PATIALA DISTILLERS VS U.O.I

Patiala Distillers & ... vs Union Of India & Another on 10 November, 2009

Delhi High Court Patiala Distillers & ... vs Union Of India & Another on 10 November, 2009 Author: Sanjiv Khanna

37.

* IN THE HIGH COURT OF DELHI AT NEW DELHI

+ W.P.(C) 6569/2008
Date of decision: 10th November, 2009
PATIALA DISTILLERS & MFRS. LTD. ..... Petitioner Through Mr. Ajay Amitabh Suman & Mr. Ranjit
Kumar Rana, Advocates.
versus

U.O.I & ANR. ..... Respondents Through Nemo.
CORAM:
HON'BLE MR. JUSTICE SANJIV KHANNA

1                     Whether Reporters of local papers may be
allowed to see the judgment?

2                     To be referred to the Reporter or not ?

3                     Whether the judgment should be reported
in the Digest ?
ORDER

1                     Respondent No. 2 has not entered appearance despite of service. It is pointed out that the respondent No. 2 had also not appeared before the Intellectual Property Appellate Board. Accordingly, I have heard the counsel for the petitioner.

2                     The petitioner herein on 25th August, 1986 had applied for registration of label 'Commando XXX Rum' in class 33. An advertisement was published in the Trade Mark Journal on 1st November, 1993 and thereafter the respondent No. 2 filed their opposition.

3                     Learned Registrar vide his order dated 24th November, 1997 rejected the petitioner's application for registration and allowed respondent No. 2's opposition.

4                     Aggrieved, the petitioner filed an appeal being Civil Miscellaneous (Main) No. 392/1999 before this Court, which was transferred to the Intellectual Property

W.P. (C) No. 6569/2008 Page 1 Appellate Board under Section 100 of the Trade Marks Act, 1999.

1                    By the impugned order dated 16th June, 2008, the appeal filed by the petitioner has been dismissed on the ground that the petitioner did not file any evidence in support of the application under Rule 54 of the Trade and Merchandise Marks Rules, 1959.

 2                     Learned counsel for the petitioner submits that there was an error and mistake on the part of the counsel appearing for the petitioner but one opportunity to file documents/affidavit should have been granted to the petitioner.

3                     The petitioner had earlier filed Civil Miscellaneous (Main) No. 392/1999 before the High Court against the order dated 24th November, 1997 passed by the Assistant Registrar of Trade Marks, Delhi and then petition was transferred as an appeal before the Intellectual Property Appellate Board. The respondent No. 2 had not filed any response to the appeal before the Appellate Board or even before the High Court. The word 'Commando' has been registered in the name of the petitioner in respect of wines, spirits and liquor. The petitioner had applied for registration of the label in question in August, 1989 and the matter had remained pending in the High Court and then before the Board. Lapses can take place when legal proceedings get prolonged. Some latitude in such cases can be given.

4                     Keeping in view the aforesaid facts, the impugned order dated 16th June, 2008 passed by the Intellectual Property Appellate Board is set aside and the matter is remanded back to the said Board. One opportunity is granted to the petitioner to file evidence by way of affidavit within a period of four weeks from today. Fresh notice will be issued to the respondent No. 2 herein before the appeal is decided by the Appellate Board.

5                     The petitioner will appear before the Registrar of the Appellate Board on 7th December, 2009, when next date of hearing will be fixed. The writ petition is disposed of.

SANJIV KHANNA, J.

NOVEMBER 10, 2009

VKR

W.P. (C) No. 6569/2008 Page 2

Ishi Khosla Vs Anil Aggarwal

* IN THE HIGH COURT OF DELHI AT NEW DELHI + CS(OS) No. 309/2005 % Date of
Decision: 20.03.2009 Mrs. Ishi Khosla . Plaintiff Through: Mr. Nitin Sharma and
Mr. Ankush Mahajan, Advocates.

 Versus

Anil Aggarwal & Anr. . Defendants Through: Mr. Ajay Amitabh Suman and Mr. Shashi

P. Ojha, Advocates.

CORAM:

HON’BLE MR. JUSTICE ANIL KUMAR

1         Whether reporters of Local papers may be YES allowed to see the judgment?

2         To be referred to the reporter or not? NO

3         Whether the judgment should be reported in NO the Digest?

ANIL KUMAR, J.

*

+ IA No.3811/2009 in CS(OS) No.309/2005

 This is an application by the parties for decreeing the suit in terms ofthe settlement arrived at between the parties. The terms of the settlement areincorporated in the application under Order XXIII Rule 3 read with Section 151of the Code of Civil Procedure, 1908 (hereinafter referred to as ’CPC’) being

I.A. No. 3811/2009. Under the settlement, the defendants have agreed that adecree for injunction be passed restraining them from using the trade mark ofthe plaintiff and the plaintiff has agreed to give up his claim of damagesagainst the defendants.

