M/S KRBL LTD Vs Lal Mahal

$~5

*IN THE HIGH COURT OF DELHI AT NEW DELHI

%	Judgment Reserved on:	09th July, 2015
	Judgment Delivered on: 01st December, 2015

+FAO(OS) 188/2015 & CM Nos.7017-7018/2015

M/S KRBL LTD.	.... Petitioner
versus
LAL MAHAL LTD AND ANR	.... Respondents

Advocates who appeared in this case:

For the Petitioner : Mr Akhil Sibbal with Mr S.K.Bansal and Mr Ajay Amitabh Suman, advocates

For the Respondents : Mr Mohan Vidhani, Mr Sumit Aggarwal, Mr Rahul Vidhani, Mr Ashish Singh and Ms Purva Chugh, advocates

CORAM:-

HON’BLE MR JUSTICE BADAR DURREZ AHMED HON’BLE MR JUSTICE SANJEEV SACHDEVA

JUDGMENT

SANJEEV SACHDEVA, J

1.The appellant impugns order dated 20.03.2015 whereby the application of the appellant under Order XXXIX Rules 1 & 2 of the Code of Civil Procedure (CPC) has been dismissed.

2.The appellant, who is the plaintiff, filed the suit for permanent injunction, restraining, infringement, passing off of the appellant’s

FAO(OS) No.188/2015

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mark “India Gate” by the respondent (defendant in the suit), who is using the mark “Church Gate”. The appellant in the suit claimed a decree of permanent injunction restraining the respondent from using the word/mark/label with the device of “Gate” alleging it to be deceptively similar to the word/mark/label of the appellant’s mark “India Gate” or the device of “India Gate” in relation to goods and processing of rice and allied/cognate goods.

3.As per the appellant, the predecessor of the appellant M/s

Khushi Ram Bihari Lal adopted the mark “India Gate” with the device of “India Gate” and has been exporting rice to foreign countries since

1993 and has built up its reputation and goodwill over the years. The appellant applied for registration of its trade mark/label in class 30 on 19.03.1999 and the application is still pending. Various other applications for registration of the mark have been filed by the appellant. The appellant also claims to be the owner of the original art work of the device “India Gate” and the copyright involved in the same. The appellant claims to have spent a huge amount on the advertisement and, marketing and promotion of its mark “India Gate”.

4.As per the appellant, the respondents have adopted a

deceptively similar mark/label “Church Gate” with the device of “Gate” in relation to its goods, i.e., sale of rice, which amounts to infringement of the trade mark/label of the appellant. As per the plaint, the appellant learnt about the respondent’s mark in the first

FAO(OS) No.188/2015

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week of January, 2014 when the appellant came across the impugned goods of the respondents in the Delhi market. In the plaint, it is averred that the appellant learnt about respondent No.2’s adoption of the mark “Church Gate” through the advertisement dated 28.07.2005 and the plaintiff filed the notice of opposition dated 12.08.2005 and the said opposition is pending. It is contended that the plaintiff, on filing the opposition, made enquiries and did not come across any of the vendible goods/articles of the defendant under the trade mark

“Church Gate” and it was only in the first week of January, 2014, for the first time, that the appellant laid its hands on the impugned product under the impugned trade mark/label in the markets at Delhi. It is contended that the cause of action arose in first week of January, 2014 when the appellant, for the first time, came across the goods of respondents in the market. The appellant accordingly filed the present suit.

