M/s._Si:1ingar Cosmetics Private Limited A conapaxvry registered under the ; 'Companives Act, 1956 and having its "P1jincjpa1 piacvenf business at No.71, . V ' Kalpataru Nutan Laxmi Society. No.9, JVPD Scheme, V.i.Ie..PazfIe.,{3N) . M11}m'baj?4{)0 049 Re1:3.¥3y= its authorised signatory Mrfiitesh Topiwaia. r V' ' Mr/s.Paramount Cosmetics {India} Ltd Company registered under the Companies Act, 1958 and having its Registered office at No.A- 1 / 22 1 1 , III Phase, GIDC, Vapi, Bulsar, Gujarat -- 396 195 "Y -V » ,,,gLppiication os.N£$';s362/2009 on the file of the Principal _'<:i:,y Sessions Judge, . (CCH--1()), Bangalore, 4-(Ihis Petition having been heard and reserved for .' Orders, this day the Court pronounced the foiiowing: Rep.by its Managing Director, Mr.Hitesh Topiwala 3. M/s.Paramount Kumkum Private Limited ' A company registered under the Companies Act, 1956 and having its _ _ ._ Principal place of business at.No..?<I, Fialpataru Nutan Laxmi Society, NS Road _ ' V "V e V No.9, JVPD Scheme, Vile Parle * ' Mumbai 400 049 _ _ Rep.by its authorised signatory Mr}-Iitesh Topiwala. 4. Hindustan Unilever._Limited{ :4 V Rep.by Sr.Manage'r.,..Jayant{_Deshpar1de, A company registered. under " . CompaniesAct, 1V9v5e and 'h.ax;1ri<s*_its" " Principal 0ffiC_'€ at; e V ' Hitldustan ljrlilever F§ouse., j V 165/ =166,fBackbay'-Recianiatione V Muznbai :t=0:Q'02t3. A. ... Respondents
[By for ALNT Legail Thisttpetitjon is Afiledgtznder Section 115 of CPC against the V, .-_§}udgment"' Decree dated 09. 12.2009 passed on dis.missin§'_'tl.'1es:=application filed under Sec.20, 21 r/W Order 7 nae 1..;:'(:}{;{3 of CPC.
'*7 Shaving Cream, After Shave Lotion. The said trademarks are renewed from time to time are in force up to 21.10..2'0.ji2_;-ma 10.7.20 18 respectively.
3. The 2*" piaintiff is a com;-iany-I marketing and selling same proiducts "since licence from 151? plaintiff grarit.ed its _gfaVoi1t""to"juse,*0 manufacture and get nianufact_11red._ai1y goodsnsing the said trade mark "{I\lS'I'INC'l""" years in terms of agreement entered :n:q~t.:'perweein_§ (jg 01.03.2006.
Plaintiff No,_-S: registered as "INS'l'INC:l'; of assignment dated
10.O5.:200--.7'. 00 plaintiff has been continuing the business of of same range of products man_1ifaetured"'b},.rVVViVSt plaintiff by virtue of assignment in its v:'fav_o'tL~.'0 assignment of proprietorship of trademark fat*0ur, the 3"' plaintiff recognised the earlier licence by 1st piaintiff in favour of 21"' plaintiff and ' "'eonfinned the same by an agreement dated 01.06.2007.
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4. According to plaintiffs, defendants are engaged in manufacture and sale of fast moving consumers goovds,'7The 15* defendant manufactures and exports, imports and distributes cosmetics and V ._ including Deodorants, Shaving Cre;ams1,:A4ete."~__It* plaintiffs that the defendants having' >' Plaintiffs trademark and" rnalafide V intention of taking trade mark "INSTINCT" have now released Deodorant and Shower Gel I "Axe INXTINCT".