 CS(OS) No. 309/2005 Page 1 of 3 The defendants have also agreed to withdrawtheir application seeking registration of the trade mark ’Whole Foods’ and havealso agreed to withdraw the opposition filed by the defendants to theapplication of the plaintiff for registration of the trade mark ’Whole Foods’.

 The application is signed by the plaintiff and defendants and their
respective counsels and is also supported by the affidavits of Mrs. Ishi
Khosla, plaintiff and Mr. Anil Aggarwal, defendant No. 1 and the sole
proprietor of defendant No. 2. There does not seem to be any impediment in
allowing the application.

 Consequently, the application is allowed and the suit of the plaintiffis decreed in terms of the settlement arrived at between the parties, the termsof which are incorporated in I.A. No. 3811/2009 under Order XXIII Rule 3 readwith Section 151 CPC. The application stands disposed of.

CS(OS) No. 309/2005

 The parties have settled their disputes and their applicationincorporating the terms of the settlement being I.A. No. 3811/2009 under OrderXXIII Rule 3 read with Section 151CPC has since been allowed.

 Consequently, the suit of the plaintiff is decreed in terms of thesettlement arrived at between the parties in I.A. No. 3811/2009 under OrderXXIII Rule 3 read with Section 151 CPC. Decree sheet be drawn where I.A. No.3811/2009 shall form part of the decree. All the CS(OS) No. 309/2005 Page 2 of3 pending applications are also disposed of and parties are left to bear theirown costs.

 MARCH 20, 2009 ANIL KUMAR, J. sb
 CS(OS) No. 309/2005 Page 3 of 3

Giani Gurcharan Singh Vs Madhusudhan Singh

Delhi High Court Delhi High Court M/S Giani Gurcharan Singh & Sons vs Madhusudhan Singh And Another on

14 February, 2011 THE HIGH COURT OF DELHI AT NEW DELHI

% Judgment Reserved on: 9.2.2011 Judgment Pronounced on: 14.2.2011

+ CS(OS) No. 1233/2009

M/s Giani Gurcharan Singh & Sons .....Plaintiff - versus -

Madhusudhan Singh and Another .....Defendants Advocates who appeared in this case:

For the Plaintiff: Mr. Ajay Amitabh Suman, Adv. For the Defendant: None.

CORAM:

HON'BLE MR JUSTICE V.K. JAIN

1. Whether Reporters of local papers may




be allowed to see the judgment? Yes

To be referred to the Reporter or not? Yes




Whether the judgment should be reported Yes in Digest?

V.K. JAIN, J

This is a suit for injunction, delivery up of infringing material and rendition of accounts or in the alternative for damages.

The plaintiff is a partnership firm engaged in the business of manufacturing and marketing of edible items including milk and dairy products, ice creams, faluda, milk CS(OS)No. 1233/2009 Page 1 of 19 shakes etc. The plaintiff claims to have adopted through its predecessors the trademark/trade name/label GIANI'S in the year 1960 and using the same since then. The plaintiff also claims to be the proprietor of the artistic features involved in the trademark/trade name/label GIANI'S. the trademark has been registered in the name of the plaintiff in respect of flour and preparations made from cereals including faluda as well as in respect of milk and other dairy products. The plaintiff claims sale of Rs.34,90,040/-, 36,03,980/- and 49,649,30/- during the years 2006-07, 2007-08 and 2008-09 respectively. It is also claimed that on account of continuous and extensive user since 1960, the goods/services and business being carried under the trademark GIANI'S have come to be identified and associated exclusively with the plaintiff. The plaintiff claims to have incurred substantial expenditure on promoting and advertising its products as well as the trademark and trade name adopted by it.




3. It is alleged that the defendants have adopted and started using the trade name GIAN'S in respect of edible items including milk and dairy products, ice creams, faluda, milk shakes etc. Mr. Madhusudhan Singh, defendant Nof.1 CS(OS)No. 1233/2009 Page 2 of 19 is alleged to be the proprietor of defendant No.2 M/s GIAN'S. It is also alleged that the trademark adopted by the defendant is deceptively similar to the trademark of the plaintiff on account of phonetically, visually and structurally similarity and by using the trademark GIAN'S, the defendants have infringed the registered trademark of the plaintiff and they are also passing of their goods and business as that of the plaintiff. It is further alleged that members of the public including house wives and person in village and semi rural areas are being deceived in dealing with and purchasing the defendants goods/services and business under the impression that they emanate from the plaintiff or there exists some link between the plaintiff and defendants and thereby the defendants are creating confusion and deception in the market. The plaintiff has sought permanent injunction restraining the defendants from using the trademark GIAN'S and from manufacturing, selling, offering for sale or advertising any product bearing the aforesaid trademark or some other mark deceptively similar to the trademark of the plaintiff as also from passing of their goods as those of the plaintiff. The plaintiff has also sought delivery up of all the packaging material, cartons CS(OS)No. 1233/2009 Page 3 of 19 and goods etc. for the purpose of destruction and erasure of the mark GIAN'S. The plaintiff has further sought rendition of accounts and in the alternative, damages amounting to Rs.20,01,000/- from the defendants.