5. The respondent (the defendant in the subject suit), in the written statement, has raised several defences. It is contended that the two marks are not deceptively similar and the mark/label of the respondents is completely different from that of the appellant and there is no likelihood of any deception or confusion. It is further contended that the respondents are the prior adopters of the mark

“Church Gate”, having adopted the same in 1991, prior to the alleged adoption by the appellant of the mark “India Gate” in 1993. It is

FAO(OS) No.188/2015

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further contended that the appellant in proceedings filed by the proprietor of a mark “Delhi Gate” had contended that the mark “India Gate” was not deceptively similar to the mark “Delhi Gate” and as such, the appellant is estopped from contending that the mark “India Gate” is deceptively similar to the mark “Church Gate”. It is further contended that the suit filed by the plaintiff is barred on the ground of delay and laches inasmuch as the appellant became aware of the mark of the defendant as far back as in year 2005 and even filed a notice of opposition to the application of the respondent seeking registration of its mark “Church Gate”. It is contended that the appellant by waiting for a period of nine years in filing the present suit has disentitled itself from grant of an injunction or an order of restraint against the respondent. It is further contended that the plea of the appellant that it became aware of the products of the respondent in first week of January, 2014 is palpably false and as such, the appellant is disentitled to the grant of any discretionary relief. It is contended that the respondent has a turnover of over several hundred crores and as such also, the discretion should not be exercised in favour of the appellant.

6.The learned Single Judge, by the impugned order dated 23.02.2015, has dismissed the application of the appellant primarily on the ground of delay and laches and concealment.

7.The appellant has impugned the order dated 23.02.2015 contending that mere delay cannot be a ground for refusing an ad

FAO(OS) No.188/2015

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interim injunction, more so, when the adoption of the mark by the respondent was dishonest. It is contended that there is no concealment or misrepresentation on the part of the appellant. It is contended that assuming though not admitting there was some concealment, every concealment would not disentitle the appellant from grant of injunction. It was only concealment which had a material bearing on the facts of the case that would disentitle the appellant. It is submitted that the alleged concealment is not material as delay cannot be a ground to deny injunction.

8. Reliance is placed by the appellant on the decision in the cases ofHindustan Pencil Versus India Stationery AIR 1990 Delhi 19 to contend that delay cannot be a ground to defeat an action for grant of an injunction where the use of the mark is fraudulent and Midas

Hygiene Industries (P) Ltd Versus Sudhir Bhatia (2004) 3 SCC 90

to contend that in cases of infringement of trademark normally an injunction must follow and grant of an injunction also follows when prima facie it was established that the adoption of a mark was dishonest.

9. Coming to the facts of the present case, it may be noted that the mark of the plaintiff is not yet registered and it is a case of passing off and not of infringement of trademark. Since the present stage is only of the consideration of the application for grant of an ad-interiminjunction, we have to only examine the facts and documents to see

FAO(OS) No.188/2015

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whether a prima-facie is made out.

10. The learned Single Judge has noted that in the trade mark applications filed by the respondent before the Registrar of Trade Marks on 28.06.1999 and 25.10.2004, the respondent has clearly stated that the respondent is seeking registration of the trade mark

“Church Gate” in respect of the rice, which mark he was using since 01.04.1991. Invoices and bills from April, 2004 to the year 2014 showing sales of “Church Gate” have been placed on record. The learned Single Judge has further noted that it is not a case of filing of stray documents but documents showing continuous user since April, 2004 to the year 2014 had been placed on record by the respondent. The learned Single Judge has prima facie negated the contention of the appellant that the documents are forged. The learned Single Judge has further noted that the respondent has filed documents showing placing of orders by Kendriya Bhandars (Government of India Undertakings) from December, 2007, continuously and also delivery to Kendriya Bhandars by the respondent. It has also been noted that the appellant itself was also supplying rice to Kendriya Bhandars during the period the respondent was supplying rice to the Kendriya Bhandars, which would go on to prima facie attribute knowledge to the appellant of the use of the impugned mark by the respondent at least since 2007. The learned Single Judge has prima facie found that the appellant was guilty not only of delay and laches but also of

FAO(OS) No.188/2015

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misleading the Court by misstating the fact about no knowledge of availability the products of the respondent in the market.

