Matrumal Dhannalal Oil Mill vs M/S. Abhishek Enterprises

Delhi High Court M/S. Matrumal Dhannalal Oil Mill vs M/S. Abhishek Enterprises on 12 March, 2010

* IN THE HIGH COURT OF DELHI AT NEW DELHI

+ CS(OS) No.643/2006

Date of Decision: March 12, 2010

M/S MATRUMAL DHANNALAL OIL MILL .....Plaintiff Through: Mr. S.K. Bansal Advocate with

Mr. Ajay Amitabh Suman, Advocate

VERSUS

M/S. ABHISHEK ENTERPRISES .....Defendant Through: Mr. Shailen Bhatia Advocate with Mrs. Amita Kapur, Advocate, Mr. Amit Jain, Advocate.

CORAM:

HON'BLE MS. JUSTICE ARUNA SURESH

(1) Whether reporters of local paper may be allowed to see the judgment?




(2) To be referred to the reporter or not? Yes (3) Whether the judgment should be reported in the Digest? Yes JUDGMENT

ARUNA SURESH, J.

I.A. No.9871/2006 (Order 7 Rule 11 CPC) in CS(OS) No.643/2006

By way of this order, I shall dispose of an application filed by the defendant under Order 7 Rule 11 read with Section 151 of Code of CS(OS) No. 643/2006 Page 1 of 27 Civil Procedure (hereinafter referred to as â

1. ��CPC�) seeking dismissal of the suit on the ground that this Court has no territorial jurisdiction to entertain the present suit.






Plaintiff firm is engaged in the business of manufacturing, marketing and selling of edible oil and oil cakes etc. under the trade mark â
3. ��RADHA KRISHNA' with device of Radha Krishna Label. Said trade mark is registered under Class 29 of the Trade Marks Act, 1999 (hereinafter referred to as �Act�) having registration No.130471. Plaintiff is also the holder of Copy Right vide Registration Nos. A-66428/04 and A-67738/04 respectively for the said trade mark. Defendant is engaged in the similar business of edible oil and oil cakes, etc. and is supplying his goods under the name and style of �RADHA MOHAN' WITH DEVICE OF RADHA KRISHNA LABEL. Plaintiff claims that user of trade mark �RADHA MOHAN� by the defendant is infringement of his trade mark �RADHA KRISHNA� and also infringement of his copy right in the said trade mark. Defendant is passing off his goods to the public as if the said goods are manufactured and sold in the market by the plaintiff.




　


3. Defendant contested the suit denying any violation of plaintiffâ
1. ��s trade mark and copy right by him by selling his goods in the name CS(OS) No. 643/2006 Page 2 of 27 of �RADHA MOHAN�, for which he has already applied to the Registrar of Trade Marks for registration, for the goods to be supplied by him in various States except Delhi. Defendant has also disputed the territorial jurisdiction of this Court to entertain the suit alleging that both the parties to the petition are residing and working for gain outside the jurisdiction of this court; the trade mark and copy right is registered by the plaintiff at Bombay and he is not supplying his goods at Delhi.




Mr. Shailen Bhatia, learned counsel for the defendant has argued that both the parties are residing and working for gain in U.P. as plaintiff is residing and working for gain at Hathras, whereas defendant is carrying on his business at Agra. Suit has been filed under Sections 134 and 135 of the Trade Marks Act, 1999. However, provisions of Section 134 of the Act are not applicable to the facts and circumstances of the case. He further argued that relief claimed in the suit for infringement or for passing off is governed under Section 135 of the Act and the suit therefore, cannot be entertained by this Court. He has relied on the following judgments :- (i) Surendra Kumar Maingi vs. M/s. Dodha House, AIR 1998 Allahabad 43;

(ii) Haryana Milk Foods Ltd. vs. Chambel Dairy Products, 2002 CS(OS) No. 643/2006 Page 3 of 27 (25) PTC 156 (Del);

(iii) Gupta Brothers Conduit Pipe Manufacturing Co. Pvt. Ltd. vs. Anil Gupta & Anr., 2001 (24) PTC 159 (Del); (iv) Dabur India Limited vs. K.R. Industries, 2006 (33) PTC 348 (Del.) (DB);

(v) Dabur India Limited vs. K.R. Industries, 2006 (33) PTC 107 (Del.);




(vi) Dharampal Premchand Ltd. vs. Golden Tobacco Products, 2007 (34) PTC 633 (Del.) (DB);

(vii) The Indian Performing Right Society Ltd. vs. Sanjay Dalai & Anr., CS(OS) No.527/2007 decided by Badar Durrez Ahmed on 31.08.2007;

(viii) The Jay Engineering Works Ltd. vs. Ramesh Aggarwal, 2006 (33) PTC 561 (Del.);

(ix) M/s. Dhodha House vs. S.K. Maingi WITH M/s. Patel Field Marshal Industries & Ors. vs. M/s. P.M. Diesel Ltd., AIR 2006 SC 730.

Mr. S.K. Bansal, learned counsel for the plaintiff has submitted that this court has the territorial jurisdiction to entertain the suit. In para CS(OS) No. 643/2006 Page 4 of 27 23 of the plaint, plaintiff has specifically pleaded that this court has territorial jurisdiction to entertain the suit. To determine territorial jurisdiction of a Civil Court, the court has to see averments contained in the Plaint and not defence raised by the defendant in the written statement. He has submitted that as per the averments contained in the Plaint, prima facie, jurisdiction of this court to entertain the suit is clearly made out.

He has further argued that trade mark of the plaintiff is registered in Delhi, plaintiff has applied for registration of trade mark for his other products in Delhi and the defendant has also applied for registration of his trade mark at Delhi. Therefore, Delhi Court has territorial jurisdiction to entertain the suit. He has referred to the following judgments :

(i) Amrutanjan Limited vs. Ashwin Fine Chemicals & Pharmaceuticals, Kashi Mira District, PTC (Suppl) (1) 27 (Mad);




(ii) S. Oliver Bernd Freier GmbH & Co. KG vs. Karni Enterprises & Anr., 2006 (33) PTC 574 (Del.); (iii) M/s. Govardhan Motels & Restaurants vs. I. Subramanyam & Anr., 2008 (36) PTC 513 (Del);




(v) Pfizer Products, Inc. vs. Rajesh Chopra & Ors., 2006 (32) PTC 301 (Del.);




(vi) L.G. Corporation & Anr. vs. Intermarket Electroplasters (P) Ltd. & Anr., 2006 (32) PTC 429 (Del.) and

CS(OS) No. 643/2006 Page 5 of 27 (iv) Intas Pharmaceuticals Limited vs. Allergan Inc., 2006 (32) PTC 272 (Del.) (DB);

(vii) Jagdamba Oil Agency vs. K.S. Oils Limited & Anr., 2006 (33) PTC 447 (MP).

