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* IN THE HIGH COURT OF DELHI AT NEW
DELHI
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CS (OS) 2605/2013
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M/s
KHUSHI RAM BEHARI LAL
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..... Plaintiff
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Through:
Mr. Ajay Amitabh
Suman, Mr. Amit
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Chanchal Jha and Mr. Vinkay Kumar Shukla for
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Mr. S.K. Bansal, Advocates.
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versus
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P.V
KANAKARAJ TRADING AS KALPATHARU
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TRADING CO.
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..... Defendant
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Through: Mr. Manish Gandhi, Advocate.
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CORAM: JUSTICE S. MURALIDHAR
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O R D E R
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16.09.2016
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IA No. 5529/2014 (under Order VII Rule 11 CPC)
1.
This is an application under
Order VII Rule 11 CPC filed by the Defendant seeking rejection of the plaint on
the ground that the Plaintiff has sought to combine two causes of action i.e.,
one for passing off of the trademark and the other for infringement of
copyright without there being necessary basic averments in the plaint as to how
the causes of action for the said reliefs have arisen within the territorial
jurisdiction of this Court.
2.
It is not in dispute that in the
present suit the Plaintiff, having its registered office at 5190, Lahori Gate,
Delhi–110006 and its corporate office at 81-B, Central Avenue, Sainik Farm, New
Delhi-110062, is seeking two reliefs against the Defendant located in
Karnataka. One is for a permanent
CS (OS)
No. 2605 of 2013 Page 1 of 10
injunction to restrain the Defendant from passing off its trademark with
device of „Taj Mahal‟ used on the rice sold by it as that of the Plaintiff
which uses a nearly similar mark on the Basmati rice sold by it in the domestic
market and exported by it outside India. The other relief is for a permanent
injunction to restrain the Defendant from infringing the Plaintiff's copyright
in the said trade label with device.
3.
As far as the suit for
infringement of the copyright is concerned, it is again not in dispute that by
virtue of Section 62 (2) of the Copyright Act, 1957, the Plaintiff can
institute the present suit in this Court notwithstanding that the Defendant has
its office and is carrying on its business in Bangalore, Karnataka.
4.
The controversy then is as
regards the relief of passing off. The case of the Plaintiff as spelt out in
para 37 of the plaint reads as under:
“37. That this Hon‟ble Court has the territorial jurisdiction to try and
adjudicate the present suit. The defendant is selling the impugned products
under the impugned Trade Mark TAJ MAHAL WITH DEVICE OF TAJ MAHAL within the
territorial jurisdiction of this Hon‟ble Court i.e. Lahori Gate, Alipur etc.
and other part of Delhi. The Defendants impugned acts of infringement of
copyright and passing off are taking place in Delhi i.e. within the
jurisdiction of this Hon'ble High Court. The cause of action in whole and for
in part has arisen within the jurisdiction of this Hon‟ble Court.
Besides this, the Plaintiff is having its Registered Office at 5190
Lahori Gate, Delhi-110006. The Plaintiff's corporate office is situated at
81-B, Central Avenue, Sainik Farm, New Delhi-110062 which is its nerve centre
and from where the Plaintiff has been controlling each
CS (OS)
No. 2605 of 2013 Page 2 of 10
and every aspect of its said goods and business
under their said Trade Mark/Label. The Plaintiff is also working for gain and
carrying on its said goods and business within the territorial jurisdiction of
this Hon'ble Court. This Hon'ble Court as such also has a jurisdiction to try
and adjudicate the present suit by virtue of Section 62(2) of the Copyright Act
1957.”
5. The submission of Mr. Manish Gandhi, learned counsel for the
Defendant, based on the decisions in Dabur India Ltd. v. K. R.
Industries AIR 2008 SC 3123, Dhodha House v. S.K. Maingi (2006) 9 SCC 41 and
Lakhan Pal Shyam Kumar v. Ram Prasad Gupta 190 (2012) DLT 659 is that the above averments are too general and vague and not
sufficient to enable this Court to exercise jurisdiction as regards the relief
of passing off. According to Mr. Gandhi, the Plaintiff ought to have given
particulars of where it found the Defendant to be selling its products in
Delhi. He submits that merely stating that the Defendant was selling the
impugned products at Lahori Gate, Alipur and several parts of Delhi is
insufficient.
6. On the other hand, Mr. Ajay Amitabh Suman, learned counsel for the
Plaintiff, seeks to place reliance on a recent decision dated 3rd August, 2016 of the Division
Bench (DB) of this Court in FAO (OS) 145/2016 (M/s RSPL Limited
v. Mukesh Sharma) where while setting aside the judgment dated 5th April, 2016 of the learned
Single Judge which had allowed the application of the Defendant in that matter
under Order VII Rule 10 CPC on the ground that the averments in the plaint
regarding the cause of action which had arisen within the jurisdiction of this
Court were bereft of particulars, the DB relied on the decisions in Exphar
SA v. Eupharma
CS (OS)
No. 2605 of 2013 Page 3 of 10
Laboratories Limited (2004) 3 SCC
688 and Om Prakash Srivastava v.
