COMMENT:
Here is the reproduction of relevant paragraph of the judgment , in which the
Hon’ble Court has referred to DHODHA HOUSE Judgment and explained the meaning
of carry on business, and work for gain.
“the
expression ‘carries on business’ and the expression, ‘personally works for
gain’ connote two different meanings.
For the purpose of carrying on business only presence of a man at a
place is not necessary. Such business may be carried at a place through an
agent or a manager or through a servant.
The owner may not even visit that place.
The phrase ‘carries on business’ at a certain place would, therefore,
mean having an interest in a business at that place, a voice in what is done, a
share in the gain or loss and some control thereover. The expression is much
wider than what the expression in normal parlance connotes, because of ambit of
a civil action within the meaning of Section 9 of the Code. But it is, inter alia,
necessary that the agent must be a special agent who attends exclusively to the
business of the principal and carries it on in the name of the principal and
not a general agent who does business for any one who pays him. In the case in
hand, there is no allegation in the plaint that agent is an exclusive agent of
the respondent/plaintiff. From the documents placed on record it would appear
that J.L. Morison is doing the business for other persons also.
IN THE HIGH
COURT OF
DELHI AT NEW DELHI
SUBJECT : CODE OF
CIVIL PROCEDURE
FAO 480/2011
Date
of Decision: July 1, 2013
PIONEER PRODUCTS ..... Appellant Through : Mr.Suhail Dutt,
Sr.Adv. with Mr.N.K.Kantawala, Mr.Praver Sharma, Mr.Satyender Chahar and
Mr.Ritesh Mehra, Advs.
versus
ALBERTO
CULVER INTERNATIONAL INC. .....
Respondent Through : Mr.S.K.Bansal with Mr.Vikas Khera, Advs.
CORAM:HON'BLE MS. JUSTICE VEENA BIRBAL
VEENA BIRBAL, J.
1
Present appeal
has been preferred by the appellant against the order dated 1st October, 2011
passed by the learned Additional District Judge, New Delhi whereby application
of the respondent under Order 39 Rule 1 & 2 CPC was allowed and the interim
order dated 9th September, 2009 has been confirmed.
2
Appellant herein
is defendant no.1 before the learned trial court. Respondent herein is plaintiff before the
learned trial court. The respondent/plaintiff has filed a suit under Section
134 and 135 of the Trade Marks Act, 1999 (hereinafter referred to as the Act)
against appellant/defendnant no.1 and one R.P. General Stores i.e. defendnat
no.2 before the trial court for the relief of permanent injunction retraining
the appellant/defendant no.1 from using in any manner including by way of
manufacturing, sale trade etc. of the impugned marks VOV, VO5 or similar or
identical marks in relation to cosmetics, toiletries and personal care products
such as hair sprays, shampoos, personal deodorants, hair tonic, etc. Prayer is
also made for damages and/or rendition of accounts. Along with the aforesaid
suit an application under Order 39 Rules 1 and 2 was also filed praying for the
grant of ad interim injunction during the pendency of the suit restraining the
appellant/defendant no.1 from manufacturing, selling, offering for sale,
advertising in India and exporting their products under the Trase Mark VOV
which is phonetically similar to the respondent’s/plaintiff’s Trade Mark VO5 in
relation to aforesaid products. The respondent/plaintiff is engaged in the
business of manufacture and distribution of wide range of cosmetic products
such as hair sprays, shampoos, deodorants, hair and scalp conditioners, hair
oil, hair tonic, and other allied products etc. It is alleged that in the year
1955, respondent/plaintiff through its predecessors adopted and started using
the Trade Marks VO5 and V05 along with letters ‘ALBERTO’. With the passage of
time, respondent/plaintiff also started using the Trade Mark VO in the course
of trade in respect of its goods. The Trade Mark VO, VO5 is an essential,
material and distinguishing feature of the said Trade Mark Label. As per
respondent/plaintiff, it has acquired worldwide reputation. The
respondent’s/plaintiff’s Trade Mark ALBERTO VO5, VO5 Label and V05 are duly
registered in India under the Trade Marks Act, 1999. The dates of registration
are given in the plaint. It is alleged that in view of registration of its
Trade Mark, respondent/plaintiff has exclusive rights thereto within the meaning
of the aforesaid Act. The art works involved in the aforesaid Trade Mark/Label
are original artistic work and the respondent/plaintiff holds copy right
therein. It is alleged that art work involved in the respondent/plaintiff’s
Trade Mark/Label VO5 along with the word ALBERTO is duly registered under the
Indian Copyright Act, 1957. It is alleged that respondent/plaintiff has already
built up a globally valuable trade under the aforesaid Trade Mark/Label and has
conducted handsome business thereunder running into billions of dollars
worldwide. The respondent/plaintiff has spent millions of dollars in
advertising its products. It is alleged that respondent’s goods are known,
recognized, demanded, sold and traded world over with reference to the said
Trade Mark/Label. It is alleged that respondent’s/plaintiff’s goods under the
aforesaid Trade mark/Label are available in Delhi including New Delhi and other
parts of the country through its authorized importer and distributor M/s
J.L.Morison (India) Ltd., “Crystal”, 79, Annie Besant Road, Worli,
Mumbai-400018 also at 404, Rohit House 3 Tolstoy Marg, New Delhi-1100001.