7. To appreciate respective submissions of the parties, I feel the necessity of reproducing para 23 of the plaint which speaks of territorial jurisdiction of this court to entertain the suit. It reads:- "23. This Honâ

��ble Court has the territorial jurisdiction to try and adjudicate upon the present suit. The defendant is infringing and passing off their goods as that of the plaintiff in Delhi in a clandestine and surreptitious manner i.e. without issuing formal invoices against sales. The plaintiff registered trade mark No.130471 in Class 29 is registered with the Registrar of Trade Marks at New Delhi. The plaintiff filed application for registration of trade mark in Delhi. The defendant has also sought registration of impugned trade mark under the aforesaid impugned application on all India basis including Delhi by applying for its registration with Registrar of Trade Marks, Delhi. CS(OS) No. 643/2006 Page 6 of 27 The plaintiff has tremendous goodwill and reputation in its said trade mark in Delhi which is being tarnished by defendant�s impugned activities in Delhi. Further this Hon�ble Court has jurisdiction in the light of Section 134 of the Trade Marks Act, 1999 and Section 62 of the Copyright Act, 1957. This Hon�ble Court has the jurisdiction to entertain and adjudicate upon the present suit.

Section 134 of the Act is a special forum available to the plaintiff which permits it to file a suit for infringement of its registered trade mark within the local limits of jurisdiction of the Competent Court where plaintiff is carrying on its business for gain. This provision is an additional forum available to the plaintiff, besides, Section 20 of CPC.




Admittedly, plaintiff firm is engaged in the business of manufacturing, marketing, selling, etc. of edible oil and oil cakes at Hathras, U.P. Address given by the plaintiff in the memo of parties is that of Hathras. It is not the case of the plaintiff that it has got any office at Delhi or that he is engaged in his business in Delhi or that he is supplying his goods in Delhi. Some of the bills placed on record by the plaintiff are issued by Yash Traders, Grain Merchants & Commission Agent, Naya Bazar, Delhi. Perusal of these credit bills make it very clear that Yash Traders had supplied raw material to the plaintiff from Delhi to Hathras and these goods were sent CS(OS) No. 643/2006 Page 7 of 27 through trucks, details of which are found in these credit bills. Therefore, these credit bills in no manner indicate that goods of the plaintiff firm were being marketed by it at Delhi. Plaintiff has also placed on record number of bills indicating supply of its products to various places. Goods as per these bills were supplied in U.P. and Bihar. True that, in few bills, name of the broker company/Agent is given as M/s. Laxmi Narayan and in few of the bills name of Kishan Gupta and Mahender Pal Gupta, Delhi finds mention but, from these bills it is not clear if above named agents were of the plaintiff or were of the defendant. The fact remains that goods against all these bills/invoices were sent from Hathras to different places of U.P. and Bihar, but not to Delhi.




A person may be said to be carrying on his business at a place through an agent or a manager or through a servant. The owner may not even visit that place. However, the person acting as an agent must be an agent in strict sense of the term. 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 anyone who pays him.


　


The person named as commission agent, agent in various invoices/bills, prepared by the plaintiff for supply of goods to other CS(OS) No. 643/2006 Page 8 of 27 traders on commission basis cannot be said to be an agent in strict sense of the term. Neither M/s. Laxmi Narayan nor Kishan Gupta or any other agent named in the bills was exclusively attending the business of the plaintiff. There is nothing on record to suggest that they or any of them was carrying on his business in the name of the plaintiff at Delhi or any other place. Therefore, in no circumstance it can be implied that plaintiff firm is carrying on its business at Delhi. Since plaintiff has not been able to show prima facie, from the averments contained in the plaint, that it is carrying on its business within the local limits of territorial jurisdiction of Delhi, provisions of Section 134 of the Act do not come to his rescue.




In â
2. ��M/s. Dhodha House vs. S.K. Maingi WITH M/s. Patel Field Marshal Industries & Ors. vs. M/s.

P.M. Diesel Ltd.', AIR 2006 SC 730, the expression â

��carries on business� and the expression �personally works for gain� appearing in Section 134 of the Act as well as Section 62 (2) of the Copy Right Act is defined in para 45 of the judgment in the following manner:

"45. The expression 'carries on business' and the expression 'personally works for gain'
connotes 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 CS(OS) No.

643/2006 Page 9 of 27 owner may not event 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 the ambit of a civil action within the meaning of section 9 of the Code. But it is necessary that the following three conditions should be satisfied, namely:

(1) 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 that pays him. Thus, a trader in the mufassil who habitually sends grain to Madras for sale by a firm of commission agents who have an independent business of selling goods for others on commission, cannot be said to "carry on business" in Madras. So a firm in England, carrying on business in the name of A.B. & Co., which employs upon the usual terms a Bombay firm carrying on business in the name of C.D. & Co., to act as the English firm's commission agents in




Bombay, does not "carry on business" in Bombay so as to render itself liable to be sued in Bombay.

(2) The person acting as agent must be an agent in the strict sense of the term. The manager of a joint Hindu family is not an "agent" within the meaning of this condition.








(3) To constitute "carrying on business" at a certain place, the essential part of the business must take place in that place. Therefore, a retail CS(OS) No. 643/2006 Page 10 of 27 dealer who sells goods in the mufassil cannot be said to "carry on business" in Bombay merely because he has an agent in Bombay to import

and purchase his stock for him. He cannot be said to carry on business in Bombay unless his agent made sales there on his behalf. A Calcutta firm that employs an agent at Amritsar who has no power to receive money or to enter into contracts, but only collects orders which are forwarded to and dealt with in Calcutta, cannot be said to do business in Amritsar. But a Bombay firm that has a branch office at Amritsar, where orders are received subject to confirmation by the head office at Bombay, and where money is paid and disbursed, is carrying on business at Amritsar and is liable to be sued at Amritsar. Similarly a Life Assurance Company which carries on business in Bombay and employs an agent at Madras who acts merely as a Post Office forwarding proposals and sending moneys cannot be said to do business in Madras. Where a contract of insurance was made at place A and the insurance amount was also payable there, a suit filed at place B where the insurance Co. had a branch office was held not maintainable. Where the plaintiff instituted a suit at Kozhikode alleging that its account with the defendant Bank at its Calcutta branch had been wrongly debited and it was claimed that that court had jurisdiction as the defendant had a branch there, it was held that the existence of a branch was not part of the cause of action and that the Kozhikode Court therefore had no jurisdiction. But when a company through incorporated outside India gets itself registered in India and does business in a place in India through its agent authorized to accept insurance proposals, CS(OS) No. 643/2006 Page 11 of 27 and to pay claims, and to do other business incidental to the work of agency, the company carries on business at the place of business in India."

I have already pointed out above that none of the invoices, sales bills, etc. placed by the plaintiff on record prima facie show that the goods of the plaintiff were being sold in Delhi. True that, names of Delhi brokers are mentioned in some of the invoices, but none of these bills indicate that they were appointed by the Plaintiff as its special Agents to exclusively attend to its business.

The other documents placed on record by the plaintiff are Authority Deed, Partnership Deed, Certificate of Authorization from Ministry of Agriculture and Irrigation dated 10.07.1980 issued at Nagpur, copy of Audit Report from 2002-2005, besides, invoices, sales bills, etc. Authority Deed and Partnership Deed were executed at Hathras where plaintiff is residing and carrying on its business for gain. Letter of authorization issued by the Ministry of Agriculture & Irrigation pertains to some other brand label 'Makhan Chorâ
2. �� and has no direct or indirect bearing to the facts and circumstances of the case. Audit reports of the plaintiff firm, prepared by Chartered Accountant of the plaintiff, were submitted to the concerned Income Tax Authority at Hathras.