The defendants were proceeded ex parte vide order dated 6th October, 2009.




The plaintiff has filed an affidavit of its partner Shri Param Jeet Singh by way of ex parte evidence. In his affidavit, Mr. Param Jeet Singh has staetd that the plaintiff through its predecessors adopted the trademark/trade name/label GIANI'S in the year 1960 and has been continuously using the same since then. According to him, the word GIANI'S is an essential key material of the trade name of the plaintiff firm. He has further stated that the business being carried out by the plaintiff is quite extensive and its products are being distributed in major parts of the country. He has claimed that the goods/services and business under the aforesaid trademark/trade name/label is identified as the goods/services/business originating from the plaintiff and have become associated with it on account of long and continuous user since 1960. According to him, the goods/services of the plaintiff are highly in demand on CS(OS)No. 1233/2009 Page 4 of 19 account of their standard and quality and the aforesaid trademark/trade name/label has acquired tremendous goodwill and enviable reputation in the market. According to him, the plaintiff had sale of Rs.34,90,040/-, 36,03,980/- and 49,649,30/- during the years 2006-07, 2007-08 and 2008-09 respectively and it has been spending enormous amount on publicity by way of advertising, trade hoardings etc.




Mr. Param Jeet Singh has further stated that the defendants are engaged in the same business in which the plaintiff is engaged and they have adopted and started using the trademark/trade name/label GIAN'S in respect of edible items including milk and dairy products, ice creams, faluda, milk shakes etc. He has further stated that the plaintiff had come across the goods of the defendant being sold under the impugned trademark/trade name/label GIAN'S in the beginning of May, 2009 and sent a legal notice to him, which was not replied to.


　


7. The case of the plaintiff against the defendants is based upon infringement of their registered trade mark as well as on passing off. Section 28 of Trade Marks Act, 1999 gives to the registered proprietor of the trade mark the CS(OS)No. 1233/2009 Page 5 of 19 exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. The action for infringement is, thus, a remedy provided by Trade Marks Act to the registered proprietor of a registered trade mark in case there is an invasion of the statutory right provided to him for use of that trade mark in relation to the goods for which the trade mark has been registered in his name. In a case based on infringement of this statutory right it is necessary for the plaintiff to prove that his registered trade mark has been used by the defendant, though no such use is required to be established in an action for passing off. It is also a settled proposition of law, which was reiterated by Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, PTC (Suppl) (2) 680 (SC), that if the defendant resorts to colourable use of a registered trade mark such an act of the defendant would give rise to an action for passing of as well as for infringement. In an action based upon infringement of a registered trade mark if the mark used by the defendant is visually, phonetically or CS(OS)No. 1233/2009 Page 6 of 19 otherwise so close to the registered trade mark of the plaintiff that it is found to be an imitation of the registered trade mark, the statutory right of the owner of the registered trade mark is taken as infringed. In such a case if it is found that the defendant has adopted the essential features of the registered trade mark of the plaintiff, he would be liable even if he is able to establish that on account of packaging, get up and other writings on his goods or on the container in which the goods are sold by him, it is possible to clearly distinguish his goods from the goods of the plaintiff. On the other hand in a case of passing off if it is shown that on account of these factors it is very much possible for the purchaser to identify the origin of the goods and thereby distinguish the goods of the defendant from the goods of the plaintiff, the defendant may not be held liable.




Section 29(1) of Trade Marks Act, 1999 provides that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use CS(OS)No. 1233/2009 Page 7 of 19 of the mark likely to be taken as being used as a trade mark.




A person is well within his right to sell his goods or render services using any trade name for the purpose. With the passage of time the goods sold or the services rendered by him, as the case may be, may acquire certain reputation or goodwill in the market which becomes the property of that person and needs to be protected by the court. It is not permissible for any other person to start selling goods or rendering services either using the same name or imitating that name so as to cause injury to that person and enrich himself at the cost of the person who had already been using that name and had acquired a certain reputation with the passage of time and on account of the quality of the goods sold or services rendered by him. Any attempt on the part of a person to enrich upon the goodwill generated by any other person needs to be curbed by the court whenever approached by the aggrieved party in this regard.


　


In Corn Products Refining Co. vs. Shangrila Food Products Ltd.
1. 1960 (1) SCR 968, the Supreme Court observed that the question whether two competing marks are so similar as to be likely to deceive or cause confusion is CS(OS)No. 1233/2009 Page 8 of 19 one of first impression and it is for the court to decide it. The question has to be approached from the point of view of a man of average intelligence and imperfect recollection.