3. It is alleged that the respondent/plaintiff is a
global leader in the aforesaid goods and business. M/s Alberto Culver Company
is the predecessor-in-title of the respondent/plaintiff. The said predecessor
has assigned all rights, titles and interests in the aforesaid trade marks/
copyrights along with the goodwill to the respondent/plaintiff, vide a Deed of
Assignment dated 14.04.2006. It is alleged that respondent/plaintiff is one of
the Group Companies of M/s Alberto Culver Company.
4. The
respondent/plaintiff has alleged that appellant/defendant No.1 has adopted an
identical/deceptively similar trade mark VOV (which is a colourable imitation
of the respondent’s/plaintiff’s mark since ‘5’ is written in Roman numerals
‘V’) in relation to the same/similar goods being cosmetics including nail
polish, lipstick, eye liner, compact, liquid kumkum and other beauty products
etc. It is alleged that appellant/defendant no.1 had filed an application for
registration of trade mark VOV which was abandoned. The defendant no.2 i.e.R.P.
General Stores is the dealer/distributor of the appellant/defendant no.1 in
Delhi including the markets of South Delhi. The trade mark VOV being used by
the appellant/defendant no.1 in relation to their goods and business is
identical with and deceptively similar to respondent’s/plaintiff’s said “VO,
VO5 and VO5 with ALBERTO” trade marks in each and every respect including
phonetically, structurally, conceptually and in its essential features. It is
alleged that appellant/defendant no.1 by their impugned adoption and use of the
trade mark VOV amounts to violating respondent’s/plaintiff’s trade mark and
amounts to passing off their goods as that of respondent/plaintiff.
5. The case of the appellant/defendant no.1 is that
respondent/plaintiff has wrongly invoked the territorial jurisdiction to
entertain and try the present suit against appellant/defendant no.1. There is
no cause of action in favour of respondent/plaintiff against
appellant/defendant no.1. That the respondent/plaintiff has never used nor
advertised the mark ALBERTO VO5 or VO5 in India at any point of time. It is
alleged that appellant/defendant no.1 is carrying on its lawful business as
manufacturer and merchant of cosmetics under the mark V O V (label) in a
specific artistic way and the three letters V O V written within rectangles is
altogether different and distinct from that of the mark ALBERTO VO5 of
respondent /plaintiff. The appellant/defendant no.1 honestly and bona fidely
adopted the mark V O V for kumkum only in the year 1987 and in the year 2002
added more cosmetic products under the mark VOV and has used the same openly
and continuously. It is also alleged that there is no document on record to
show that user/reputation of the mark ALBERTO VO5 in India. Respondent
/plaintiff from time to time made statements before the Registrar of Trade Marks
that the impugned mark is “proposed to be used”. It is stated that even in the
matter of latest application no.1349772; filed by respondent /plaintiff on
8.4.2005 for the mark ALBERTO VO5 in India, the user shown is `proposed to be
used’ which is clear indicator of the fact that even in 2005, respondent
no.1/plaintiff had an intention to use the mark ALBERTO VO5 whereas
appellant/defendant no.1 is using the mark V O V since 1987 for kumkum and
since 2002 for other cosmetics. It is also stated that conduct of
respondent/plaintiff shows that respondent/plaintiff is interested only to
harass the appellant/defendant no.1 in one way or the other. It is stated that
respondent /plaintiff has filed number of cases, the details of those are given
in reply dated 12.8.2011 of appellant/defendant. It is alleged that the same
shows conduct of respondent/plaintiff. It is also alleged that respondent
no.1/plaintiff has never used or advertised the mark ALBERTO VO5 in India at
any point of time. It is further alleged that respondent/plaintiff has filed a
copy of the alleged distribution agreement dated 09.02.2009 with J.L.Morison
(India) Ltd to show that J.L.Morison (India) is an exclusive distributor in
Delhi. It is alleged that apart from the copy of agreement dated 9.2.2009, no
other documents have been filed to prove that the alleged distributor is an
‘exclusive distributor’ or has at any point of time distributed the goods of