　


Plaintiff has invoked the jurisdiction of this Court by alleging that his CS(OS) No. 643/2006 Page 12 of 27 trademark is registered with the Registrar of Trademarks at New Delhi under Class 29 and he has also filed an application for registration of Trademark for other goods manufactured by it in Delhi. Plaintiffâ
4. ��s trademark was initially registered on 9 th August, 1947 with Registrar of Trademark at Mumbai for seven years. This trademark was renewed on 29.11.2002 for another period of seven years vide RLC-3783, from 9th August, 1990 and thereafter for another period of seven years vide RLC-3784 dated 29.11.2002 by Registrar of Trademark Mumbai. Thus, it is clear that trademark of the plaintiff was never registered at Delhi.






There is one application dated 3 rd June, 2002 which probably was filed by the plaintiff for registration of its trademark at Delhi in Class 29, which was already registered at Mumbai. On this document there is a stamp of Trade Mark Registry. This endorsement in clear terms state that number given to the application in no manner is to be considered as acceptance of registration.


　


A cause of action will not arise when an application is filed for registration of the trademark in a given case. The reason being, in a given case, an application for grant of registration certificate may or may not be allowed. A person in whose favour a certificate has CS(OS) No. 643/2006 Page 13 of 27 already been issued has the right and opportunity to oppose an application filed by a person in a given case by filing an objection application and the Registrar, in that circumstance, is required to determine the said question. Therefore, cause of action would arise only when a registered trademark is used. Simply because plaintiff has applied for registration of his trademark at Delhi vide its application dated 3rd June 2002 would not confer territorial jurisdiction on this court.




It is submitted by learned counsel for the plaintiff that defendant has applied for registration of his trademark at Delhi. For that purpose, he has filed a copy of the advertisement appearing in the Trademark Journal. Again no cause of action for filing the suit would arise within the jurisdiction of this Court, only because advertisement has been issued in the Trademark Journal or in other journal notifying the factum of filing of such an application. The Registrarâ
6. ��s Offices for registration of the Trademark have been divided by the Govt. in five different zones. The State of U.P. falls within the Registrar of Trademarks having its head office at Delhi. Naturally, therefore, both the parties being residents of U.P. where they are carrying on their business for gain and/or are working personally for gain had to apply for registration of their respective proposed Trademarks to the Registrar at Delhi. In �M/s. Dhodha House's case (Supra) it CS(OS) No. 643/2006 Page 14 of 27 was observed:

"31. A cause of action will arise only when a registered trade mark is used and not when an application is filed for registration of the trade mark. In a given case, an application for grant of registration certificate may or may not be allowed. The person in whose favour, a registration certificate has already been granted indisputably will have an opportunity to oppose the same by filing an application before the Registrar, who has the requisite jurisdiction to determine the said question. In other words, a suit may lie where an infringement of trade mark or copyright takes place but a cause of action for filing the suit would not arise within the jurisdiction of the court only because an advertisement has been issued in the Trade Marks Journal or any other journal, notifying the factum of filing of such an application. It was further observed in para 37:

37. In Premier Distilleries Pvt. Ltd. v.

Shashi Distilleries [2001 PTC 907 (Mad)], a

Division Bench of the Madras High Court in a matter involving a passing off action, was of the view:

"The cause of action in a suit for passing off, on the other hand and as already observed, has nothing at all to do with the location of the Registrar's office or the factum of applying or not applying for registration. It is wholly unnecessary for the plaintiff to prove that he had applied for registration. The fact that the plaintiff had not applied for registration will not improve the case of the defendant either. Filing of an application for registration of a trade mark, therefore, does not constitute a part of CS(OS) No. 643/2006 Page 15 of 27 cause of action where the suit is one for passing off."

It was further observed:

"The argument advanced that registration if

granted would date back to the date of

application and that the plaintiff would have the right to seek amendment of the plaint to seek relief on the ground of infringement as well, is wholly irrelevant so far as the cause of action for bringing a suit for passing off is concerned. While it may be convenient to the plaintiff to institute a suit in a court where he may later on be able to bring a suit for infringement of the trade mark, that convenience of the plaintiff is in no way relevant for deciding as to whether a cause of action for filing a suit for passing off can be said to have arisen in a place where, the deceit alleged to have been practised by the defendant had in fact, not been practised within the jurisdiction of the court in which the suit is brought."

19. It is pertinent that Mr. Pawan Kumar Mittal, Proprietor of the Defendant firm made a statement in the Court on 10.10.2007. The relevant part of his statement reads as under:- "I have applied for registration of trade mark â

��Radha Mohan Brand� for sale, distribution, etc. of my goods at Haryana, Uttar Pradesh, Rajasthan and Madhya Pradesh but I have not applied for any registration of the said trade mark for sale of goods at Delhi and I shall not apply for this trademark for sale of goods at Delhi."

Thus, it is clear that defendant has applied for registration of CS(OS) No. 643/2006 Page 16 of 27 trademark â

1. ��Radha Mohan� Brand for sale, distribution, etc. of his goods at Haryana, Uttar Pradesh, Rajasthan and Madhya Pradesh but has not applied for registration of the said Trademark for sale of goods at Delhi. Rather, he has given an undertaking that he has no intention to sell, manufacture or deal in any manner with its goods in Delhi under �Radha Mohan Brand� and that he would not apply for the said trademark for sale of goods at Delhi.






Under these circumstances, apprehension of the plaintiff that defendant would sell or pass off his goods as that of the plaintiff at Delhi is completely nullified.


　


In â
3. ��St. Ives Laboratories Inc. vs. Arif Perfumers & Anr., MANU/DE/0151/2009', in similar circumstances this court observed:

"5. Before entertaining a suit, the Court has to ensure whether any part of cause of action had arisen within the jurisdiction of this Court. The registration of a trademark in Delhi cannot be a ground to invoke jurisdiction of Delhi

Courts. The Trade marks Act does not provide that registration of trademark at a particular office shall be a ground for filing a suit for infringement of trademark or passing off trademark within the limits of that Court."

23. It is a settled principal of law that cause of action is a bundle of material facts which are necessary for the plaintiff to prove his case so as to entitle him to succeed in a given case. However, each and CS(OS) No. 643/2006 Page 17 of 27 every fact pleaded ipso facto does not lead to the conclusion that the facts so pleaded give rise to cause of action within the Courtâ

0. ��s territorial jurisdiction. Since plaintiff has not been able to




show prime facie from the averments contained in the plaint that it is carrying on its business within the local limits of territorial jurisdiction of Delhi, the provision of Section 134 of the Act do not come to his rescue.

In Haryana Milk Foods Ltd.'s case (supra), it was observed that:- "10. Order VII Rule 1 of the Code enjoins that a plaint shall contain the particulars as to the facts constituting the cause of action and the facts showing that the Court has jurisdiction. It is, therefore, mandatory that a plaintiff must give such particulars as will enable the Court to ascertain from the plaint whether in fact and in law a cause of action did arise as alleged or not. Similarly, if a plaintiff relies on defendantâ

1. ��s place of business as giving jurisdiction, the facts showing this must be stated in the body of the plaint. It is imperative that the plaint must aver all the facts showing how the Court has the jurisdiction.