In Parle Products (P) Ltd. v. J.P. & Co., Mysore, AIR
2. 1972 SC 1359, Supreme Court inter alia observed as under:

According to Karly's Law of Trade Marks and Trade Names (9th Edition Paragraph 838) "Two marks, when

placed side by side, may exhibit many and various differences, yet the main idea left on the mind by

both may be the same. A person acquainted with the one mark, and not having the two side by side for

comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. It would be too much to expect that persons dealing with trademarked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are CS(OS)No. 1233/2009 Page 9 of 19 already acquainted with for reasons of their own. It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.

It is not necessary that in order to constitute infringement, mark should be an absolute replica of the trademark of the plaintiff. When the mark of the defendant is not identical to the mark of the plaintiff, it would be necessary for the plaintiff to establish that the mark being used by the defendant resembles his mark to such an extent that it is likely to deceive or cause confusion and that the user of the impugned trademark is in relation to the goods in respect of which the plaintiff has obtained registration in his favour. It will be sufficient if the plaintiff is able to show that the trademark adopted by the CS(OS)No. 1233/2009 Page 10 of 19 defendant resembles its trademark in a substantial degree on account of extensive use of the main features found in his trademark. In fact, any intelligent person, seeking to encash upon the goodwill and reputation of a well- established trademark, would make some minor changes here and there so as to claim that the trademark being used by him, does not constitute infringement of the trademark, ownership of which vests in some other person. But, such rather minor variations or distinguishing features would not deprive the plaintiff of injunction in case resemblance in the two trademarks is found to be substantial, to the extent that the impugned trademark is found to be similar to the registered trademark of the plaintiff.

A perusal of mark 'A' (Colly.) which are the copies of Registration No. 622601 and 622602 dated 21st March, 1994 would show that the mark GIANI'S is registered in the name of the plaintiff Giani Gurcharan Singh & Sons under Class 30 in respect of milk and other dairy products as well as in respect of flour and preparation made from cereal. Ice creams, in my view, would be covered under dairy products. CS(OS)No. 1233/2009 Page 11 of 19 Hence, the plaintiff is the registered proprietor of the trademark GIANI'S in respect of ice-creams.


　


The defendants are engaged in the business of selling ice-creams under the name GIANI'S, as would be seen from a perusal of Ex.PD-1. Thus, both the parties are engaged in the same business, i.e., of selling ice-creams, etc. one using the trademark GIANI'S and the other using the trademark GIAN'S. A comparison of the trademark of the defendant GIAN'S with plaintiff's registered trademark GIANI'S would show that visually and structurally the trademark being used by the defendant is same to the trademark being used by the plaintiff. The design of the letters being used by the defendant is identical to the design of the letters being used by the plaintiff and the first impression which one forms on seeing the defendant's trademark GIAN'S is that it so resembles the registered trademark GIANI'S of the plaintiff, that there is a likelihood of deception being practiced on the customer. Even phonetically, there isn't much difference between the trademark GIANI'S and GIAN'S.

As held by the Supreme Court in Amritdhara Pharmacy v. Satyadeo Gupta, AIR 1963 SC 449, Whether a trade name is likely to deceive or cause confusion by its resemblance to another mark already registered is a matter of first impression and the standard of comparison to be adopted in judging the resemblance is from the point of view of a man of average intelligence and imperfect recollection. A person having purchased ice-cream, etc. being sold by the plaintiffs under the trademark GIANI'S, on coming across the ice-creams, being sold by the defendants using the trademark GIAN'S is likely to easily believe that the ice-cream being sold using the trademark GIAN'S was the same which is being sold using the trademark GIANI'S. What is important to keep in mind that the purchaser does not have both the marks lying side by side for comparison and, therefore, chances of deception are rather strong. A person purchasing ice-creams being sold under the trademark GIANI'S is not expected to remember all the letters used in the trademark and when he comes across the ice-creams being sold under the trademark GIAN'S, he, on account of imperfect recollection and his not having the ice- cream, bearing the trademark, i.e., with him at that time CS(OS)No. 1233/2009 Page 13 of 19 may easily purchase the ice-cream being sold by the defendant in a mistaken belief that he was buying the product of the plaintiff firm. The letters GIAN'S are the essential features and primary components of the plaintiff's registered trademark GIANI'S and use of these very letters by the defendant for selling the same product is likely to give an impression that both the products were emanating from the same source or that the products being sold under the trademark GIAN'S had some trade link or association with the products being sold under the trademark GIANI'S.




In Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd.
1. (2001) 5 SCC 573, the Supreme Court, inter alia, observed that its decisions in the last four decades had clearly laid down that what had to be seen in the case of a passing off action was the similarity between the competing marks and to determine whether there was likelihood of deception or causing confusion.






