Section 134 of the Trade Marks Act, 1999, provides an additional forum for infringement suits
Introduction:In the dynamic landscape of trademark litigation, where brand identity and territorial jurisdiction collide, the case of Corona Remedies Pvt. Ltd. vs. Umac Pharmaceuticals & Ors., decided by the Delhi High Court on August 10, 2023, emerges as a significant pronouncement on the scope of territorial jurisdiction in intellectual property disputes. This first appeal, adjudicated by Justice C. Hari Shankar, challenged the Additional District Judge’s (ADJ) decision to return a trademark infringement suit for lack of territorial jurisdiction. The appellant, Corona Remedies Pvt. Ltd., sought to protect its registered trademark “MAC-RD” against the respondents’ allegedly infringing “MAC-DSR” mark, used for similar pharmaceutical products. The High Court’s reversal of the ADJ’s order underscores the interplay between Section 134 of the Trade Marks Act, 1999, and Section 20 of the Code of Civil Procedure, 1908 (CPC), offering a nuanced perspective on jurisdictional competence in trademark suits. This case study explores the factual matrix, procedural intricacies, legal issues, parties’ arguments, judicial precedents, the court’s reasoning, and the broader implications, painting a vivid picture of a jurisdictional tug-of-war in India’s pharmaceutical trademark arena.
Detailed Factual Background:Corona Remedies Pvt. Ltd., a pharmaceutical company based in Ahmedabad, Gujarat, manufactures a combination drug comprising Rabeprazole Sodium and Domperidone SR, sold under its registered trademark “MAC-RD.” The company alleged that Umac Pharmaceuticals (Respondent No. 1), based in Nangloi, Delhi; Hemkunt Medical Store (Respondent No. 2), located in Govindpuri, Kalkaji, New Delhi; and Athens Life Sciences (Respondent No. 3), operating in District Sirmour, Himachal Pradesh, were infringing its trademark by using “MAC-DSR” for a similar combination of Pantoprazole Sodium (EC) and Domperidone SR. Corona claimed to have discovered the infringing products in South East Delhi in June 2018, specifically citing a purchase from Hemkunt Medical Store, evidenced by an invoice dated June 12, 2018, issued to one Prashant Thakur for 10 MAC-DSR units worth Rs. 850. The invoice, marked as ‘A,’ was issued on the prescription of Dr. Anil Kumar. Corona further asserted that its MAC-RD products were sold extensively in South East Delhi through authorized distributors like Novopharm and at outlets such as Balaji Medicos in Kotla Mubarakpur, establishing its business presence in the region. Additionally, Corona’s products were available on e-commerce platforms like 1mg.com and apollopharmacy.in, accessible within South East Delhi. The respondents, alleged to be selling MAC-DSR in areas like Okhla, Badarpur, and Kalkaji, were accused of trademark infringement and passing off, prompting Corona to seek a permanent injunction to restrain their use of the deceptively similar mark.
Detailed Procedural Background:The dispute originated in CS(COMM) 328/2019, filed by Corona Remedies Pvt. Ltd. before the Additional District Judge, South-East District, Saket, Delhi, seeking a permanent injunction against the respondents for trademark infringement and passing off. The suit was instituted by Dr. Atul Pansuria, Associate Vice President, under a Board Resolution dated September 21, 2017. On July 25, 2018, the ADJ issued summons and granted an ex parte ad interim injunction in Corona’s favor. By August 16, 2018, all respondents were duly served, but they failed to appear, leading to an ex parte order against them on September 24, 2018. The only witness, Bhupender Kumar, Corona’s attorney, testified as PW-1, filing an affidavit and relying on documents, including the invoice from Hemkunt Medical Store. On September 5, 2020, the ADJ returned the plaint, holding that the court lacked territorial jurisdiction, primarily due to insufficient evidence linking Hemkunt Medical Store’s sales to the infringement and suggesting its impleadment was merely to confer jurisdiction. Aggrieved, Corona filed RFA-IPD 7/2022 under Section 96 of the CPC, along with CM APPL. 378/2021, before the Delhi High Court. The respondents remained ex parte, and the appeal was heard by Justice C. Hari Shankar, who delivered an oral judgment on August 10, 2023.
Issues Involved in the Case: The case centered on a singular yet critical legal question:
Whether the Additional District Judge, South-East District, Saket, possessed territorial jurisdiction to entertain Corona’s trademark infringement suit under Section 134 of the Trade Marks Act, 1999, or Section 20 of the CPC, given the locations of the parties and the alleged infringing activities in South East Delhi? This issue encompassed sub-questions, including whether Corona’s business activities and sales in South East Delhi satisfied Section 134’s requirements, whether the respondents’ alleged sales of MAC-DSR in the same region constituted a cause of action under Section 20(c), and whether the ADJ erred in dismissing the invoice evidence and Hemkunt Medical Store’s role as insufficient to establish jurisdiction?
Detailed Submission of Parties:Corona Remedies asserted that Ld. Trial Court erred in returning the plaint, as the suit was territorially maintainable under both Section 134 of the Trade Marks Act and Section 20 of the CPC. Corona emphasized paragraphs 43 and 44 of the plaint, which detailed the cause of action arising in South East Delhi in June 2018, when it discovered the respondents’ MAC-DSR products. The plaint specifically averred that Corona procured the infringing product from Hemkunt Medical Store at Govindpuri, Kalkaji, within the Saket court’s jurisdiction, supported by the June 12, 2018 invoice. Corona further asserted its business presence in South East Delhi, with MAC-RD sales through distributors like Novopharm and at Balaji Medicos in Kotla Mubarakpur, invoking Section 134(2), which allows suits where the plaintiff carries on business. Under Section 20(c), Corona argued that the respondents’ sales in areas like Okhla, Badarpur, and Kalkaji constituted a cause of action within the Saket court’s jurisdiction. Corona also highlighted its e-commerce presence on platforms accessible in Delhi, reinforcing jurisdictional ties. The respondents, having been ex parte throughout, did not file any response or appear in the appeal, leaving Corona’s averments unrebutted.