11. It is trite law that the question of jurisdiction has to be decided, prima facie, by looking into the averments made in the plaint and not by the defence which may be set up by the defendant. It also does not depend upon the character of the relief prayed for by the plaintiff. [ See Jawahar Engineering Company (Supra)]. It is equally true that to determine the question of jurisdiction of the Court on the basis of bundle of facts, it is not enough to look only at a paragraph of the plaint, the entire plaint CS(OS) No. 643/2006 Page 18 of 27 must be taken into consideration to ascertain the bundle of facts which give rise to the cause of action and to determine whether any one or more of such facts occurred within the territorial jurisdiction of the Court." In the said case, since Court did not find any such averment and plaintiff failed to show that defendant was carrying out its business in Delhi, plaint was rejected.

Similarly, in Gupta Brothers Conduit Pipe Manufacturing Co. Ltd. case (supra), when plaintiff failed to show that it carries on business in Delhi, this Court held that averments made in the plaint failed to confer territorial jurisdiction on this Court.

Provisions contained in Section 62 of the Copy Right Act when read are very similar to the provisions contained in Section 134 of the Act. By virtue of Section 62 (2) of the Copy Right Act, plaintiff is entitled to file a suit for infringement of copyright in the District Court within the local limits of whose jurisdiction at the time of the institution of the suit or other proceedings, the plaintiff actually was/is voluntarily residing or carrying on its business or personally works for gain. As discussed above, plaintiff has failed to make out a case in the plaint that it is voluntarily residing or carrying on its business or working personally for gain within the territorial jurisdiction of Delhi Courts. Therefore, plaintiff cannot invoke CS(OS) No. 643/2006 Page 19 of 27 provisions of Section 62 (2) of the Copy Right Act to vest territorial jurisdiction in this Court.


　


When the advantage given to the plaintiff to file a suit under Section 134(2) of the Act and under Section 62(2) of the Copy Right Act cannot be availed of by it in this case, it is to be seen if forum of Section 20 CPC is available to it to invoke territorial jurisdiction of this court. This Court can entertain the suit only if averments in the plaint substantially meet the criteria as laid down by provisions of Section 20 CPC.




Section 20 CPC reads as under:

"20. Other suits to be instituted where defendants reside or cause of action arises. Subject to the limitations aforesaid, every suit shall be instituted in a Court within the local limits of whose jurisdiction

(a) the defendant, or each of the defendants where there are more than one, at the time of the commencement of the suit, actually and

voluntarily resides, or carries on business, or personally works for gain; or (b) any of the defendants, where there are more than one, at the time of the commencement of the suit actually and voluntarily resides, or carries on business, or personally works for gain, provided that in such case either the leave of the Court is given, or the defendants who do not reside, or carry on business, or personally work for gain, as aforesaid, acquiesce in such institution; or CS(OS) No. 643/2006 Page 20 of 27 (c) the cause of action, wholly or in part,

arises."

Essentially, this case does not fall within the criteria of Section 20 (a) and (b) of CPC. It is also not the case of the plaintiff that defendant is residing in Delhi and/or is personally working for gain at Delhi. The address of the defendant as given in the plaint is that of Agra. None of the documents placed on record by the plaintiff indicate that defendant has been passing off his goods as that of plaintiff at Delhi. Defendant is running a small business at Agra only and, therefore, it cannot be said that he is doing his business all over India including Delhi. Averments contained in the plaint also do not specifically indicate that defendant is carrying on his business and is working for gain at Delhi.

Next to be seen by the Court is whether this suit falls within the criteria as laid down under Section 20 (c) CPC.


　


The said provision enables the plaintiff to file a suit at all such places where the cause of action arises either wholly or in part. For that purpose, whether the defendant has been selling its products in Delhi or not becomes wholly irrelevant as the Court has to see the averments contained in the plaint to determine whether it has the territorial jurisdiction to entertain the suit. CS(OS) No. 643/2006




32. As discussed above, plaint does not disclose if the defendant has been selling its products on a commercial scale at Delhi. Mr. Pawan Kumar Mittal, Proprietor of the Defendant firm made a statement that he never sold any goods manufactured or dealt by him in Delhi in the past nor was selling any goods in Delhi at present. He undertook not to sell, manufacture or deal with his goods in future in Delhi. The relevant part of his statement reads as under:- ".....I have never sold any goods manufactured or dealt by me in Delhi in the past nor I am selling any goods in Delhi at present. I also undertake that I shall not sell, manufacture or deal with goods in future in Delhi. I have no intention to sell, manufacture or deal in any manner any of goods in Delhi under â
2. ��Radha Mohan Brand.






Under these circumstances, it can be safely inferred that no cause of action wholly or in part arose at Delhi and therefore, plaintiffâ
2. ��s case does not fall within the ambit of Section 20 (c) CPC, so as to vest territorial jurisdiction in this case.






34. True, that copyright of the plaintiff as regards "RADHA KRISHNA with device of Radha Krishna Label" is registered at Delhi. Mere registration of the copyright at Delhi, as discussed above does not confer territorial jurisdiction on this Court. Plaint is absolutely silent as to how defendant has infringed his copyright specially when in his statement on oath, defendant has deposed that CS(OS) No. 643/2006 Page 22 of 27 he never sold his goods in Delhi or anywhere else infringing the copyright of the plaintiff, "RADHA KRISHNA with device of Radha Krishna Label". Perusal of the labels used by the plaintiff on his products under the trademark "RADHA KRISHNA" and the label printed on the products sold by the defendant prima facie indicate that defendant has in no manner infringed the copyright of the plaintiff. To vest territorial jurisdiction in this Court, plaintiff is required to specifically plead if defendant has infringed his copyright while passing off his goods as that of plaintiff at Delhi.




Since in this case the jurisdiction has been invoked by the plaintiff by joining two causes of action in terms of provisions of CPC, the same would not mean that thereby the jurisdiction could be conferred upon the court which had jurisdiction to try only the suit in respect of one cause of action and not the other. Recourse to the additional forum in a given case can be adopted by the plaintiff, if both the causes of action arose within the jurisdiction of the Court which otherwise had the necessary jurisdiction to decide all the issues. Jurisdiction of this court has been invoked by the plaintiff by joining two causes of action i.e. infringement of his registered trademark and infringement of registered copyright, when, none of the causes of action arose within the jurisdiction of the Court. CS(OS) No. 643/2006




In Amrutanjan Limited's case (supra), where jurisdiction of Madras Court was invoked by the plaintiff alleging that his trademark was registered at Madras, he was manufacturing its products at Madras and marketing the said products throughout the country and his trademark allegedly being offended by the defendant in one part of the country i.e. Madhya Pradesh and the situs of the property in the trademark of the plaintiff also being at Madras, applying provisions of Section 20 CPC, it was held that suit of the plaintiff based on infringement of its trademark filed at Madras Court was maintainable and the Court had the jurisdiction to try the case in accordance with law. In this case, plaintiff is neither manufacturing nor is supplying its goods at Delhi and essentially he is supplying goods in UP and Bihar and even the registration of the trademark is at Bombay; provisions of Section 20 CPC cannot be applied.


