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Judgment
Manmohan Singh, J.—By this order I shall dispose of the following applications filed by the parties:
a) IA No. 11081/2003 under Order XXXIX Rules 1 & 2 of the Code of Civil Procedure, 1908 (hereinafter referred to as the CPC) filed by the plaintiff.
b) IA No. 179/2008 under Order VI Rule 17 CPC filed by the plaintiff.
c) IA No. 8568/2008 under Order VII Rule 10 CPC filed by defendant No. 1.
d) IA No. 2977/2009 u/s 151 CPC filed by the plaintiff.
The plaintiff has filed the suit under Sections 133 & 134 of the Trade Marks Act, 1999.
The brief facts are that the plaintiff is a company duly incorporated under the provisions of the Companies Act, 1956 and since its incorporation in the year 1994 the plaintiff has been engaged in the business of manufacture, sale, trade and exports of pickles of various kinds and related goods like food processing. As per the plaintiff, in the year 1994 the plaintiff honestly and in a bona fide manner in the course of trade started using the trade mark Pachrangas Farm Fresh. in an artistic manner and the trade name Pachranga., which is being used in a distinctive manner with artistic work which is unique due to its get up, lettering styles and colour scheme. The said trade mark Pachranga Farm Fresh. is being used commercially, openly and exclusively in relation to the goods mentioned above and the plaintiff has built up a valuable trade, goodwill and reputation therein and acquired proprietary rights therein.
As per the plaintiff, it is the proprietor and prior user of the said trade mark and name. It is also stated that in the year 1943, the ancestors of the Directors of the plaintiff company i.e. Sh. Chander Mohan Dhingra and Sh. Rajinder Dhingra started the business of pickles storage and processing and with the passage of time the business was expanded into other allied goods like food processing.
In the year 1953, the trade mark Pachranga was duly registered with the Registrar of Trade Marks under registration No. 158354 in the name of the firm and its partners in class 29 in respect of pickles. The name of the firm was M/s. Muralidhar Ram Narain. There was a disclaimer attached to the said registration to the effect that the registration would give no right of exclusive use of the expression Achar Pachranga. One of the partners of the said firm was Sh. Asa Nand who is the father of Mr. Chander Mohan Shingra and grand father of Mr. Rajinder Kumar Dhingra. Both are at present Directors of the plaintiff company.
It is averred in the plaint that the family firm acquired rights under the trade name Pachranga by virtue of being legal heirs and by transmission. Since 1994, the present company was formed and promoted by its promoter/directors being legal heirs and part of the same family adopted and used the name Pachranga and Farm Fresh. It is also stated that the directors of the plaintiff had earlier floated another partnership firm known as Pachranga International which had as its partners Sh. Asa Nand Dhingra, Sh. Chander Mohan Dhingra and Sh. Rajinder Kumar Dhingra. It was the same business as pickles.
Later on, a change came in the constitution of the aforesaid firm due to ingress and egress of incoming and outgoing partners. Now the firm is comprised of Sh. Chander Mohan Dhingra, Sh. Rajesh Kumar Dhingra and Sh. Amit Kumar Dhingra as partners thereof and the firm is known as Pachranga International (Chander Group).
The averments made by the plaintiff against the defendants is that they have been in the same trade of pickles and allied goods. The defendant No. 1 is the manufacturer and the defendant No. 2 is the marketing agent of defendant No. 1. It is stated that the defendants have adopted and commercially started using the trade mark and label Pachranga which is identical to/ deceptively similar with the trademark/label of the plaintiff. The trademark Pachranga forms an essential part of the impugned trademark and therefore, the defendants are passing off their goods as those of the plaintiff''s. The defendant is also infringing the copyright claimed by the plaintiff in the label. It is contended by the plaintiff that the impugned adoption and user by the defendants is dishonest, tainted, mala fide and fraudulent and it has been adopted by the defendants with the calculated view to cause deception and confusion in the market and to pass off the goods of the defendants as that of the plaintiff as the defendants were aware about the name, goodwill and reputation of the plaintiff. In the interim application the plaintiff has sought the prayer restraining the defendants from using the impugned trademark Pachranga and label attached as Annexure-D-A-1 or any other trademark/label identical to/ deceptively similar with the trademark of the plaintiff.