The defendant has not come forward to contest the suit and tell the Court as to why he chose to use the mark GIAN'S in particular. The obvious inference, therefore, is that on account of the mark GIAN'S being similar to the CS(OS)No. 1233/2009 Page 14 of 19 well-known and reputed mark GIANI'S of the plaintiff, the defendant wants to encash on the reputation and goodwill, enjoyed the brand of the plaintiff in the ice-cream market.




The plaintiff has been using its registered trademark GIANI'S for last more than 50 years. The plaintiff has large turnover from sale of ice-creams under its registered trademark GIANI'S. The plaintiff claims substantial expenditure incurred on building and promoting its trademark GIANI'S. A certain reputation, therefore, has come to be associated with the trademark GIANI'S of the plaintiff and the ice-creams being sold by it using this trademark. If a person, who has earlier consumed ice- creams, being sold by the plaintiff under its trademark GIANI'S comes across ice-creams being sold under the trademark GIAN'S, it is likely to cause confusion and he may purchase the ice-cream being sold by the defendant on the assumption that he was purchasing the ice-cream being sold by the plaintiff under the trademark GIANI'S. This is more likely in case of unwary customer or a customer living in a semi-urban or rural area, or a person who though living in an urban area is not very well informed, and, therefore, CS(OS)No. 1233/2009 Page 15 of 19 while purchasing a product like an ice-cream, is not likely to attach much importance to the absence of the letter 'I' in the trademark of the defendant. Such a customer, therefore, can be easily persuaded to purchase the ice-cream being sold by the defendant by representing to him that this was the same ice-cream which the plaintiff is selling under the trademark GIANI'S. Hence, there is a genuine likelihood of the defendant being able to pass his products as those of the plaintiff on account of his using the mark GIAN'S.




The case of the plaintiff is that on account of the high quality of its products, the customers consuming the ice-creams sold by it expect them to be a high standard and superior quality. If the ice-cream being sold by the defendant is purchased by the customer on a misconception that he was purchasing the product of the plaintiff and it later transpires that the quality of the product is not as good as the quality of the product being sold by the plaintiff, this may not only damage the brand equity and reputation of the plaintiff, but, may also adversely affect the interest of the consumer, who pays for and wants the ice-cream, being sold by the plaintiff but gets an inferior product. It is, CS(OS)No. 1233/2009 Page 16 of 19 therefore, in the interest not only of the plaintiff but also of the customer that such confusion and deception is not allowed to continue and the consumer gets what he wants to buy and pays for. I, therefore, hold that the plaintiff has been able to prove not only infringement of its copyright and also that the defendant is passing off his products as those of the plaintiff. The plaintiff is, therefore, entitled to injunction against use of the trademark GIAN'S by the defendant in respect of ice-cream and other milk and dairy products as also in respect of flour and cereal products.




Though the plaintiff has also claimed delivery up of infringing material and rendition of accounts, these reliefs were not pressed during arguments. The learned counsel for the plaintiff, however, pressed for award of punitive damages, actual damage has not been proved by the plaintiff.


　


In Times Incorporated v. Lokesh Srivastava & Anr., 2005 (30) PTC 3 (Del), this Court observed that punitive damages are founded on the philosophy of corrective justice and as such, in appropriate cases these must be awarded to give a signal to the wrong doers that the CS(OS)No. 1233/2009 Page 17 of 19 law does not take a breach merely as a matter between rival parties but feels concerned about those also who are not party to the lis but suffer on account of the breach. In Hero Honda Motors Ltd. vs. Raj Scooters in CS (OS) No. 851/2004 Decided On 29.11.2005, this Court noticing that the defendant had chosen to stay away from the proceedings of the Court felt that in such case punitive damages need to be awarded, since otherwise to the defendant, who appears in the Court and submits its account books would be liable for damages whereas a party which chooses to stay away from the Court proceedings would escape the liability on account of the failure of the availability of account books. Also, the Court needs to take note of the fact that a lot of energy and resources are spent in litigating against those who infringe the trademark and copyright of others and try to encash upon the goodwill and reputation of other brands by passing of their goods and/or services as those of that well known brand.




For the reasons given in the preceding paragraphs, the defendant No.1 is restrained from manufacturing, selling or offering for sale, distributing or promoting in any CS(OS)No. 1233/2009 Page 18 of 19 manner, any milk or milk product, including ice-creams as well as any flour or cereal products, using the trademark GIAN'S or any other mark similar to the registered trademark GIANI'S of the plaintiff. Taking into consideration all the fact and circumstances of the case, punitive damages, amounting to Rs 20,000/- are also awarded to the plaintiff. The name of defendant No.2, which is only a trade name adopted by defendant No.1, is deleted from the array of defendants. Decree sheet be prepared accordingly.