11. The learned Single Judge has refused grant of injunction to the appellant and has dismissed the application as the learned Single Judge was of the view that not only has there been inordinate delay on the part of the appellant in approaching the Court but there also appears to be active concealment on the part of the appellant. Learned Single Judge has further noticed that the appellant has not contended that on account of the use of the impugned mark “Church Gate” by the respondent, there has been a dip in the sales or business of the appellant. The learned Single Judge found that the balance of convenience was not in favour of the appellant and it has not been able to make out a strong prima facie case in its favour. It has been held that irreparable loss and injury would be suffered by the respondent in case ad interim injunction were to be granted.

12. We may note that the user claimed by the respondents is since 1991 and in contrast, the user claimed by the appellant is since 1993 for exports outside the country and for sales in the Indian market since the year 2000. The appellant admittedly was aware of the mark of the respondents. The knowledge can safely be attributed to the appellant from the year 2005 when the appellant filed the notice of opposition with the registrar of trademarks opposing the application filed by the respondents. The respondents had contended before the registrar of

FAO(OS) No.188/2015

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trademarks that they were using the mark since 1991. The plea of the appellant that till 2014, it did not find the goods of the defendant in the market, is not borne out from the record. On the other hand what is prima facie borne out from the record is that the respondents have been continuously using the mark since April 2004 till the filing of the documents and the written statement in this court. The respondents have placed on record several bills and invoices from April 2004 till 2014 to prima facie show continuous commercial user of its mark. One important factor is that both parties have been supplying through the same channels of suppliers. One such common supplier being the Kendriya Bhandars which is a government of India undertaking. Since both parties were supplying through Kendriya Bhandars, it can be presumed for a prima facie consideration that the appellants were aware of the existence of products bearing the mark of the respondents in the market. Further, it cannot at a prima facie stage be said that the documents pertaining to Kendriya Bhandars are forged or fabricated.

13. There is, prima facie, an inexplicable delay on the part of the appellant in approaching the court. Since the year 2005 for over 9 years the appellant has kept silent and allowed the respondents to continue with the use of the impugned mark unhindered. As per the respondents, their volume of sales is in thousands of crores. The plea of the appellant in its plaint that the appellant learnt about the

FAO(OS) No.188/2015

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respondents’ impugned trade mark/label in the 1st week of January, 2014 when the appellant came across the impugned goods of the appellants in the New Delhi market is prima facie not correct and as held by the learned single judge amounts to concealment and misrepresentation. Further the plea in the plaint that the appellant in the year 2005 immediately launched inquiries in the markets to ascertain the respondents impugned activities under the impugned trademark. The appellant at that point of time did not come across any of the vendible good/article of the respondents under the impugned trade mark in the market is prima facie not believable in view of the facts noted in the preceding paragraph about the bills and invoices of the respondents and the sales through common channels including Kendriya Bhandars by both the parties.

14.Further, we may note that the learned single judge has declined to exercise discretion in favour of the appellant. Grant of an ad- interim relief is a discretionary relief. In view of the facts as noted hereinabove, we are of the view that the refusal to exercise discretion by the learned does not call for any interference.

15.The reliance placed by the appellant on the decision in the cases of Hindustan Pencil (supra) and Midas Hygiene Industries (P) Ltd (Supra) is misplaced in as much as those were cases of infringement of registered trademark and the present is a case of passing off. Further it is also not prima facie borne out from the records that the

FAO(OS) No.188/2015

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adoption of the mark by the respondents was dishonest.

16.The cases of passing off are on a different footing from the cases of infringement of registered trademarks. In a case of a registered trademark, the proprietor apart from common law rights also possesses statutory rights granted by the statute. On the other hand in the case of passing off of an unregistered trade mark/label the proprietor only possesses common law rights. Where common law rights are concerned, equity has a greater role to play. Therefore, in the case of an unregistered trade mark/label delay and laches on the part of the appellant in bringing an action would assume greater importance. In case the court is of the view that the delay in bringing an action is not substantial or is sufficiently explained, the court may still in the facts and circumstances grant an injunction but where the delay in bring an action is substantial and is not sufficiently explained the court is empowered to refuse to restrain the defendant.