respondent no.1/plaintiff under the mark ALBERTO VO5 in Delhi or within the
jurisdiction of this court. It is their further stand that the goods of
respondent no.1/plaintiff under the mark ALBERTO VO5 have never been sold in
any part of India or within the jurisdiction of this court. It is further
alleged that J.L. Morison (India) Limited is not an exclusive distributor of
the respondent’s/plaintiff’s goods under the mark ‘ALBERTO VO5’. It is alleged
that the so called distributor has never distributed the goods of the
respondent’s/plaintiff’s in India under the mark ALBERTO VO5 at any time. It is
alleged that as per respondent/plaintiff the distributorship was applied only
on 09.02.2009 whereas appellant/defendant is using the mark V O V for kumkum in
1987 and in 2002 for other cosmetic products. It is further alleged that
labels/packaging/artworks of appellant/defendant no.1 for the mark V O V are
different from that of the labels/packaging/artworks of respondent/plaintiff
impugned mark ALBERTO VO5 which is altogether different and distinct from the
mark V O V of appellant/defendant no.1.
6. Vide
impugned order dated 1st October, 2011, the learned trial court has allowed the
application of the respondent/plaintiff under Order 39 Rule 1 and 2 CPC and has
confirmed the order dated 9th September, 2010 thereby allowing the application
under Order 39 Rule 1 and 2 CPC.
7. At this
stage, it may be necessary to refer to the history of litigation between the
parties to the present case.
8. Respondent/plaintiff
had earlier filed CS(OS) no.672/2004 on the original side of this court. In that case, appellant/defendant herein was
made the sole defendant. After pleadings were completed, issues were
framed. One of the issues framed,
relates to the territorial jurisdiction of this court.
9. The
learned Single Judge of this court vide order dated 27th August, 2010 treated
the issue relating to territorial jurisdiction as a preliminary issue and held
that this court has no jurisdiction to try the suit and ordered that suit be
returned to the respondent/plaintiff to be filed before the Principal Civil
Judge at Thane with the following observation:-“8. .………………………………………………………….. .………………………………………………………………....
………………………………………………………………….. ………………………………………………………………….. In Dhodha House case,
the Supreme Court held that the mere fact that the goods are available in a
particular place – in that instance in Delhi or that they were sold in
different area, would not itself mean that the plaintiff carried on any
business in Delhi. This Court is bound by that ruling. The materials on record,
particularly the pleadings, nowhere point to the plaintiff having any office in
Delhi or even averring that it appointed a distributor whose office are located
within the jurisdiction of the Court nor is there any averment whosoever vague
disclosing that the plaintiff has any business either substantially or
otherwise in the form of turn over from Delhi or for that matter in India. In
these circumstances, this Court is satisfied that the suit so far as the
infringement is concerned based upon the application of Section-134, is not
maintainable.
9. So far as question as to whether any part of the
cause of action has arisen in the jurisdiction of this Court is concerned, the
documents available in the form of about 557 pages filed along with the list of
documents would reveal that there is no material establishing that the
defendant sold their products within the jurisdiction of this Court or anywhere
in Delhi. No doubt, the plaintiff has a right to adduce the evidence in the
trial to establish the defendant’s presence, but the Court is conscious of the
fact that after issues were framed, parties were provided with the opportunity
to produce further or additional documents. It was not pointed out that such
additional documents were ever filed all this while after the issues were
framed more than 4½ years ago. In any event, no such application for producing
additional documents to establish the defendant’s presence within the
territorial limits of this Court’s jurisdiction was ever moved. It is also
settled that once issues are struck and the parties are required to lead
evidence, there is no question of the Court entertaining the application for
adducing further documentary evidence during the trial.