　


Similarly, in S. Oliver Bernd Freir Gmbh's case (supra), where trademark of the plaintiff was registered at Delhi, it was exporting goods from Delhi and defendant had applied for registration of their trademark on an all India basis for sale of goods all over India and there was no assertion from the side of the defendant that they did not intend to sell their goods in Delhi, it was held that High Court at Delhi had jurisdiction to entertain the suit. In the instant case, defendant has made a statement on oath that he has not applied for CS(OS) No. 643/2006 Page 24 of 27 registration of his trademark for supplying of goods at Delhi and all over India, except Haryana, UP, Bihar and Madhya Pradesh.




M/s. Govardhan Motels's case (supra), is not applicable to the facts and circumstances of this case. From bare reading of plaint, it is clear that no part of cause of action arose in favour of the plaintiff at Delhi. Therefore, it is not a case which needs determination of issue of cause of action after a full fledged trial.


　


In Intas Pharmaceuticals Limited's case (supra), Section 20 of CPC was invoked and not Section 134 of the Trade Marks Act. In the said case, defendant had admitted in the written statement that he was selling the offending products in Delhi and therefore, it was held that Courts at Delhi had the jurisdiction to try the suit.




40. In Pfizer Products case (supra), this Court held that if whatever stated in the plaint is correct, the Court would have to also assume that the threat or the intention of the defendants to sell and offer for sale the offending goods in Delhi is also correct and therefore, if the threat exists then this Court has the jurisdiction to entertain the suit. In view of statement of Pawan Kumar Mittal, Proprietor of the defendant firm, the alleged threat or his intention to sell and offer for sale the offending goods in Delhi is belied. Hence, this judgment has no bearing on this case.








41. In L.G. Corporation & Anr.'s case (supra), plaintiff had not only averred specifically in the plaint but had also placed on record documents to show that defendants were selling their infringing goods violating trademark of the plaintiff at Delhi. Under the said circumstances, it was held that the Court at Delhi had jurisdiction to entertain the suit. On the facts of this case and the averments contained in the plaint, this




judgment is of no help to the plaintiff. It is noted that in the said case, counsel for the plaintiff had conceded that filing of an application for registration of the trademark in the Trademarks Registry, Delhi, would not give jurisdiction to this Court.






In Jagdamba Oil Agency's case (supra), L.G. Corporation & Anr.'s case (supra) was followed.




Above said decisions relied upon by the plaintiff do not advance its case as in all those cases, Court found clear averments in the plaint indicating that plaintiff either had the office in Delhi or was carrying on business in Delhi and that the infringing goods of the defendants were actually sold in Delhi.


　


Therefore, under these circumstances, plaintiff has failed to show that it carries on its business at Delhi or that defendant has been selling his goods at Delhi and passing off as that of the plaintiff. CS(OS) No. 643/2006 Page 26 of 27 Hence, I hold that averments made in the plaint have failed to confer any territorial jurisdiction on this Court. Application is accordingly allowed.




Once it is held that Court has no territorial jurisdiction, it need not go into the merits of the case and deal with the matter in controversy.


　


Plaint is ordered to be returned to the plaintiff along with original documents for presentation to the proper court of jurisdiction. There are no orders as to costs. Suit and all other applications stand disposed of. ARUNA SURESH (JUDGE) MARCH 12, 2010

LOREAL Vs MY DOLLAR STORE

IN THE HIGH COURT OF DELHI AT NEW DELHI

       

        CS(OS) 1444/2008

       

        M/S L'OREAL .....

        Plaintiff

        Through Mr. S.K. Bansal, Mr. Ajay Amitabh Suman and Mr. Shashi P. Ojha,

        Advocates.

       

       

      versus

       

        MY DOLLAR STORE AND ANR. ..... Defendant

        Through Nemo.

       

        CORAM:

         HON'BLE MR. JUSTICE SANJIV KHANNA

       

         O R D E R

         30.07.2008

       

       

       

        I.A. Nos. 8834-36/2008

        

        Allowed, subject to all just exceptions. Plaintiff will file typed copy

        and English translations within four weeks. Original documents will be

        produced/filed in the Court as and when directed.

        The applications are disposed of.

       

        CS(OS) No. 1444/2008

       

        Let the plaint be registered.

        Issue summons to the defendants by all modes prescribed under Order V

        Rule 9 of the Code of Civil Procedure, 1908, for 5th November, 2008.

      Steps will

        be taken within one week.

        I.A. No. 8833/2008

        Learned counsel for the plaintiff seeks permission to file affidavit of

        Mr. Sheel Bansal, constituted attorney of the plaintiff. Permission is

      granted.

        Affidavit is permitted to be filed and will be kept in Part-II file.

        Plaintiff claims that he had adopted word/mark ?Maybelline? in 1917 and

        the said mark enjoys considerable goodwill and reputation all over the

      world.

        The said mark is also registered in India in respect of cosmetics,

      bleaching

        preparations etc.

        It is stated in the plaint that the defendants are selling counterfeit

        goods, which are not manufactured by the plaintiff by the name

      ?Maybelline?.

        Photocopy of the packaging material including the box have been enclosed

      at

        pages 5 and 6 of the list of documents.

        In view of the averments made in the plaint, I feel the plaintiff has

        been able to make out a case for grant of ex parte injunction. The

      defendants

        and their agents are restrained from dealing and marketing ?Maybelline

      White

        Depilatory? packaging of which is enclosed at pages 5 and 6 of the list

      of

        documents dated 20th July, 2008, till the next date of hearing.

        Compliance of Order XXXIX Rule 3 will be made within a period of three

        days.

        Liberty is also granted to the plaintiff to move an appropriate

        application before this Court in case they come across any other

      counterfeit

        product, which is being dealt with and sold by the defendants.

       

       

         SANJIV KHANNA, J.

       

        JULY 30, 2008

        VKR

       

Khushi Ram Behari Lal vs New Bharat Rice Mills

Equivalent citations: 2005 (31) PTC 704 IPAB

Bench: S Jagadeesan, R Singh

Khushi Ram Behari Lal vs New Bharat Rice Mills on 3/12/2004

JUDGMENT

 Raghbir Singh, Vice−Chairman

1         C.O. Nos. 20 and 21 of 1989 filed in the High Court of Delhi under
Sections 46 and 56 read with Section 107 of the Trade and Merchandise Marks Act,
(hereinafter referred to as the Act) have been transferred to this Board in
terms of Section 100 of the Trade Marks Act, 1999 and numbered as TEA Nos. 128
and 129/04/TM/DEL.

2         TRA/128 relates to rectification of the Register in relation to trade mark
’TAJ MAHAL’, label under No. 387177 and TRA/129 relates to trade mark ’TAJ
MAHAL’ word per se under No. 338004 both in relation to class 30 registered in
the name of the respondent.