According to ill/ford' "INX?1'INCT" used by defendants is prima facie. phonetically and deceptixrely sinciillarf 'ihe---r:e'gi'stered trademark "INSTINCT" of plaintiffs. 'deferidants with a View to en--cash the 'l V' "of trademark "INSTINCT" are Widely and distributing Body Deodorants under " mark 'Axe INXTTNCT through their "i..,distxibtitAers, stockists, dealers, agents and resellers all the country. M4,} and faithfui account of all the revenues earned by the defendants through sale of goods and products trademark 'INX'"i'INC'I" to pay to the piaintiff ' amount that is equivalent to the_, .r»ev_e4nuc' if defendants by the sale, export of such goods, products'. or services',iri§_in.di.aj for 2 L' permanent mandatory injunctigonfi defendants from passing off any 'f-V_or::_ as though such goods or products are:,of--vthe asing the trade mark udeceptiveiy similar for the products.,.Q1iv:_gV;gods' V
6. Inthe 131 defendant who is revision petitioner ""neia-:n,V" enteredgfappearance, filed an application _ A under sam».sii2e,, 2;;/w Order VII Rule 1 1(i)[a) of the cm} »Proceda.1:rc.gCode__praying for rejection of the piaizit as against the ground that the City Civil Court, _ s Bangalore, ' does not have territoriai or in personam .,xjt;ris'diction over defendant No.1, as there is no cause of against defendant No.1 and hence the piaint merits
-~re_§ection. It is the case of defendants that IS' defendant is a "*1 -3- company incorporated in Australia, it does not have any presence including office in India, it has no business or properties in India, it is a manufacturer of variou.s._prod-ugcts.' including the world famous Axe range of prod;;_cts; K it be sold to various companies, the find defendant one such":
company purchases the products',rnanufactured '~ defendant, which is sold "Aiistraiial lllthvereafter. V imported in to India b3?~.2'"' deienndant,»_.as such, the entire business of defendant is no part of the business occurs jurisdiction of the Indian Cour; cs;t_cums at Bangalore.
7. Itiisllthe of No.1 that under Section 20 of me cn}i1--«., hProCe'(V:_1nic~'e: 'cede, 1908 the City Civil court, will have--...jt1risdiction only in cases where the 'defe~ndants«--.residing, canying on business within the jurisdiction since the 1*" defendant does not reside. or actually carry on business or work for gain within theijurisdiction of the Courts at Bangalore, no part of the cause of action arise within the territorial jurisdiction of WCGU.I'tS at Bangalore. Even if plaintiffs have any right upon "*2 registration of alleged trade mark, such right cannot.-span beyond the boundaries of the country and is linxitzeti application to the geographical limits of Repubiic ' and no right of infringement or passing off 'clairnetl,V if against defendant No.1, who is not aituateci in'~India has not done any busii1ess'l_iri--~._India'.~ Tne_ 15" r L' defendant as shown in the it_seif..is*«lin_ Aiistralia , which confirm that defen.d'ant'l--_"NC:, place of business in India, therefore? against 1*"
defendant file a suit against lat also cannot entertain such in filing suit against lst defendant__is a which merits rejection. The 15"
defendant stewed' copyhofvthe application on the plaintiff on 'l V. -08.°ié.2».f){}9}' .,'i'he did not seek time to file objection aplplication. Instead orally submitted their objection said application before the Court below.
".After fieaiing the counsel for both parties the Court below "_disrriiSsed the said application by its order dated 09.12.2009. The 13' defendant being aggrieved by the Said order has "1 -13- of Section 134 of the Trade Marks Act could never have arisen and the plaintiffs could never have sued the defendants within the territorial jurisdiction of the Cotnsts at Bangalore and the Court below has failed to appreciateffojthaat the vakalatnarna having been rejected the Order VII Rule 11 of the cpc-I co-uld --"4;1o_tV14"ji--La;»3é" viieeiy if entertained.
9. In this revision the resipovnderltshwlflo p'la;i'ntiffs in " i court below entered ;_,appearanc:ev._ through' --counsel and contested the revision on" }the respondents did not" file. 'the avennerlts made in the revision petition;':V:'prooe'eded __to justify that the order of dismissal Br. defendvaritls application under Order 7 Rule , '_ 1l,_»»(§PC_iAis justai--1dVp_roper and does not require to be revised ":2 » this ..r.fe'v..1',sion petition. 10.9 -of the respondents is that the revision itself is not---..mai_ntainahle for the reason that the aileged power of holder of IS' defendant is not competent to file the The power of attorney said to be executed by W """\ -14- defendant in his favour is not properly stamped and does not confer any right on him to represent himself as theLagent.V'Of $3' defendant,/petitioner herein. Further, the "
attorney holder of petitioner is none other arr etnpifoyee if of the 2nd defendant, therefore, there the part of defendants 1 and"2v"'neforeA'the see * if that the attempt of plaintiff against them is thwarted at if 1 }. After connsel appearing for the petitior1er'i:::"'as'V. appearing for the respon:d;ents',AV..:tilv1e po1rits""arise for consideration in this revision,'; V f id i h _1) of the trial Court in rejecting 'the anplicatiori filed by the 15' defendant under 'Sections 20, 21 r/w Order VII Rule i1[1)[a) of the
-- ~ for interference?
2) the revision filed by the 1st defendant through its power of attorney holder is vfmaintainabie ?
3) What order ?