10. Having
regard to this, it is apparent that the Court now has to consider the effect of
the two documents placed on the record by the defendant. While the defendant’s
arguments that the Court’s enquiry is to be confined to while considering the
plea about jurisdiction or the lack of it in the averments in the suit and the
list of documents filed along with it as correct, at the same time, the Court
cannot be oblivious of the materials which are on the record particularly after
admission/denial. The defendant here has placed two invoices on the record. At
best, they only indicate that some goods were dispatched to Delhi. That by itself is sufficient, in the opinion
of the Court, to hold that the defendant is either trading in Delhi or cause of
action of such nature is occurred, occasioning the plaintiff to file the present
suit. The two transactions at best would amount to a flash in the pan, which,
in no way, establish that the dispute can be entertained as is sought to be
urged by the plaintiff. In Sector Twenty One Owner’s Welfare Association v. Air
Force Naval Housing Board 65 (1997) DLT 81, it was held that trivial or
insignificant part of the cause of action arising at a particular place would
not be enough to confer jurisdiction.
11. This Court is not persuaded to take a view different from that
taken in Alberto’s case (supra) where the plaint was returned. In the
circumstances, the suit is returned to the plaintiff to be filed before the
Principal Civil Judge at Thane. Parties are directed to be present before the
Principal Civil Judge, Thane, on 25th October, 2010.”
10. The order
dated 27th August, 2010 passed by the learned Single Judge attained finality as
no recourse was taken by the respondent/plaintiff against the said order.
During the period CS(OS) 672/2004 on the Original side of this court, there was
no interim order operating between the parties.
11. On 09.09.2010 the respondent/plaintiff instead of
filing the returned plaint at the Courts at Thane, preferred a fresh suit
against appellant/defendant No.1 at the District Court at Saket Courts
Complex. This time the
respondent/plaintiff claimed that the court has territorial jurisdiction to try
the suit in view of agreement dated 09.02.2009 whereby one J.L. Morison (India)
Ltd. (hereinafter J.L. Morison) has been appointed as agents and distributors
in India for their products marketed under the trade mark VO5 and that J.L.
Morison has their regional distributorship at 404, Rohit House, 3 Tolstoy Marg,
New Delhi. In addition, the defendant No.2 i.e. R.P. General Stores was made a
party to the case. Here it may be mentioned that defendant No.2 was the same
entity to whom the appellant/defendant No.1 had supplied the goods in pursuance
of the two invoices which were relied by the plaintiff in CS(OS) No.672/2004
for contending that the courts at Delhi has the territorial jurisdiction to try
the suit.
12. The
learned Additional District Judge to whom the suit was assigned granted ex
parte stay to the respondent/plaintiff. After completion of pleadings the
learned Additional District Judge vide order dated 28th May, 2011, in view of
the fact that the office of the regional distributorship of J.L. Morison was at
New Delhi district and not in South Delhi District returned the plaint for
being presented before the court of competent jurisdiction and the interim
order dated 9.9.2010 was ordered to be continued for a period of five days.
13. The
respondent/plaintiff presented the plaint returned by the court at Saket to the
court of Additional District Judge-I, Patiala House Courts, New Delhi on 1st
June, 2011. On the aforesaid dated the learned Additional District Judge, New
Delhi, issued notice to appellant/defendant no.1 and extended the interim order dated 9th
September, 2010. The appellant/defendant preferred an appeal against the order
dated 1st June, 2011 before this court which was registered as FAO 344/2011.
The learned Single Judge of this court has disposed of the said appeal vide
order dated 8th August, 2011. The relevant paras of the order dated 8th August,
2011 reads as under:-
“3. I agree with the contentions of the learned
counsel for the appellant that there is no question of extension of stay as has
been done by the impugned order because after the plaint was returned by the
order dated 9.9.2010 by the ADJ, at Saket Courts, Delhi, filing of the suit in
a competent Court, there was a fresh filing of the suit and therefore whether
or not injunction ought to have been granted should have been considered afresh
keeping in mind the requirements of Order 39 Rule 1 and 2 CPC. Also, the
application of the respondent/plaintiff for seeking extension of injunction is also
misconceived for self-same reason. If the trial Court was inclined to grant an
ex parte injunction de novo, the trial Court ought to have discussed the triple
factors, prima facie case, balance of convenience and irreparable loss and
which are not found in the impugned order. The order is completely a
non-speaking order.