17.In the present case, as noted above, there is delay on the part of the appellant of over 9 years in bringing the action against the respondents. The appellant has failed to sufficiently explain the delay on its part and on the other hand, the learned single judge has prima facie found that the explanation for the delay is not true and there is active concealment on the part of the appellant. The balance of convenience is in favour of the respondents as they have sales running into hundreds of crores.

FAO(OS) No.188/2015

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18.We may also note that though the respondents have taken a plea that the rival marks and labels are not deceptively similar, the learned single judge has not examined this aspect as the learned single judge was of the view that the appellant is not entitled to grant of injunction on account of delay and active concealment. Since we are also of the view that the appellants are not entitled to anad-interim injunction on these grounds, we are also not returning any finding on this aspect and are leaving the said issue open to be determined in the trial.

19.In view of the above, we are not inclined to interfere with the order of the learned single judge, declining to grant any injunction. However, to balance equities, we direct that the respondents shall keep account of all sales made by them under the impugned mark/label and furnish a half yearly statement before the learned single judge duly certified by their chartered accountant.

20.The appeal is dismissed and the pending applications are accordingly disposed of, leaving the parties to bear their own costs.

SANJEEV SACHDEVA, J.

BADAR DURREZ AHMED, J.

December 01, 2015

‘sn’

Guiness World Records Limited vs Sababbi Mangal

Guiness World Records Limited vs Sababbi Mangal

Author: Valmiki J. Mehta

*            IN THE HIGH COURT OF DELHI AT NEW DELHI

+                  CS(OS) No.1180/2011 & connected matters
%                                            15th February, 2016

1.    CS(OS) No.1180/2011

GUINESS WORLD RECORDS LIMITED                     ..... Plaintiff
                 Through: Ms. Kripa Pandit, Advocate with Mr.
                          Chander M. Lall, Advocate.

                          versus

SABABBI MANGAL                                        ..... Defendant
                          Through:   Mr. Pankaj Agarwal, Advocate.



2.    CS(OS) No.1438/2009

THE ECONOMIST NEWSPAPER LIMITED                ..... Plaintiff
                 Through: Mr. Manav Kumar, Advocate.

                          versus

MR. SHIV HARIT                                         ..... Defendant
                          Through:

3.    CS(OS) No.2599/2010

PEPSICO, INC AND ORS.                                  ..... Plaintiffs
                   Through:          Mr. Dheeraj Nair, Advocate with Mr.
                                     Kunal Mimani, Advocate.

                          versus

DUGAR SPICES AND EATABLES (P) LTD. AND ORS. ..... Defendants
                  Through:


CS(OS) No.550/2008 & conn. matters                                       Page 1 of 15
 4.    CS(OS) No.2903/2012

DHANANJAY K THECKEDATH AND ANR.            ..... Plaintiffs
                Through: Ms. Sarita Rout, Advocate.

                          versus

SANJAY SHARMA AND ANR.                               ..... Defendants
                Through:             Mr. Umesh Mishra, Advocate.

5.     TR. P. (C) No.1/2016

M/S NAV JAGRITI NIKETAN EDUCATION SOCIETY ..... Petitioner
                   Through: Mr. S. K. Bansal, Advocate with Mr.
                            Ajay Amitabh Suman, Advocate.

                          versus

DELHI INTERNATIONAL SCHOOL AND OTHERS .....Respondents

Through: Mr. Shailen Bhatia, Advocate with Mr. Arun Kumar Jha, Advocate.

Mr. Aman Sinha, Advocate with Mr. Sanjai Pathak, Advocate and Mr. Pravesh Thakur, Advocate for respondent No.2.