3         The cases were listed for hearing on 2.11.04 in the sitting of the Board
held at New Delhi. Since the material facts and the legal issues involved in
both the cases are the same, it was decided with the concurrence of both the
counsel that the arguments and conclusions made and arrived at in TRA/128 shall
be adopted in relation to TRA/129 also. Learned counsel Shri S.K. Bansal with
Shri Ajay Amitabh Suman appeared on behalf of the petitioner and learned Counsel
Shri Amarjit Singh appeared on behalf of the respondent.

4         Petitioner claims that he is the proprietor of the trade mark consisting
of device of ’TAJ MAHAL’ label in relation to basmati rice on account of its
adoption in year 1978 and had been continuously using the same thereafter. The
mark has become distinctive and associated with the goods of the petitioner on
account of its long continuous and extensive and exclusive use. The petitioner
has filed application for its registration under application No. 506080 in
respect of rice for export falling in class 30 of the Fourth Schedule.

5         Respondent claims to be the owner and proprietor of the trade mark ’TAJ
MAHAL’ in respect of basmati rice and filed application for its registration
under application No. 387177 in class 30 in relation to rice of all kinds on

3.3.82 showing the user from 1.7.78. Petitioner’s enquiries revealed that the
respondent had never used the said mark for export and the respondent was using
the said mark only in an isolated manner for sale of its rice in Delhi and
started using the same very recently. The petitioner has already filed a passing
off suit against the respondent being Suit No. 2230 of 1989 in the High Court of
Delhi. The petitioner learnt from the local commission agents and rice dealers
that the respondent had filed an application for issuance of search and recovery
warrants under Section 94 of Cr.P.C. Thus, in view of these facts the petitioner
is an aggrieved person in terms of the provisions of Section 56 of the Act.

 6. The respondent being not proprietor of the trade mark TAJ MAHAL’ in
relation to basmati is liable to be expunged and removed from the Register on
the grounds that the respondent acquired the registration in utter disregard of
the petitioner’s right, thus having committed a fraud. Respondent had made
several material misstatements in connection with the use of the trade mark.
Respondent had been engaged in trading deceptively. Respondent had obtained
registration in contravention of Section 11 of the Act. The trade mark at the
commencement of these proceedings was not distinctive of the goods of the
respondent. Respondent got the trade mark registered without any bona fide
intention on his part to use the same. Respondent is not the proprietor of the
trade mark and the registration of the trade mark is in violation of provisions
of Sections 9, 11(a), 11(e), 12(1) and 18(1) of the Act.

Indian Kanoon − http://indiankanoon.org/doc/243681/

1         Respondent filed its reply on 3.5.1990 controverting all the material
averments of the petitioner. Respondent submitted that the goods of the
petitioner were recovered by the police in a raid conducted at Kandla Port on
24.8.1989. The petitioner filed his rejoinder on 1.4.1991 materially reiterating
the submissions made in the original application.

2         Learned counsel for the petitioner submitted that the registration No.
338004 is in class 30 in relation to rice and was registered on 30.6.1978 in
relation to word mark only. The user claimed is proposed to be used. The
registration No. 387177 is in class 30 in relation to rice for label mark ’TAJ
MAHAL’ as from 3.3.82 and the user claimed is 1.7.1978. He claimed that the user
of the petitioner for the label mark ’TAJ MAHAL’ is from 1.1.1978 in relation to
rice. He drew our attention to page 10 of the order of Registrar in relation to
application No. 506080 in the name of petitioner in the present case wherein the
Registrar has recorded that the opponent (respondent in the present case) has
given figure in relation to their products as from the year 1982−83 only. The
earliest sale document which has been submitted relates to 30.4.1983. Learned
counsel for the petitioner claimed that the respondent is not the prior user of
the mark and for that reason it should be expunged from the Register. He drew
our attention to para 27.08 and 27.09 of Narayanan 4th Edition where it has been
provided that a trade mark could be expunged from the register of registrations
if it was obtained by fraud or by making untrue statement.

3         Learned counsel for the respondent claimed that it is material that it
being a rectification application the onus is upon the petitioner. He argued
that the crux of his argument is that he is the prior user. He drew our
attention to the suits pending against the petitioner being Suit No. 2230/89 and
113/90. He argued that the registration was obtained by the respondent on
30.6.1978 and subsequent registration was taken on 3.3.1982. He further drew our
attention to the appeal pending before the IPAB in CM (M) 199/2000 transferred
from the High Court of Delhi. He further submitted that there are not only two
contending parties contesting the mark ’TAJ MAHAL’, but also a third party in
the same matter. One UB Enterprises had filed their application being
application No. 551949 dated 30.8.89. In conclusion, he submitted that in this
rectification petition the onus is upon the petitioner where he has miserably
failed to make up his case. He further submitted that the concept of user is not
the same as that of the concept of adoption. The petitioner in the present
matter has by his own submission claimed his right by virtue of adoption and not
by virtue of user. Whereas the respondent’s claim is based upon actual user of
the mark. The petitioner has failed to substantiate in the main proceedings and
tried to take advantage in the collateral proceedings.

4         We heard the arguments of learned Counsel for the petitioner and the
learned Counsel for the respondent. The trade marks were registered on 30.6.1978
and 3.3.1982 respectively and as on the date of filing of the present petitions
a period of over seven years had already elapsed and as such the petitions
attract the provisions of Section 32 of the Act. The petitioner has claimed
himself to be the prior user of the mark and has claimed that he is the
proprietor of the mark, being adopter of the mark from earlier date. Besides, it
is submitted that the impugned registrations were taken by fraud in
contravention of Section 11 of the Act and the mark was non−distinctive.
However, there is nothing in his pleadings and the arguments made before us to
substantiate his allegation of fraud, contravention of Section 11 and the non−
distinctiveness of the mark. The petitioner has further submitted that the
respondent had no bona fide intent to use the mark. This submission runs
contrary to the pleadings of the petitioner in itself where while alleging that
the mark is not being used for export purposes, he has acknowledged that the
respondent is using the mark in relation to his trade within India. We are not
concerned whether the mark is exclusively being used for trade in India and the
respondent has no segment of export trade. The fact of the matter is that as per
the pleadings of the petitioner itself the mark is being used. We are concerned

Indian Kanoon − http://indiankanoon.org/doc/243681/

with that much only. The petitioner has claimed that he is prior user of the
mark ’TAJ MAHAL’. The user claimed by the respondent in relation to registration
No. 387177 is from 1.7.1978. The petitioner claims that it is using the device
of ’TAJ MAHAL’ in relation to basmati rice on account of its adoption in the
year 1978. He has not mentioned any specific date in his pleadings. However, in
arguments before us he claimed his user from 1.1.1978, for which he did not
submit any cogent proof. Still he cannot argue something which is contrary to
the pleadings without amending the pleadings. The use of the year 1978 in the
pleadings is to be strictly construed and he cannot be given any advantage of
the weakness left by him in the pleadings. For that matter it cannot be in any
case taken to be a period anterior to 1.7.1978. Petitioner has further relied
upon the opposition of the respondent in trade mark application No. 506080 of
the petitioner wherein the respondent has given his sales figures as from the
year 1982−83 as reflected through the order of the Registrar in that case. He
has failed to mention that the Registrar has specifically recorded that the
opponent has made his submission that the sales figure for the year 1978−79 to
1981−82 were not immediately available and as such the same had not been given.
The petitioner in his arguments in matter of his prior user put reliance upon
the claim made by him in his application No. 506080 which is much later in time
than the impugned registrations of the respondent The whole theme of
petitioner’s claim in application No. 506080 is about adoption of mark as from
1.1.1978. There is not an iota of claim of user from a specific date. We are
concerned with the claim of actual use.