4. Accordingly,
though the impugned order, in view of what is stated above, is liable to set
aside, however, if one does not go on technicalities, it can also be said that
the impugned order seeks to grant an ex parte injunction in a fresh suit.
However, the ex parte injunction would suffer from the infirmities of not being
a speaking order and not considering the necessary ingredients for grant of the
injunction and more so on grant of an exparte injunction, the requirement of
Order 39 Rule 3 CPC had to be directed to be complied with and which has
not been done.
5. Accordingly,
while accepting the appeal and setting aside the impugned order, I direct that
the matter be taken up by the trial Court on 17th August, 2011 and on which
date the respondent/plaintiff will file an application under Order 39 Rules 1
and 2 CPC for grant of interim orders. I may hasten to clarify that though the
impugned order is being set aside, interim order passed by the trial Court on
1.6.2011 is being continued only and only upto 17.8.2011 and when the trial
Court will examine the issue with respect to entitlement of the
respondent/plaintiff to an injunction uninfluenced by the fact that interim
injunction is continued till 17.8.2011 and after ensuring that requirements of
law for grant of an interim order in terms of Order 39 CPC are complied with.
The trial Court will hear both the parties and pass a speaking order as to the
entitlement or disentitlement of grant of interim orders. With the aforesaid observations the appeal
and application are disposed of.”
14. Thereupon
respondent/plaintiff filed fresh application under Order 39 Rule 1 and 2 of
CPC. The arguments were heard on the said application. Vide order dated
01.10.2011, impugned in this appeal, the learned ADJ confirmed the stay granted
earlier on 09.09.2010.
15. On the territorial jurisdiction, Learned senior
counsel Mr.Suhail Dutt appearing for the appellant/defendant no.1 has contended
that the respondent/plaintiff has wrongly invoked the jurisdiction as per
section 134(2) of the Act as respondent/plaintiff does not carry any business
in Delhi either directly or through any exclusive dealer/distributor. It is
contended that respondent/plaintiff has no sale in Delhi or even in India. It
is contended that not even a single document is produced which shows any use or
advertisement of trade mark ALBERTO VO5 by respondent/plaintiff in India. It is
contended that as per respondent/plaintiff it has appointed authorized
importer/distributor in India on 9.2.2009 but has failed to produce a single
document to prove sales, if any, done by it in India either prior or even after
its appointment. It is contended that jurisdiction or cause of action paras of
the plaint does not say that J.L.Morrison Ltd. is the respondent/plaintiff’s
“Exclusive Distributor”, the plaint only says “Distributor”. Learned Senior
Counsel has also contended that the plaint of first suit was returned by this
court in CS(OS) No.672/2002 vide order dated 27.8.2010 by holding that Delhi
Courts lack territorial jurisdiction to entertain and try the suit. In the said order, specific finding was given
by the learned Single Judge of this court that two invoices of defendant
no.2 placed on record were insufficient
to hold that respondent/plaintiff was either trading in Delhi or cause of
action had occurred at Delhi. It is contended that the said order was not
assailed by respondent/plaintiff, as such, suit is barred by res judicata. It
is further contended that plaint of second suit being Suit No.1389/2010 vide
order dated 28.5.2011 by the learned ADJ, Saket, was returned to be presented
before the court of competent jurisdiction. In that case, it was observed that
court at Delhi lacks jurisdiction.