6. CS(OS) No.865/2012 GODFREY PHILLIPS INDIA LTD ..... Plaintiff Through: Ms. Namrita Kochhar, Advocate.

versus DHARAMPAL SATYAPAL LTD AND ANR. ..... Defendants Through: Mr. Bishwajit Dubey, Advocate with Ms. Surabhi Khattar, Advocate.

7.    CS(OS) No.2342/2010

 MUZAMMIL REHMAN                                                  ..... Plaintiff
                          Through:       Mr. S. K. Bansal, Advocate with Mr.
                                         Ajay Amitabh Suman, Advocate.


                          versus

M/S J WALTER THOMPSON COMPANY LIMITED (J.W.T) AND OTHERS ..... Defendants Through: Mr. Prashant Mehra, Advocate for defendant No.1.

Mr. Ankur Gupta, Advocate for defendant No.2.

Mr. Pravin Anand, Advocate with Ms. Vaishali Mittal, Advocate and Ms. Prachi Agarwal, Advocate for defendant No.3.

8.  CS(OS) No.550/2008

MARICO LTD.                                               ..... Plaintiff
                          Through:       Mr. Zeeshan Khan, Advocate.

                          versus

DIVINE PHARMACEUTICALS                                      ..... Defendant
                 Through:

CORAM:
HON'BLE MR. JUSTICE VALMIKI J.MEHTA

To be referred to the Reporter or not?         Yes


VALMIKI J. MEHTA, J (ORAL)

CS(OS) Nos. 1180/2011, 1438/2009, 2599/2010, 2903/2012, 865/2012, 2342/2010 & 550/2008

1. Irrespective of the reason why each individual suit or transfer petition or pending amendment application seeking enhancement of pecuniary jurisdiction is listed before this Court, the issue to be decided by this Court is the interpretation of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (in short the Act of 2015) when it uses the expression "filed or pending" in the first proviso of Section 7 thereof. The issue is that whether the expression "filed or pending" means that this Court will entertain all pending matters even though this Court does not have pecuniary jurisdiction to entertain the suit.

2. The Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Ordinance, 2015 (Ordinance, 2015) came into effect from 23.10.2015. Section 7 and the first proviso to Section 7 of the Ordinance, 2015 read as under:

"All suits and applications relating to commercial disputes of a Specified Value filed in a High Court having ordinary original civil jurisdiction shall be heard and disposed of by the Commercial Division of that High Court:

PROVIDED that all suits and applications relating to commercial disputes, stipulated by an Act to lie in a court not inferior to a District Court, and filed on the original side of the High Court, shall be heard and disposed of by the Commercial Division of the High Court:" (underlining added)

3. The first proviso of Section 7 of the Ordinance, 2015 stated that the suits and applications relating to commercial disputes stipulated by a statute lie in a court not inferior to a District Court and filed on the original side of the High Court shall be heard and disposed by the Commercial Division of the High Court. The words "and filed" used in the first proviso to Section 7 of the Ordinance, 2015 did refer to the cases which were filed in the High Court to be heard and disposed of by the High Court and which words in one manner can lead to the interpretation that as long as it was originally filed in the High Court, irrespective of the pecuniary jurisdiction of this pending suit not being of the specified value, High Court in its Commercial Division would, still continue to hear and dispose of the suit. However, equally another interpretation of the words 'and filed' could also be that if the suit was filed in the High Court, the High Court could only continue to hear and dispose of the suit if the High Court continued to have pecuniary jurisdiction i.e the suit had to be of a specified value as stated in the Ordinance, 2015. Therefore, possibly something was left unsaid by the legislature when it used the words "and filed" if these words were intended to continue to vest a Commercial Division of the High Court to try and dispose of the suit originally filed in the High Court although subsequently the High Court would not have pecuniary jurisdiction to try the matter including for the reason that the pecuniary jurisdiction of the suit was below the threshold limit of rupees one crore as required by the Ordinance, 2015.