1         Learned counsel for the petitioner put reliance upon Milment Oftho
Industries and Ors. v. Allergan Inc., 2004 (28) PTC 585 (SC) a matter relating
to passing off action wherein the emphasis of the Court had been that, non−user
of the mark in India in itself could not be a disqualification if the same had
been first used in the world market. The matter was not finally decided. It
related to an interim injunction only and the Court concluded with the direction
that the main suit may be decided at the earliest. There is nothing in that case
which can help us in the instant case. L.D. Malhotra Industries v. Ropi
Industries, PTC (Suppl) (2) 564 (Del) relied upon by the petitioner related to a
controversy between the appellant and the respondent in matter of claim of prior
user by the respondent vis−a−via claim of the appellant as proposed to be user.
The facts involved being crystal clear and in no way being parallel to the
matter instantly before us, we feel that nothing can be taken out of this Delhi
High Court judgment to decide the matter before us. The proposition of law laid
down in Century Traders v. Roshan Lal Duggar and Co. , Pritam Das v. Anil Food
Industries, 1995 PTR 233, Radhika Agro Industries Pvt. Ltd. v. Pawan Agro Foods
Ltd., 1998 PTC 151, Jai Prakash Gupta v. Vishal Aluminium Mfg. Co., 1996 PTC
575, Bimal Govindji Shah v. Panna Lal Chandu Lal, 1997 PTC 347 (Del) relate to a
vital factor that in matter of granting registration or deciding any passing off
dispute, the prior use of the trade mark is the vital factor and the
registration of the mark or filing of application prior in time is not
significant.

2         In view of the above, we are of the view that the petitioner has failed
to adduce any cogent evidence to prove that the original registration was
obtained by fraud, the trade mark was registered in contravention of provisions
of Section 11 of the Act and offends the provisions of that section on the date
of commencement of the proceedings or that the trade mark was not at the
commencement of the proceedings distinctive of the goods of the proprietor.
Accordingly, we dismiss the petition in TRA No. 128. For the reasons the reasons
stated above we dismiss the petition in TRA No. 129 also. No order as to costs.

Indian Kanoon − http://indiankanoon.org/doc/243681/

KAMDHENU ISPAT LTD VS KAMDHENU METAL

IN THE HIGH COURT OF DELHI AT NEW DELHI

SUBJECT : Companies Act, 1956

C.S. (OS) No. 1204 of 2004

Judgment reserved on: May 14, 2007

Judgment delivered on: December 04, 2007

M/s. Kamdhenu Ispat Limited ..... Plaintiff Through: Mr. Ajay Amitabh Suman with Mr. Pankaj Kumar

versus

M/s. Kamdhenu Metal ..... Defendant Through: None

VIPIN SANGHI, J.

1.By this order I propose to dispose of the above suit filed by the plaintiff seeking the relief of a perpetual injunction restraining passing off the goods by defendants under the mark 'Kamdhenu Metal', rendition of account of profits, delivery up, etc.

2.Summons were issued in the prescribed form and were duly served upon the defendant. However, the defendant did not take part in the proceedings and the matter was proceeded ex-parte against him. Ex-parte evidence was led. Documents were exhibited. Arguments advanced and orders reserved. PLAINTIFF'S CONTENTIONS

3.The plaintiff company which is duly registered under the Companies Act, 1956, having its registered office at A-1114, Riico Industrial Area, Phase III, Bhiwadi, Alwar, Rajasthan and Delhi Office at 5/2, Punjabi Bagh Extension, New Delhi is a public limited company. The suit has been filed through Mr. Arvind Gupta, Company Secretary of the plaintiff who has been duly authorized for the said purpose vide a Board Resolution in his favour. The plaintiff company in the year 1991 honestly, bonafidely adopted the trademark / trade name 'Kamdhenu' in the course of the trade of manufacturing and marketing of Steel Bars and other allied goods. Plaintiff's products are being distributed in the major parts of the country. The word 'Kamdhenu' also forms a vital part of its trade name, i.e., Kamdhenu Ispat Ltd.

4.Plaintiff has filed a number of applications under different classes of Trademarks Act, 1999 for the registration of the said mark.

5.The plaintiff also has copyright in the unique stylized manner alongwith the colour combination, in which the word 'Kamdhenu' is depicted. The same is registered under the Copyrights Act, 1957. The plaintiff's goods and business under the said trademark have acquired tremendous goodwill and enviable reputation in the market. The Plaintiff has built up an extensive trade thereunder. The plaintiff has spent enormous amount of money in publicizing the said trademark/trade name through several modes. As a result, the said trademark and trade name have acquired secondary meaning which denotes the plaintiff and its goods exclusively. Thus, the said trademark is a well known trademark within the meaning of Section 2(1)(ZG) of the Trademarks Act, 1999. The public at large associates and identifies the said trademark with the plaintiff and its goods alone.

6.The defendants are engaged in the manufacturing and marketing of the steel products including household containers under the trademark / trade name 'Kamdhenu Metal'. Defendant No. 1 appears to be the firm and defendant No. 2 the person managing the affairs of defendant No. 1. However, the exact constitution/relation of the defendants is not known.

7.Towards the end of June, and beginning of July 2004, the plaintiff came to know that the products of the defendants are being sold under the trademark / trade name 'Kamdhenu Metal' identical in depiction as well, to that of the plaintiff.

8.The goods of the defendants are similar/cognate goods. The trademark / trade name adopted by them is identical and deceptively similar to the trademark / trade name that of the plaintiff in each and every respect including getup, make up and the artistic manner in which it is depicted. It is also phonetically similar to the plaintiff's trademark / trade name. Therefore, the impugned trademark / trade name of the defendant is bound to cause, deception and confusion in the normal course of business and has been adopted by the defendant with the sole aim of riding piggyback on the reputation of the plaintiff. Thus, the defendants are passing off and enabling others to pass off their goods and business as that of the plaintiff. The defendants are not the proprietor of the impugned trademark / trade name and therefore have no right to adopt to use the same as a trademark / trade name or in any other manner without the leave, license or authority of the plaintiff.

9.The plaintiff through their attorneys addressed a cease and desist notice dated 14.7.2004 to defendant No. 1 calling upon it to desist from using the said trademark / trade name. The same was returned with the remarks 'unclaimed'. The plaintiff launched inquiries in the market about the business activities of the defendants and received information that the defendants had recently started using the said trademark / trade name commercially. The business is being carried out by the defendant in a clandestine manner without issuing any formal bills and invoices against the sales being made by them.