Union of India (2006) 6 SCC 207 held that
the facts pleaded by the Plaintiff
must be taken to be true while
considering the objection as to territorial
jurisdiction under Order VII Rule
10 CPC. Once there were averments to the
effect that the Defendant was 'conducting, soliciting, rendering the
impugned services
with the impugned
trade name' within
the territorial
jurisdiction of the Court, “then
it follows that this Court would have to
proceed with the trial of the
suit and cannot return the plaint under Order VII
Rule 10 CPC.”
7. This
Court agrees with
learned counsel for
the Plaintiff that for
the
purposes of the relief of passing
off, the above averments in para 37 of the
plaint that
the Defendant was
selling the impugned
products under the
impugned trademark was within the
territorial jurisdiction of this Court have
to be taken to be correct. In Dhodha
House (supra), the focus of
the Court
was on the question whether the
Plaintiff in that case carried on the business
in Delhi. In para 51 the Supreme
Court observed:
"For our purpose, the question as to whether
the Defendant had been selling its produce in Delhi or not is wholly
irrelevant. It is possible that the goods manufactured by the plaintiff are
available in the market of Delhi or they are sold in Delhi but that by itself
would not mean that the plaintiff carries on any business in Delhi."
8. It was
in that context that the Supreme Court observed that the mere fact
that goods
may be available in
Delhi was insufficient to
infer that the
Plaintiff
was carrying on business in Delhi. In the present case, however, the
specific
averment is that the Defendant "is selling the impugned products
CS (OS)
No. 2605 of 2013 Page 4 of 10
under the impugned Trade Mark TAJ MAHAL WITH DEVICE
OF TAJ MAHAL within the territorial jurisdiction of this Court."
Consequently, the above decision is of no assistance to the Defendant.
9.
In Dabur India Ltd. v. K. R.
Industries (supra), the facts
were that a composite suit was filed for both infringement of copyright and for
the relief of passing off of the trademark. The learned Single Judge held that
as far as the passing off action was concerned, this Court did not have
territorial jurisdiction as there was no documentary evidence to show that the
Defendant, located in Andhra Pradesh, was selling goods in question in Delhi.
This view concurred with by the DB and further by the Supreme Court. It is,
however, not clear what the precise averments in the plaint were as they have
not been set out in the judgment by the Supreme Court. The Supreme Court
appears to have proceeded on the basis that the averments in the plaint were
insufficient for the Court to come to a conclusion that the Defendant was
selling its goods in Delhi. The above decision does not alter the settled legal
position that for the purposes of Order VII Rule 10 CPC, the averments in the
plaint will have to be taken to be correct.
10. Likewise,
in Lakhan
Pal Shyam Kumar v. Ram Prasad Gupta (supra),
although the precise averments in the plaint in
that case on the aspect have not been set out in the judgment itself, a careful
reading reveals that the averments were indeed too general and insufficient to
infer even prima facie that the
Defendant was carrying on business within the territorial jurisdiction of the
Court.
11. At
the present stage, when the matter is yet to go to trial, the Court
CS (OS)
No. 2605 of 2013 Page 5 of 10
cannot insist that the full particulars of where
precisely the Defendant was found selling its products in Delhi have to be set
out in the plaint itself. That would be a matter for evidence. Consequently,
this Court is unable to accept the plea of the Defendant that the averments in
the plaint are insufficient for the Court to entertain the action of passing
off of the trademark of the Plaintiff.
12. The application is
accordingly dismissed.
I.A. No. 8938 of 2014
13.
This is an application under
Order XXXIX Rule 4 CPC filed by the Defendant seeking to vacate the interim
injunction against the Defendants restraining them from using the trademark and
label „Taj Mahal‟ in respect of the rice being sold by the Defendant.
14. The necessary facts to be noticed for the purposes of this application
are that the Plaintiff has adopted the said mark in relation to Basmati Rice.
The Plaintiff has been engaged in the business of processing and marketing of
Basmati Rice including exports thereof. In the plaint, the Plaintiff has set
out the total exports/sales figures since 1980-81 as well as the domestic sales
figures. Inter alia it is averred
that for the year 2008-09 the total exports/sales were Rs. 366. 23 crores and
the domestic sales were Rs.275.21 crores. It is stated that the sales of
Basmati Rice under the above trademark with label/device of „Taj Mahal‟ is
approximately 10% of the abovementioned sales. The Plaintiff states that it
filed an application for registration of the aforementioned mark with Taj Mahal
label (Device of Taj
CS (OS)
No. 2605 of 2013 Page 6 of 10
Mahal) in Class 30 in relation to rice for exports
on 27th February, 1989 claiming user since 1st January, 1978. However, this was opposed by M/s.