4. On account of possibility of different interpretation of the words "and filed" found in the first proviso to Section 7 of the Ordinance, 2015, the appropriate authorities and the legislature moved in. This happened by two things. Firstly, the Government of India Cabinet, Press Information Bureau, issued a Press Note on 16.12.2015, i.e after passing of the Ordinance, 2015 and before passing of the Act of 2015 which succeeded the Ordinance, and in this Press Note which was issued it was made clear that the amendment was required to the first proviso to Section 7 of the Ordinance, 2015 so that there is no doubt remaining therein that the said first proviso to Section 7 will also apply to "pending cases" i.e the words used in the first proviso of Section 7 in the Ordinance 2015 being "and filed" were to be construed to be applicable even for the pending cases.

5. No doubt only a Press Note issued by the Press Information Bureau, Government of India, Ministry of Law and Justice stating that the amendment would be made to the first proviso toSection 7 of the Ordinance, 2015, may not have been of conclusive help, however, the issue has become further simple with respect to the interpretation of the expression "filed or pending" as found in the Act of 2015 because of the 78th Report submitted to the Rajya Sabha by the Department-Related Parliamentary Standing Committee on Personnel, Public Grievances, Law and Justice. This report contained the reasons for bringing in various provisions of the Act of 2015, and more importantly and particularly the reason for changing the words "and filed" found in the first proviso to Section 7 of the Ordinance 2015 to the expression " and filed or pending" as found in the Act of 2015. The relevant para of this 78th Report containing the observations and recommendations of the Standing Committee is para 34 which reads as under:

"34. The Committee feels that the transfer of all pending commercial disputes to the proposed Commercial Court/Division may overburden the said courts and defeat the very purpose of establishing them. There may not be requirement of Commercial Courts in some States as they have limited number of such cases. The Committee recommends that instead of transferring the pending cases to Commercial Courts, a sunset clause may be inserted in the Bill whereby only fresh cases with a pecuniary limit may be transferred to Commercial Courts. However, the litigants may be given a choice to move Commercial Courts if the pending dispute is of commercial nature as per the Schedule of the Bill" (underlining added)

6. The underlined portion of para 34 of the report of the Standing Committee leaves no manner of doubt that there was to be a sunset clause whereby only fresh cases having the pecuniary limit were filed before the Commercial Divisions and so far as the pending cases were concerned, thesame were not to be transferred and to be taken up by the Commercial Courts-Commercial Courts meaning the Commercial Division of the High Court so far as the High Courts having original jurisdiction.

7. Let me now therefore reproduce Section 7 which has been introduced by the Act of 2015 in its entirety and this provision reads as under:-

"7. Jurisdiction of Commercial Divisions of High Court-All suits and applications relating to commercial disputes of a Specified Value filed in a High Court having ordinary original civil jurisdiction shall be heard and disposed of by the Commercial Division of that High Court:

Provided that all suits and application relating to commercial disputes, stipulated by an Act to lie in a court not inferior to a District Court, and filed or pending on the original side of the High Court, shall be heard and disposed of by the Commercial Division of the High Court:

Provided further that all suits and applications transferred to the High Court by virtue of sub-section (4) of section 22 of the Designs Act, 2000 or section 104 of the Patents Act, 1970 shall be heard and disposed of by the Commercial Division of the High Court in all the areas over which the High Court exercises ordinary original civil jurisdiction." (underlining added)

8. It is clear that the expression 'and filed' has been elaborated by the Legislature to mean those cases which are filed or pending i.e even if a case is pending as on the date of bringing in the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015, such pending cases will be continued to be tried by the Commercial Division of the High Court irrespective of these matters not being above the specified value and being below the specified value upto Rs.1 crore. There cannot be any other interpretation of the expression being of the words and 'filed or pending' as found in the first proviso to Section 7 of the Act of 2015. If these words are to be interpreted to mean that cases which are filed and pending will have to be transferred since their pecuniary value is less than rupees one crore, then the same will defeat the intention of the legislature in changing the language of the first proviso to Section 7 whereby the words 'and filed' has been amended to 'and filed or pending'.