Detailed Discussion on Judgments Cited by Parties:The court’s analysis relied on a single precedent, cited by Corona, which clarified the jurisdictional framework for trademark suits:
Ultra Homes Construction Pvt. Ltd. vs. Purushottam Kumar Chaubey, 227 (2016) DLT 320 (DB): In this Delhi High Court Division Bench decision, authored by Justice S. Ravindra Bhat, it was held that Section 134 of the Trade Marks Act provides an additional forum for infringement suits, beyond the courts with jurisdiction under Section 20 of the CPC. Section 134 allows a plaintiff to file a suit where they reside or carry on business, irrespective of the defendant’s location or the cause of action’s origin, supplementing Section 20’s provisions based on the defendant’s residence or cause of action. Corona relied on this to argue that its business activities in South East Delhi, through distributors and sales, conferred jurisdiction on the Saket court under Section 134, while the respondents’ sales established a cause of action under Section 20(c). The court applied this precedent to affirm that both provisions independently supported the Saket court’s jurisdiction, given Corona’s averments of local business and infringing sales.
Detailed Reasoning and Analysis of Judge:Justice C. Hari Shankar delivered a concise yet robust judgment, overturning the ADJ’s decision for its failure to appreciate the plaint’s averments and the applicable legal framework. The court identified three reasons in the ADJ’s judgment for returning the plaint: Corona’s business base in Ahmedabad, Respondent No. 1’s operations in Nangloi and Respondent No. 3’s in Himachal Pradesh, and insufficient evidence linking Respondent No. 2 (Hemkunt Medical Store) to the infringement, with its impleadment deemed a jurisdictional ploy. The court found these reasons flawed, particularly the ADJ’s exclusive focus on Respondent No. 2 and neglect of paragraphs 43 and 44 of the plaint.
The court emphasized that paragraphs 43 and 44 clearly averred a cause of action in South East Delhi, with Corona procuring MAC-DSR from Hemkunt Medical Store in Govindpuri, Kalkaji, supported by the June 12, 2018 invoice. The plaint further detailed respondents’ sales in areas like Okhla and Badarpur, within the Saket court’s jurisdiction, satisfying Section 20(c) of the CPC, which allows suits where the cause of action arises. The court criticized the ADJ’s dismissal of the invoice for lack of Prashant Thakur’s testimony or additional records, noting that the respondents’ ex parte status left Corona’s averments unchallenged. Requiring further proof at the jurisdictional stage was deemed unnecessary, as the plaint’s allegations sufficed to establish a prima facie cause of action.
On Section 134 of the Trade Marks Act, the court noted Corona’s averments of carrying on business in South East Delhi through MAC-RD sales via Novopharm and Balaji Medicos. This satisfied Section 134(2), which permits suits where the plaintiff conducts business, regardless of the defendant’s location. The court also considered Corona’s e-commerce presence, per paragraph 17, as reinforcing its business activities in Delhi, accessible within the Saket court’s jurisdiction. Citing Ultra Homes, the court affirmed that Section 134 provides an additional forum, complementing Section 20, and both provisions independently conferred jurisdiction on the Saket court.
The court found the ADJ’s analysis deficient for ignoring Section 134 entirely and misapplying Section 20 by overemphasizing Respondent No. 2’s role while disregarding the plaint’s broader averments. The respondents’ ex parte status further weakened any challenge to Corona’s claims, rendering the ADJ’s findings unsustainable. The court concluded that the suit was competently instituted, warranting its remand for a merits-based adjudication.
Final Decision:On August 10, 2023, the Delhi High Court allowed RFA-IPD 7/2022, quashing the ADJ’s judgment dated September 5, 2020. The court remitted CS(COMM) 328/2019 to the Additional District Judge, South-East District, Saket, for adjudication on merits. The interim injunction dated July 25, 2018, was revived, to remain in force pending further orders by the ADJ. No costs were ordered.
Law Settled in this Case:The judgment clarified key principles governing territorial jurisdiction in trademark suits:
Section 134 of the Trade Marks Act, 1999, provides an additional forum for infringement suits, allowing filing where the plaintiff carries on business, independent of the defendant’s location or cause of action (Ultra Homes).
Section 20 of the CPC complements Section 134, conferring jurisdiction where the defendant resides, carries on business, or the cause of action arises, wholly or in part.
Averments in the plaint alleging the plaintiff’s business activities or the defendant’s infringing sales within a court’s jurisdiction suffice to establish territorial competence at the preliminary stage, especially when unchallenged by ex parte defendants.
Courts must consider all relevant plaint averments, including those under Sections 134 and 20, and not restrict analysis to a single defendant’s role, ensuring a holistic jurisdictional assessment.
Evidence like invoices, even without corroborative testimony, can establish a prima facie cause of action for jurisdiction, absent rebuttal from defendants.
E-commerce sales and accessibility within a court’s jurisdiction reinforce a plaintiff’s business presence under Section 134, reflecting modern commercial realities.
Case Title: Corona Remedies Pvt. Ltd. Vs. Umac Pharmaceuticals & Ors.
Date of Order: August 10, 2023
Case No.: RFA-IPD 7/2022
Neutral Citation: 2023:DHC:5718
Name of Court: High Court of Delhi
Name of Judge: Justice C. Hari Shankar
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