New Bharat Rice Mills („NBRM‟), one of the competitors of the Plaintiff,
on the ground that it already held registrations in respect thereof. The
Plaintiff then filed a civil suit before this Court for cancellation of
registration granted in favour of NBRM in respect of the said mark and label.
It is stated that the said suit is still pending adjudication. Meanwhile the
appeal filed by NBRM against the rejection of its opposition was allowed by the
Intellectual Property Appellate Board (IPAB). It is, however, pointed out by
the Plaintiff that the said order of the IPAB has been stayed by this Court in
a writ petition filed by the Plaintiff.
15. The Defendant contends that the Plaintiff has
not yet succeeded in obtaining registration of the said mark/label and,
therefore, does not have the locus standi
to maintain the present suit and obtain an interim order against the Defendants in the action for
passing off. Secondly, the Defendant refers to the fact that there are many
other entities that hold registration in their favour for identical mark and
label in different classes including Class 30 for rice in particular.
Therefore, the Plaintiff cannot claim exclusivity for such mark and label.
Thirdly, the Plaintiff itself limited its application for registration to
exports of Basmati Rice. Therefore it cannot seek protection as regard its
domestic sales of the product. The other plea is that of acquiescence. It is
stated that the Defendant has been using the device Taj Mahal on the rice being
sold by it since 1st January, 2000 and has also filed an application for trademark
registration on 15th April, 2010. This was not objected to by the Plaintiff.
CS (OS)
No. 2605 of 2013 Page 7 of 10
16. The above submissions have been considered. In the first place, it is
trite that an action of passing off does not hinge upon the Plaintiff having a
registration of the mark and/or label in its favour. Therefore, the fact that
its application for registration has been opposed or not granted or that others
may hold registration is of no consequence. In order to succeed in the action
for passing off, the Plaintiff has to inter
alia show that its mark and label enjoy a reputation and goodwill in
relation to the goods in question and that the adoption of the same or similar
said mark or label by the Defendant for the good in the same channel of trade
is dishonest. The fact that the Plaintiff is a prior and continuous user of the
mark/label in relation to the goods in question, which, in the present case, is
rice, is certainly a relevant factor. This, the Plaintiff has certainly been
able to demonstrate by setting out the figures of its sales both exports and
domestic for several years since 1980-
81.
17. Second, the Plaintiff has to show that the adoption of the impugned mark
by the Defendant is dishonest. The fact of the matter is that an essential
feature of the Plaintiff‟s marks i.e., the trademark „Taj Mahal‟ with the
device of „Taj Mahal‟ has been in toto
adopted by the Defendants and for the same basic product i.e. rice. In relation
to such product the trade mark Taj Mahal with device can be said to be an
arbitrary mark with a degree of distinctiveness that enables the consumer to
associate the product with the producer of the product. In this context, prima facie the Plaintiff has been able
to show that it is the prior and continuous user since 1978 and that the
subsequent adoption of an identical mark and label by the Defendant, which
CS (OS)
No. 2605 of 2013 Page 8 of 10
admittedly commenced its business
only in 2000, is dishonest.
18. Thirdly, the mark and label used by the Defendant i.e. Taj Mahal
with the device for rice is prima facie
bound to cause deception and confusion in the mind of the average purchaser of
rice and is an attempt to exploit the reputation and goodwill attached to
Plaintiff in the said mark and device for rice. It is in the same channel of
trade. There is also no merit is the plea of acquiescence. The Plaintiff states
it has filed an opposition to the Defendant's application for registration. As
far as the plea that the Plaintiff‟s alleged use of the impugned trademark is
confined to export of rice only, the averments in the plaint show that the
Plaintiff has been selling rice in the domestic market under the trademark,
label and device „Taj Mahal‟ since 1980-81.
19. Consequently, no grounds are made out by the
Defendants for vacating the interim injunction granted by this Court by the
order dated 19th
December, 2013. This application under Order XXXIX
Rule 4 CPC is accordingly dismissed.
IA No. 20906/2013 (under Order XXXIX Rules 1 and 2 CPC)
20. The interim injunction granted by this Court on
19th December, 2013 is made absolute during the pendency of the suit. The
application is disposed of.
CS (OS) No. 2605/2013
21. To be
re-numbered as a commercial suit.
CS (OS)
No. 2605 of 2013 Page 9 of 10
22.
List before the Joint Registrar on
22nd December, 2016 for admission/denial of documents.
23. List
before the Court on 6th March, 2017 for framing of
issues.
S. MURALIDHAR, J
SEPTEMBER 16, 2016
dn
CS (OS)
No. 2605 of 2013 Page 10 of 10