(V.K. JAIN)

JUDGE

FEBRUARY 14, 2011

vk/bg

CS(OS)No. 1233/2009 Page 19 of 19

ECOLAB INC VS EACO LABS LTD

Delhi High Court Delhi High Court M/S Ecolab Inc vs M/S Eaco Labs Ltd on 28 November, 2011

* THE HIGH COURT OF DELHI AT NEW DELHI % Judgment delivered on: 28.11.2011

+ C.S. (OS). No.2248/2007 M/S ECOLAB INC .......Plaintiff Through: Mr S.K. Bansal, Adv. with Mr Ajay Amitabh Suman and Mr Harsh Vardhan, Advs.

Versus

M/S EACO LABS LTD .....Defendant Through: Defendant is ex-parte.

CORAM:-HON'BLE MR JUSTICE MANMOHAN SINGH MANMOHAN SINGH, J.

This is a suit under Section 134 and 135 of the Trade Marks Act, 1999 for permanent injunction to restrain infringement, passing off, damages and rendition of account. CASE OF THE PLAINTIFF AS PER PLAINT

The plaintiff is a corporation under the Laws of United States of America. It was incorporated in the year 1924 with the name and style of Economic Laboratory and in the year 1986 it was changed to M/s Ecolab Inc. Mr. Edward R. Courtney, Trademark Attorney is the authorized signatory.


　


The plaintiff is into a business of manufacture and trade of premium cleaning, pest elimination and repair products having wide application in the hospitality, food service, healthcare and industrial markets and other areas as well.

Apart from the above services the plaintiff manufactures and markets numerous products which include detergents, instruments care, skin care, surgical scrub, surface disinfectants and other things.




Since 1924, the plaintiff has been engaged in the said business. In year 1986 the plaintiff bonafidely adopted and changed its name or word mark "Ecolab" from "Economic Laboratories". Since then the plaintiff has been using the said trade name and house mark under the said style as an essential part of its corporate name and a house mark in relation to its goods and business.


　


With the advent of e-commerce, the said Ecolab trade name/trade mark has been used by the plaintiff in the domain of www.ecolabs.com and has been since associated with good business and goodwill.




The details of the said trade mark Ecolab is duly registered in India in favour of the plaintiff. The details of the trademarks of the plaintiff are herein mentioned below:

Trade name Ecolab Application No. 461913 Date 17th October 1986 Class 1 Goods Chemical products used in industry, detergents for use in industrial and manufacturing process, cleaning composition for industrial purposes, chemical products used in laundries and ware washing process, water treatment chemicals, chemicals for treating fabrics, chemical degreasing agents, antistatic and anti fog preparation; chemical oil and fuel additives; surfactants; de-scalers; catalysts; industrial solvents; C.S. (OS) No.2248/2007 Page 2 of 11 corrosives; metal conditions; chemical machine fluids; phocphatizres. Journal 980 2 Trade name Ecolab Application No 461914 Date 17th October 1986 Class 3 Goods Bleaching preparation and other substances for laundry use; cleaning; polishing; scouring and abrasive preparations; stain removing preparation, paint removing preparation; soaps, detergents; fabric softeners; rising agents; laundry starch; cleaning solvents. Journal 979 3 Trade name Ecolab Application No 461915 Date 17th October 1986 Class 5 Goods Preparation for killing weeds and destroying vermins, herbicides, fungicides, parasiticides, bactericides, germicides, insecticides, slimicides,, veterinary and sanitary substance, disinfectants, sanitizers, deodorants, air fresheners, insect repellants. Journal 970 4 Trade name Ecolab C.S. (OS) No.2248/2007 Page 3 of 11 Application No 461916 Date 17th October 1986 Class 7 Goods Laundry and ware washing machines, machinery for cleaning, polishing and scrubbing parts and accessories therefore are being goods includes in class 7. Journal 1001 5 Trade name Ecolab Application No 461917 Date 17th October 1986 Class 9 Goods Mechanical electric and electronic apparatus to measure and/or dispense liquid, powdered of solid chemicals, detergents, cleaning and rinsing agents, parts and accessories. Journal 979 Plaintiff states that the above registrations are legal, regular and in full force. By this registration the plaintiff has exclusive rights over the said registered trade mark.




Plaintiff states that trade mark ECOLABS (word per se stylized, logo or labels) are duly registered in favour of the plaintiff for goods in class 1,3,5,6,7,9,11,35,40,42,47 in over 100 countries in North & South America, Europe, Africa, Asia, Asia Pacific, Australia and many other countries.


　


The plaintiff state that the art work involved in the plaintiff's Ecolab stylized trade mark as also its various logo and label is the original artistic work within the meaning of the Indian C.S. (OS) No.2248/2007 Page 4 of 11 Copyright Act 1957. Plaintiff is the owner and proprietor of the copyright therein.