16. On
merits, learned senior counsel has contended that marks of both the parties are
visually and phonetically different and customers of respondent/plaintiff’s are
different. It is contended that the respondent’s/plaintiff’s products are not
available in India. It is contended that in case the same are made available
the same would be purchased by elite and literate society as the products of
respondent/plaintiff are costly. It is further contended that the customers of
products of both the parties are literate who can easily distinguish between
the two in terms of the mark, their packaging, their use etc. It is contended
that there is huge price variation of products of both the parties. It is
further contended that products of both the parties are entirely different in
use and their application. The appellant/defendant no.1’s products are nail
polish, compact powder, kumkum, mascara, lip gloss etc and respondent/plaintiff
only produces hair related products i.e., shampoo and conditioners. It is
contended that respondent/plaintiff uses the word ALBERTO as a prefix to VO5
whereas appellant/defendant no.1 uses the single word V O V i.e., WOW which
suggest great pleasure and amazement. It
is contended that in the earlier suit i.e. CS(OS) 672/2004 filed by
respondent/plaintiff, no injunction in its favour was granted by this court and
the said suit remained pending for 6 years. On return of the plaint,
respondent/plaintiff filed a fresh suit at District Court at Saket Court
Complex and obtained an ex parte order dated 9.9.2010 and later on the said
plaint was also returned and thereafter injunction was granted vide impugned
order dated 1st October, 2011 by the ld.ADJ, Patiala House Courts. In these
circumstances, balance of convenience was also in favour of appellant/defendant
no.1 and the learned trial court has not considered the same. It is contended
that appellant/defendant no.1 has documentary evidence to prima facie show use
of the mark trade VOV for the past 25 years whereas there is no prima facie
case in favour of respondent/plaintiff. It is contended that in the facts and
circumstances of the case, the appellant/defendant no.1 would suffer an
irreparable loss and injury if the impugned order is not set aside.
17. Learned counsel for the respondent/plaintiff has
contended that respondent/plaintiff is a registered proprietor of trade mark
VO5 in India, accordingly, the respondent/plaintiff is entitled for the remedy
of infringement. It is contended that for the purpose of territorial
jurisdiction, the respondent/plaintiff is entitled to special benefit of
section 134(2) of the Act wherein respondent/plaintiff is provided with
additional forum for filing suit in case of infringement of its trade mark at a
place where respondent/plaintiff resides and carries on its business. It is
further contended that respondent/plaintiff has also pleaded jurisdiction of
this court on account of appellant’s/defendant no.1’s activities of selling its
products in New Delhi area clandestinely and surreptitiously, under the
provisions of section 20 of CPC. It is contended that M/s J.L.Morison India Ltd
was appointed on 9.2.2009 as exclusive distributor of VO5 products in India and
M/s J.L.Morison India Ltd has its office at Mumbai and also at Tolstoy Mark,
New Delhi which is within the jurisdiction of this court, as such, courts at
Delhi has jurisdiction to try the present suit. It is contended that
respondent/plaintiff has Indian trade mark registrations for the mark ‘ALBERTO
VO5’ (word mark) under No.196213B in Class 3 dated 30.5.1960; ALBERTO ‘VO5’
label under No.1349772 in Class 3 dated 8.4.2005; VO5 (word mark) under
No.788766 in Class 3 dated 23.1.1998; VO5 logo under No.788768 in Class 3 dated
23.1.1998. It is contended that respondent/plaintiff has exclusive rights to
use the trade mark VO5 under Sections 28 and 29 of the Act, 1999. It is
contended that appellant/defendant no.1 in its trade mark application filed in
the Trade Marks Office No.1263141 in Class 3 has claimed use of its trade mark
V O V from 31st December, 2002 in relation to cosmetic preparations whereas in the
present appeal, appellant/defendant no.1 is trying to claim use of the trade
mark from 1986. It is contended that no document in this regard has been filed.
It is contended that respondent/plaintiff has trade mark registration for
ALBERTO VO5 since 1960 and VO5 from the year 1998 and respondent/plaintiff has
claimed use of the mark internationally since 1955. It is contended that appellant/defendant
no.1 has not been able to establish continuous use of the mark prior to
respondent/plaintiff’s registration. It is contended that respondent/plaintiff
is also entitled to the benefit of trans border use and reputation of the mark.
It is further contended that the learned ADJ after considering the facts and
circumstances of the case has exercised discretion by granting injunction in
favour of respondent/plaintiff. It is contended that there is nothing on record
to show that discretion has been exercised arbitrarily or capriciously, as
such, the appellate court would not interfere with the exercise of discretion
of the court of first instance and substitutes its own unless discretion has
been exercised arbitrarily or capriciously.