10.The cause of action arose in its favour in the end of June and beginning of July 2004, when the plaintiff obtained knowledge of the illegal activities of the defendants. This court has jurisdiction to try and adjudicate upon the present suit as the impugned acts of passing off are being committed within the jurisdiction of this court, as the business is being conducted in Delhi and other parts of the country in clandestine manner. The plaintiff has its corporate office at Delhi and the application for registration of trademark has also been filed in Delhi. Thus, Section 134 of the Trademarks Act, 1999 is applicable. DISCUSSION AND DECISION

11.Since the defendant has failed to appear, the matter was proceeded with ex-parte and after arguments order was reserved. However, while preparing the judgment it was noticed that the affidavit by way of evidence filed by the Plaintiff was deficient, inasmuch as, ex parte evidence with respect to the territorial jurisdiction of this court to entertain this suit was not led and therefore the matter was listed for directions on 31.7.2007. Pursuant thereto, an additional affidavit by the Plaintiff was filed on 14th September 2007 taking care of the deficiencies. Since the matter is ex-parte, I will now proceed to consider the claim of the Plaintiff on the basis of the ex-parte evidence lead by it.

12.The Plaintiff has filed its evidence by way of affidavit as Ex. PW-1/A deposing the facts as narrated in the plaint. The Plaintiff also proved various documents marked as Ex.P-1 to Ex.P-4. Ex.P-1 is the document depicting the trademark of the Plaintiff. The mark KAMDHENU SARIA is depicted in red and black colour in Capital Letters in English and in the Devnagari script. It also comprises of a logo with the words “Sampurna Suraksha ki Guarantee” written in the Roman script and devnagri script. Ex.P-2 is the trademark/trade name adopted by the defendant. The depiction of the defendants mark “Kamdhenu Metal” in Ex. P-2 is in a different font. The Plaintiff's sales figure for the years 1995-96 to the years 2003-2004 have been exhibited as Ex.P-3. It is seen that the Plaintiff has sales figures of over Rs.75 crores in the year 2003-2004 and there has been a steady growth in the sales from 1995-1996 onwards. By way of additional affidavit dated 21.7.2006, the Plaintiff has also filed a copy of the certificates issued by the trademark registry in respect of the registration of the trademark Kamdhenu in various classes.

13.Having gone through the evidence adduced by the Plaintiff and having perused the marks of the Plaintiff and the defendant, I am of the opinion that the Plaintiff has made out a case for grant of permanent injunction, as prayed for. Since the marks in question are phonetically similar, and the Plaintiff has been using its mark for the sale of its goods for a considerable period of time and has acquired goodwill and repute in the business in the market, therefore the likelihood of confusion and deception being caused to the public at large cannot be ruled out and appears to be inevitable. Since the plaintiff has been using this mark in respect of Steel and Allied products, the use of the mark by the defendant in respect of Steel Utensils can only lead an ordinary man to believe that the products have originated from the plaintiff or otherwise have connection with his business.

14.I, therefore, pass a decree in favour of the plaintiff, permanently injuncting and restraining the defendants and their proprietors/partners, servants, agents, representatives, dealers and others acting for and on its behalf from infringing the trade mark of the plaintiff or infringing the copyright of the Plaintiff contained in the artistic manner in which the said mark is depicted, or in any manner represent that its goods originate from the plaintiff or to do anything the exclusive right to do which is conferred upon the plaintiff as the owner of the trademark/copyright in the said mark. The defendants are further restrained from manufacturing, selling offering for sale, advertising, etc., directly or indirectly goods under the trademark Kamdhenu or any other trademark, which may be desciptively similar to the plaintiff's mark. I further direct the rendition of accounts by the defendant. I also award cost of the suit in favour of the plaintiff and against the defendant.

15.However, it is noted that though the relief of rendition of account has been valued for the purposes of the jurisdiction at Rs.20,00,500/-for the purposes of court fee, it has been valued at Rs.1,000/-and court fee of Rs.150/-only has been affixed thereon. The total court fee paid by the plaintiff is only Rs.300/-. To my mind, the suit has not been properly valued for the purposes of court fee and adequate court fees has not been affixed thereon. This Court in Bharat Sanchar Nigam Ltd. vs. Bharat Sanchar Nigam Executive Association (Regd.) and others, 130 (2006) DLT 195, deprecated the practice of valuing the suit for the purpose of pecuniary jurisdiction at higher value wherein court fees is not affixed accordingly, wherein it was held that though the fixation of value of the suit is in the discretion of the plaintiff, but once he exercises such discretion on bona fide belief, he is obliged to pay the court fee in accordance with the provision of the Court Fees Act, 1870. Consequently, the plaintiff is directed to pay ad valorem court fees on the amount of Rs.20,01,500/-at which amount the suit has been valued within one month. The decree shall be drawn up only upon the payment of the balance court fees by the Plaintiff.

Sd/

VIPIN SANGHI, J

SHRI DEEPAK KISHORE JOSHI VS M/s. OSWAL INDUSTRIES

Intellectual Property Appellate Board, Chennai - Orders

INTELLECTUAL PROPERTY APPELLATE BOARD

Guna Complex, Annexe-I, 2^nd Floor, 443, Anna Salai, Teynampet, Chennai – 600 018

(Circuit Bench sitting at Delhi)

TRA/108/2004/TM/DEL (C.O. No. 7/1998)

THURSDAY THIS, THE 17^th DAY OF FEBRUARY, 2005

Hon’ble SHRI JUSTICE S. JAGADEESAN -- Chairman Hon’ble DR. RAGHBIR SINGH --Vice-Chairman

SHRI DEEPAK KISHORE JOSHI Trading as M/s. GALAXY FOOTWEAR A-21/1, Naraina Industrial Area Phase-I NEW DELHI - 110 028 --Applicant

http://www.ipab.tn.nic.in/Orders/060-2005.htm (1 of 3)4/3/2009 3:47:44 PM Intellectual Property Appellate Board, Chennai - Orders

(By Advocate – None)

Vs.

1              M/s. OSWAL INDUSTRIES
H-26, Udyog Nagar
DELHI – 110 041.

2              THE REGISTRAR OF TRADE MARKS Trade Marks Registry Okhla Industrial Estate NEW DELHI – 110 020 --

Respondents

(By Advocate – Shri Ajay Amitabh Suman for R-1)

O R D E R (No. 60 of 2005)

http://www.ipab.tn.nic.in/Orders/060-2005.htm (2 of 3)4/3/2009 3:47:44 PM Intellectual Property Appellate Board, Chennai - Orders

Hon’ble Shri Justice S. Jagadeesan

 While the matter was pending before the Hon’ble High Court of Delhi, the learned counsel for the first respondent filed IA/104/2000 for discharging him from the case and the High Court directed notice to the applicant. By endorsement dated 20.11.2001 from the High Court, it is seen that the notice sent to the applicant returned un-served with endorsement ‘Locked’. Fresh notice was ordered by the High Court on 4.11.2003, the service of which could not be effected. The notice send from the Registry of the Appellate Board to the applicant also returned with remarks that ‘Galaxy Footwear is closed since long’, who is the applicant herein. In view of the same, no option is left with us but to dismiss the TRA/108/2004/TM/DEL for non-prosecution. Accordingly, the same is dismissed.

(Dr. Raghbir Singh) (Justice S. Jagadeesan) Vice-Chairman Chairman

AVN

Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.

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