The goods of the plaintiff are well known, recognized, demanded, sold and traded world over with reference to the trade name/ mark/house mark/ domain name. The said domain name is well known and recognized by the public at large. The plaintiff's trade mark/trade name/domain name has a strong presence in India. Apart from that, trans-border reputation is also relied upon by the plaintiff.




The plaintiff has been promoting the business through e- commerce. The plaintiff initially offered its goods through an Indian company. The plaintiff has already got the subsidiary of the Indian company in the trade name of M/s Ecolab Food Safety & Hygiene Solution Pvt. Ltd.


　


13. Plaintiff, apart from excellent quality of the said goods and business, lays tremendous application on research and development and spends a great emphasis on innovation. By 1960, the plaintiff had more than 50 patents and 200 plus people are employed in the research department. In 1962, plaintiff completed state of art Merit J. Osborn Research & Development Center.








CASE AGAINST DEFENDANT AS PER PLAINTIFF






The defendant company is incorporated under Indian Companies Act 1956 and is engaged in the business of manufacture and trade of medical and pharmaceuticals preparations and allied goods (hereinafter referred to as "impugned goods").




The defendant adopted the word Ecolabs as an essential and distinguishing feature of its impugned trade name. The name adopted by the defendant is phonetically, visually, structurally in its basic idea and in its essential features.

The defendant has not only adopted the trade name/word mark of the plaintiff but has also infringed the registered trade mark under Nos. 461913 in Class 1, 461914 in Class 3, 461915 in Class 5, 461916 in Class 7 and 461917 in Class 9. Defendant is not exonerated from these charges of falsification, unfair and unethical trade practices.




17. Defendant is fully aware of the plaintiff's rights, goodwill, reputation, benefits and user etc in the plaintiff inspite of this, defendant is blatantly using the same mark. Due to the defendant's unlawful and impugned activities there are losses suffered by the plaintiff.








THE CASE OF THE DEFENDANT






The defendant states that plaintiff has filed the present suit with dishonest intention and stated false facts.




Defendant states that the plaintiff could have easily obtained proper verification from the ROC to ascertain the name of M/s Eacolab Ltd. but plaintiff did not do that properly.


　


Defendant states that defendant is prior user of the name and has adopted prior user. Defendant states that the plaintiff obtained the name by furnishing false particulars.




In the amendment pertaining to change in name of plaintiff for change of name of plaintiff from M/s Economic Laboratory Inc to M/s Ecolab Inc was to be effective from 01.12.1986. But, the applications for registration of trade mark Ecolab filed by plaintiff bears the following dates.

Registration No. Date of filing Filed by & Class

461316/1 October 1st ,1986 M/s Ecolab Inc 461913/1 October 17th ,1986 "

C.S. (OS) No.2248/2007 Page 6 of 11 461914/3 " " 461915/5 " " 461916/7 " " 461917/9 " "

In all the above application/registration filed by M/s Eco Lab Inc. the date of filing principally is the month of October 1986, whereas as per the plaintiff, the alleged change of name of plaintiff from M/s Economic Laboratory to M/s Ecolab came into operation only in December 1986. In October 1986 there was no company existing in the name of M/s Ecolab Inc and the aforesaid applications are filed in the name of a non existing company. Hence, it is clear that plaintiff deliberately furnished false, wrong details and concocted facts. Because of these false facts the trademark is liable to be dismissed and cancelled.




The suit is liable to be dismissed on the ground of delay and latches. The plaintiff has known this fact since 21.10.1986 but till now they have not come forward. It is only after a lapse of 10 years that they have filed this suit and all these years they were sitting silent on the matter.

Defendant denies that plaintiff is in numerous manufacturing products. Defendant also denies that the plaintiff, since 1924 is engaged regularly (put from file) and defendant also denies that plaintiff has bonafidely and honestly adopted the trade name Ecolab from Economic Laboratories.


　


The plaintiff in addition to Ecolab trade mark/trade name has been using numerous other trademarks/trade name, like Endure, ASEPTI-Solid, Lapid-Zyme, Nature Mild, Bacti-Stat, Medi-Scrub etc. The plaintiff pirated the name of the defendant.

Defendant submits that if the plaintiff has been doing business bonafiely, openly, honestly, continuously, commercially then why the plaintiff has not filed any proof along with the plaint to establish their user.




The defendant also states that plaintiff has been carrying on business in India. The plaintiff cannot show any effective sales in India. The goods are also not available in the market and hence it is inconsequential to the claims raised by the plaintiff in their plaint.


　


The defendant denies that plaintiff has been publicizing the trade name through newspaper, magazines and other electronic form about their product.