9. Of course, I must concede that the language contained in the first proviso to Section 7 could have been still better worded to have additional words 'irrespective of the pecuniary jurisdiction', however, in my opinion, the very intention of the legislature can be ganged enough by the adding of the words "or pending" in the first proviso to Section 7 of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015.

10. At this stage, I am reminded of a very unforgettable rule used in a judgment dealing with the interpretation of statutes and which is that "the golden rule is that there is no golden rule". This is stated inasmuch as, though there are various doctrines of interpretation whether of literal interpretation or purposive interpretation or Heydon's Rule and so on, however, ultimately the issue of interpretation boils down to the specific statute and the reason why original words as found have been amended and finally that the context and setting where the words are used has to be read so as to give purpose to bringing in of the necessary words and expressions in the statute.

11. I may also note that the entire object of Section 7, whether as found in the Ordinance, 2015 or found in the Act of 2015, was that the subject matter of Section 7 was those suits which could not be filed in courts below the court of the District Judge. Suits which are the subject matter ofSection 7 are all those suits which could not be filed in a court below the District Judge but could be filed only either before the court of the District Judge or before the High Court. These matters are those which are generally called as IPR matters, and which includes trademarks cases, copyright cases etc which are the subject matter of statutes which contain such provisions that suits under these Acts should not be filed and cannot be entertained by courts below the courts of the District Judge. The relevant provisions in this regard are Section 134 of the Trade Marks Act, 1999 and Section 62 of the Copyright Act, 1957 etc. These Sections are depicted in the chart below:-

Statute Patents Act, Trade Marks Designs Copyright Act, Geographical 1970 Act, 1999 Act, 2000 1957 Indications of Goods (Registration and Protection) Act, 1999 Relevant Section 104 Section 134: Proviso to Section 62 Section 66-Suit Provisions Jurisdiction- Suit for Section Jurisdiction of for No suit for a Infringement, 22(2) court over infringement, declaration etc. to Be matters etc., to be under section Instituted No suit or arising under institute 105 or for Before District any other this Chapter- before district any relief Court- proceeding court under section (1) No suit- for relief (1) Every suit 106 or for under this or other civil (1) No suit,- infringement (a) for the subsection proceeding of a patent infringement of shall be arising under (a) for the shall be a registered instituted in this Chapter in infringement of instituted in trademark; or any court respect of the a registered any court below the infringement of geographical inferior to a (b) relating to court of copyright in indication; or district court any right in a District any work or the having registered Judge. infringement of (b) relating to jurisdiction trademark; or any other right any right in a to try the suit conferred by registered Provided that (c) for passing this Act shall geographical where a off arising out be instituted in indication; or counter- of the use by the district claim for the defendant court having (c) for passing revocation of of any trade jurisdiction. of arising out of the patent is mark which is the use by the made by the identical with (2) For the defendant of defendant, or deceptively purpose of sub- any the suit, similar to the section (1), and geographical along with plaintiff's trade "district court indication the counter- mark, whether having which is claim, shall registered or jurisdiction" identical with be unregistered, shall, or deceptively transferred to shall be notwithstanding similar to the the High instituted in any anything geographical Court for court inferior to contained in the indication decision a District Court Code of Civil relating to the having Procedure, plaintiff, jurisdiction to 1908 or any whether try the suit. other law for registered or the time being unregistered, For the purpose in force, shall be of clauses (a) include a instituted in any and (b) of sub- district court court inferior to section (1), a within the local a district court "District Court limits of whose having having jurisdiction, at jurisdiction to jurisdiction" the time of the try the suit.