-39- Rule 1 1, C?C. Coming to the later part of order dealing with rejection of application under order 7 Rule 11 CPC, it isiseen that the contention of the petitioner herein is Code of Civil ?rocedure, 1908, Section 15 with the place of suing, the relevantllprmvisionwhich. with the suit on hand is Section 20, reads_1v_;as it "20. [S 1?} Other suits institfitcdl where the defendants t'r'asid_é gauge of action arises.
Subject ,to"~tl;ie every suit shall ,-bel"':né1stigtec1j_,:;i 'Con:r*£_'.vithin the local 'Of V ta) deferidant, or each of the l'dVefe11da';nts*v_Where there are more than one, at of the commencement of the actually and voluntarily resides, or on business, or personally works or
(b) any of the defendants, where there are more than one, at the time of the commencement of the suit, actnaiiy and voluntarily resides, or '-'carries on business, 'vi . A' ope"-3;,nqi':h¢ sagneisaa maintainable and the plaint filed as 'a§ainstvV_Wadefevndant is required to be rejected. It is also the 'V};ii_"L:defendant that piaintiff has not stated at any if in has referred to any address of 15' defendant in . It is the contention of 1*" defendant that plaintiff .z().
or personaily works for gain, provided that in such case either the leave of the Court given or the defendants who do not re.sidi§; or carry on business, or personaily;---- '' for gain, as aforesaid, acquiesce--~~i--.n:~sueh institution; or {C} the Cause' of action," wholly in part, arises.
be deemed to sole or principal officev»iri'iIndia»e»Qif'fLn fesgiect of any act.io;:i 9.Il§if place Where "ajjj-sAu¥:)oitdinat.e' office, at such
16. could said provision of iaw, the suit filed aigairistffl-*?f defe«ndant is contrary to Section 20 of point in""i3f1e'§i1aint that 16* defendant has a place of business "-1 -21- ought to have made such statements to bring this suit within the territorial jurisdiction of the Courts at Ba.ngaio~te, without such a statement, there can be no cause.of'aei;ion"a-s_ _ against 15* defendant and the plaint is required on that count. Since 15* defer1dant__has..neithei'.,i'esided__ nor.' ca.I'ryi1t1g on any sales activity Within the territorial jurisdiction of the Courts at is not maintainable under eiren if the plaintiffs have any the trademark of "1NsnNc1%,"the beyond the geographicaié of India. Admittedly, 181 defc§ndaz_1tAis;Conducting__its business in Australia, hence, does notieonie -teirritotial jurisdiction of this Court. The relief the as against 18* defendant is i i '-epgttaiterritoriai far beyond the jurisdiction of court pvéiottr; :H»enee;'e.sought for dismissal of the suit. 1'3."-F11" sefejttoh 20, cpc is looked in isolation with other provisions law, the contention raised by 15* defendant "..fl.aAppe_ars"'to be just and proper and prima facie, it appears iv'?
entrepreneur it is difficult for them to go and challenge the big companies and multinationals at their doorste';h)';'»9.To protect their interest, certain provisions are under the Trade Marks Act, 1999. Section _« Marks Act, 1999, deals with the rihghtbiiof suits where there is case of infringenierit._9to right. Section we of Trade Vrziode. 9 method and the forum before suit cotiidvvvbe filed. The said Section reads as V1'1n(ier9':9';'k\ Q = "134. inf;-h1ge'meii£;"*--"etc.. to be instifixterihévfore (:1)No.eLiit;..__l:'<. A 9' la} ' .the.":i'iifringement of a registered it 9 trade V 1'I}§,LI"AL',; A01'.
H3} ~.._re1at:ing to any right in a registered tirade or for passing off arising out of the use defendant of any trade mark which is identical with or deceptiveiy similar to the plaintiffs trade mark whether registered or unregistered, Section of Trade Marks Act empower the plaintiffs " --«to'«fi_le~.a stzitlfor' infringement etc., before the District Court. the said Section includes a non--abstante H which specifically excludes application of the shall heinstituted in any court inferior to a District Court having jurisdiction to try the--___ suit. 1, 4 (2) For the purpose of clauses (a) and (b) A' section (1), A "District Court having "ll shall, notwithstandirig anythingcontained 2 Code of Civil Procedure, 1908 C for the time being in force, Vlinclude ag Court within the lirnits__ of jurisdiction, at the time of the suit or other proceeding, jperson the suit or proceeding, more than one such personselany oi7.the:n,:,lact11aily and voluntarily" ~res-ides'§.; or "carries ""ou' it business or persoriaily for gain; _ h '" -. ' ' Explanations for the giurposes of sub--section (2), "persion:"__Tir1cludes' «tljieregistered proprietor and the, registereéd' user. "