After the filing of the written statement, the defendant was proceeded ex-parte vide order dated 18.08.2009. The defendant also filed the counter claim which was also dismissed for non-appearance on the said date. The plaintiff was given time to file the ex-parte evidence which was filed by way of affidavit of Sh. Edward R. Courtney, who has almost reiterated the statements made in the plaint.


　


The said trade mark ECOLAB (word per se) is duly registered in India in favour of the plaintiff under Nos.461913 in class 01, 461914 in class 03, 461915 in class 05, 461916 in class 07 and 461917 in class 09 in relation to the goods mentioned in para 7 of the plaint. Legal Proceedings Certificate of the plaintiff's Registered Trade Mark "ECOLAB" under Nos. 461917 in class 9, 461916 in class 7, 461913 in class 1 and 461915 in class 5 are placed on record as Exh. PW1/12, Exh.PW 1/13, Exh. PW 1/14 and Exh. PW 1/15 with Index dated 02.05.2008.




The plaintiff's said Trade Mark ECOLAB (word per se, stylized, logo or labels bearing the same) are duly registered in relation to a wide range of goods falling in classes 1, 3, 5, 6, 7, 9, 11, C.S. (OS) No.2248/2007 Page 8 of 11 35, 37, 40, 42 and 47 in over 100 countries of the world and across all regions and continents including countries in North and South America, Europe, Africa, Asia, Asia Pacific, the Middle East, Australia etc. Original list of registered Trade Mark of the plaintiff company in different countries of the world are placed on record as Exh. PW 1/7 with list of documents dated 11.10.2007.

　

The plaintiff's products and services reaches customers in more than 160 countries including India wherein in addition the plaintiff enjoys its trans border reputation and users thereof as extending into India. The plaintiff's said goods and business are sold, traded and marketed by the plaintiff directly or through its wide network of associates and affiliates and through retail, internet and e- commerce. Sales figure of the plaintiff is placed on record as Exh. PW 1/6. Original documents downloaded from the internet, pertaining to the history of the plaintiff company is placed on record as Exh. PW 1/8 and showing the plaintiff's presence in India is placed on record as Exh. PW 1/9. Original brochure of the plaintiff company regarding plaintiff's product is placed on record as Exh. PW 1/10. The said exhibits are filed with the list of documents dated 11.10.2007.




Admittedly, in the present matter the defendant company was incorporated on 21.10.1986 and the permission was given to commence the business with effect from 11.12.1986. The defendant has placed photocopies of some of the documents. However, no original documents have been filed by the defendant. On the other hand, the plaintiff's application for registration of the trademark ECOLAB was filed on 17.10.1986. It is also a matter of fact that the plaintiff's application for registration of the trade mark ECOLAB was filed in United States Patent and Trademark Office on 12.05.1986. C.S. (OS) No.2248/2007 Page 9 of 11 All the above said trademarks are registered in India. Therefore, it appears from the record that it is the plaintiff who has adopted and used the trademark ECOLAB prior to the date of adoption and user of the defendant. Therefore, the defendant is incorrect in saying that it is the earlier user of the trademark and is the proprietor of the same. The plea of the defendant, therefore, cannot be accepted in view of the documents placed on record by the plaintiff.

　

Since the plaintiff's evidence has gone unrebutted as the defendant has also failed to cross-examine the witness of the plaintiff, the evidence filed by the plaintiff is liable to be taken as correct. The defendant, on the other hand, has failed to produce any evidence in support of its claim.




Admittedly, the plaintiff being the registered proprietor of the trade mark, in case the defendant will use the mark ECOLAB as a trademark and/or trade name, it would be infringing the trademark of the plaintiff. The following judgments are relied upon by the plaintiff:

(i) Ellora Industries, Delhi Vs. Banarsi Dass and Ors. Delhi, 1981 PTC 46.




(ii) Montari Overseas Ltd. Vs. Montari Industries Ltd., 1996 PTC 16

(iii) Midas Hygiene Industries P. Ltd. & Anr. Vs. Sudhir Bhatia & Ors., 2004 (28) PTC 121 (SC) (iv) Milment Oftho Industries & Ors. Vs. Allergan Inc., 2004 (28) PTC 585 (SC)

(v) Century Traders Vs. Roshan Lal Duggar & Co. and Ors., AIR 1978 Delhi 250.

36. After having gone through the above said decisions referred to by the learned counsel for the plaintiff, I am of the considered view that the plaintiff is entitled to a decree for permanent injunction in favour of the plaintiff and against the defendant in terms of para 36 (a) and (b) of the plaint. As regard the other reliefs are

C.S. (OS) No.2248/2007 Page 10 of 11 concerned, the plaintiff has not been able to prove the same. Therefore, the same are rejected. However, the plaintiff is entitled to the costs of the suit. Decree be drawn accordingly.

MANMOHAN SINGH, J.

NOVEMBER 28, 2011

C.S. (OS) No.2248/2007 Page 11 of 11

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