                        shall,               institution     of
                        notwithstanding      the suit or other    (2) For the
                        anything             proceeding, the      purpose         of
                        contained in the     person               clauses (a) and
                        Code of Civil        instituting the      (b) of sub-
                        Procedure,           suit or other        section (1), a
                        1908 or any          proceeding or,       "district Court
                        other law for        where there are      having
                        the time being       more than one        jurisdiction"
                        in          force,   such persons,        shall,
                        include          a   any of them          notwithstanding
                        District Court       actually      and    anything
                        within the local     voluntarily          contained in the
                        limits of whose      resides         or   Code of Civil
                        jurisdiction, at     carries        on    Procedure,
                        the time of the      business        or   1908 (5 of
                        institution     of   personally           1908) or any
                        the suit or other    works for gain.      other law for
                        proceeding, the                           the time being
                        person                                    in          force,
                        instituting the                           include          a
                        suit            or                        District Court
                        proceeding, or,                           within the local
                        where there are                           limits of whose
                        more than one                             jurisdiction, at
                        such      persons                         the time of the
                        any of them,                              institution     of
                        actually      and                         the suit or other
                        voluntarily                               proceeding, the
                        resides         or                        person
                        carries        on                         instituting the
                        business        or                        suit proceeding,
                        personally                                or, where there
                        works for gain.                           are more than
                                                                  one          such
                                                                  persons any of
                                                                  them, actually
                                                                  and voluntarily
                                                                  resides         or


                                                                   carries       on
                                                                  business      or
                                                                  personally
                                                                  works for gain.
                                                                  Explanation-
                                                                  for the purposes
                                                                  of sub-section
                                                                  (2), "person"
                                                                  includes     the
                                                                  registered
                                                                  proprietor and
                                                                  the authorised
                                                                  user.

12. Keeping in mind the original intendment of Section 7, and the words as now found in the first proviso to Section 7 of the Act of 2015, one is left in no manner of doubt that with respect to IPR matters, whose statutes and the provisions are reproduced in the above chart, such matters once they are pending in the High Court as on the date of introducing of the Act of 2015 published in the Gazette Notification dated 1.1.2016, such matters will be heard and disposed of by the Commercial Divisions of the High Court even if the pecuniary jurisdiction of these matters are below Rs.1 crore.

13. Accordingly, this Court's conclusion with respect to the language contained in the first proviso to Section 7 of the Act of 2015 is that with respect to IPR matters covered under the different provisions of the Trade Marks Act, Copy Right Act, Designs Act, Patents Act and Geographical Indication of Goods (Registration And Protection) Act, 1999 is that the pending suits and which are the subject matter of the words "filed or pending" contained in the first proviso to Section 7 of the Act of 2015, such suits or IPR matters, even if their valuation is below Rs.1 crore, the same will be dealt with and decided by the Commercial Division(s) of the High Court if their pecuniary jurisdiction valuation is above Rs. 20 lacs (for Delhi High Court) but below Rs.1 crore.

14. The issue with respect to first proviso to Section 7 of the Act of 2015 is answered accordingly.

15. This Court expresses its gratitude to Ms. Kripa Pandit, Advocate who has very ably argued on the issue which is decided in the present judgment by supporting the arguments with the requisite material.

16. Each of the suits which are therefore the subject matter of the present judgment will be listed for further proceedings before the Joint Registrar on 5th May, 2016.

TR. P.(C) No.1/2016

17. This transfer petition stands allowed in terms of the prayer made therein and the suit which has been transferred to the concerned jurisdictional District Court will be re-transferred to this Court. All pending applications also stand disposed of accordingly. I.A. No.17748/2015 (u/O VI Rule 17 CPC) in CS(OS) No.1180/2011 I.A. No.24164/2015 (u/O VI Rule 17 CPC) in CS(OS) No.2599/2010

18. Disposed of as not pressed.

FEBRUARY 15, 2016                                  VALMIKI J. MEHTA, J
dkg/ib