18. In order
to succeed in his application, the respondent/plaintiff was required to
establish that it has a good prima facie case. Such inquiry would have
necessarily required the examination of question as to whether the courts at
Delhi have the territorial jurisdiction to try this suit. The
respondent/plaintiff may have averred in the plaint that Courts at Delhi have
jurisdiction to try this suit but the issue that would arise is as to whether
the respondent/plaintiff has succeeded in prima facie showing that the courts
at Delhi have such jurisdiction. The courts at Delhi have the jurisdiction to
try the suit either under Section 134 of the Trade Marks Act, 1999 or under
Section 20 of CPC. Apart from relying on the two documents which relate to the
transaction between the two defendants and which were held to be not sufficient
to vest the courts at Delhi with the territorial jurisdiction in CS(OS)
No.672/2004, the respondent/plaintiff has relied upon its dealership agreement
with J.L. Morison which is having its regional distribution at 404, Rohit
House, 3 Tolstoy Marg, New Delhi. The plaintiff also relies on the fact that
the defendant No.2 is residing and carrying on business at Delhi.
19. The
respondent/plaintiff itself is neither registered at Delhi nor has its office at
Delhi. It is otherwise not the case of the respondent/plaintiff that it is
personally working for gain at Delhi. Thus, to that extent the position in the
suit and the earlier suit remains the same.
20. In the
case of Dhodha House v. S.K. Maingi 2006 (9) SCC 4, the Supreme Court has held
that the expression ‘carries on business’ and the expression, ‘personally
works for gain’ connote two different meanings.
For the purpose of carrying on business only presence of a man at a
place is not necessary. Such business may be carried at a place through an
agent or a manager or through a servant.
The owner may not even visit that place.
The phrase ‘carries on business’ at a certain place would, therefore,
mean having an interest in a business at that place, a voice in what is done, a
share in the gain or loss and some control thereover. The expression is much
wider than what the expression in normal parlance connotes, because of ambit of
a civil action within the meaning of Section 9 of the Code. But it is, inter alia,
necessary that the agent must be a special agent who attends exclusively to the
business of the principal and carries it on in the name of the principal and
not a general agent who does business for any one who pays him. In the case
in hand, there is no allegation in the plaint that agent is an exclusive agent
of the respondent/plaintiff. From the documents placed on record it would
appear that J.L. Morison is doing the business for other persons also. It is not shown at this stage that the
respondent/plaintiff is having an interest in the business or at the place of
business of J.L. Morison at Delhi, or a voice in what is done, or a share in
the gain or loss and some control thereover. Not even a single document has
been placed on record to show, sales if any, done by it in Delhi or India after
the appointment of J.L. Morison as its distributor. Thus, under Section 134 of
the Trade Marks Act, 1999 is of no assistance to the respondent/plaintiff. To
my mind, in the facts of this case, fact that the defendant No.2 is doing
business at Delhi is also of no significance inasmuch as the two documents
relating to the transaction between the two i.e. appellant/defendant no.1 and
defendant no.2 were held to be not sufficient to vest the courts at Delhi with
territorial jurisdiction. After having chosen to continue the earlier suit
without making the defendant No.2 a party to the said suit the plaintiff cannot
now agitate the same issue on the basis of same documents by making defendant
No.2 a party to the suit. Every violation of a trade mark or act of passing of
may be a fresh cause of action. That however, cannot mean the
respondent/plaintiff is at liberty to rely on those very transactions, which
were the subject matter of the earlier suit between the parties and which were
specifically gone into by the court. Thus, Section 20 CPC is also not going to
help the respondent/plaintiff at this stage.
21. In the circumstances, it
appears to this court that respondent/plaintiff has failed to prima facie show
that the courts at Delhi have territorial jurisdiction to try the suit for
reason of his Dealership Agreement with J.L. Morison or on account of having
made defendant No.2 party to the suit.
22. In view
of above discussion, I do not find it appropriate to deal with other
contentions of the parties as the same pertains to merits of the case.
Accordingly, the other contentions and case law referred to by the parties have
not been discussed herewith.
23. Accordingly,
the appeal is allowed and the impugned order stands set aside. The trial court
shall now proceed in accordance with law for which the parties shall appear
before the learned Trial Judge on 16.7.2013.
24. The appeal stands disposed of.
25. Nothing contained in this order shall be treated as expression
of opinion on the merits of the case.
Sd/VEENA BIRBAL, J JULY 1, 2013