The suit between the plaintiff and defendant No. 2 was resolved by order dated 5.12.2005 passed by this Court wherein the defendant No. 2 made the statement that he would completely opt out of the business of making pickles and would not copy any of the labels of the plaintiff. In view of the statement, the plaintiff''s suit was dismissed as withdrawn in respect of defendant No. 2.
The defendant No. 1 placed the amended label before the Court which was referred in order dated 29.1.2004. The case of the defendant No. 1 is that the defendant No. 1 is carrying on its lawful business as manufacturer and merchant of pickles under the descriptive expression PACHRANGA since the year 1998 within the knowledge of the plaintiff.
It is also stated in the written statement that the defendant No. 1 had advertised its trademark in the magazine under the title 2nd National Seminar on Achar and Murabba in March 2003 at Page No. 40 in which the advertisement of the plaintiff also appears at the back cover. As far as the label part is concerned, the defendant has stated that the new amended label has already been filed on record.
It is stated by the defendant that the word PACHRANGA is a descriptive term for pickles and the plaintiff has no monopoly rights for the same. As far as the registration referred by the plaintiff bearing No. 158354 is concerned, it is stated that the registration is subject to the disclaimer of the words ACHAR PACHRANGA. The contention of the defendant No. 1 is that there is delay, laches and acquiescence on the part of the plaintiff due to which the plaintiff is not entitled to discretionary relief of injunction.
Defendant No. 1 also raised the preliminary objection that the plaintiff has not paid the proper court fee, therefore the suit of the plaintiff is liable to be dismissed.
Issues in the above said matter were framed on 31.8.2007. Thereafter, further two applications being IA No. 179/2008 under Order VI Rule 17 CPC for amendment of the plaint by the plaintiff and IA No. 8568/2008 under Order VII Rule 10 CPC by the defendant No. 1 were filed.
I have heard the arguments in both the applications along with another pending application being IA No. 11081/2003 under Order XXXIX Rules 1 & 2 CPC.
I shall first take up the applications filed by the plaintiff under Order VI Rule 17 read with Section 151 CPC. In this application the plaintiff has sought amendment in the plaint on the ground that the plaintiff''s two applications for registration bearing No. 735067 and 672552 which were opposed by M/s. Pachranga Foods, C-3, Industrial Area, Panipat, Haryana have now been registered as the said parties had entered into an agreement on 29.10.2007 whereby both the oppositions had been withdrawn by the latter party. According to the plaintiff, as a result of the withdrawal of the said notice of oppositions, the said trademark applications have been registered.
In the amendment sought, the plaintiff has sought to include the relief of infringement of trademark in addition to the relief of passing off and infringement of copyright etc. already filed. It is settled law that an amendment can be allowed during the pendency of the suit for passing off by incorporating the relief of infringement of trademark if the said trademark is registered in favour of the plaintiff. However, it appears from the record in the present case that this application has been pending for the last two years and the registration certificates have not been placed by the plaintiff on record. In the absence of the said registration certificates it is not possible to give a finding to the effect that the said trademarks have been registered with the Registrar of Trade Marks as the Court cannot allow such amendment without prima facie proof of registration as per rules. Therefore, the amendment cannot be allowed and it will be kept pending till the time the plaintiff is able to file the copies of the registration certificates, if any, granted by the Registrar of Trade Marks.
As far as the other application being IA No. 8568/2008 under Order VII Rule 10 CPC filed by the defendant No. 1 is concerned, it is stated by the defendant No. 1 that the parties to the suit are carrying on business and residing outside the jurisdiction of this Court i.e. at Panipat, therefore this Court has no territorial jurisdiction to entertain and try the present suit at least as regards a suit for passing off which is a separate cause of action and the plaintiff has to satisfy the Court about its jurisdiction to invoke the same.
It appears from the record that issue No. 1 has been framed by this Court in respect of territorial jurisdiction. The present suit has been filed by the plaintiff for infringement of copyright, passing off etc. The plaintiff has also mentioned in the application for amendment that the trademark has now become registered although the registration certificates have not been filed. The plaintiff has invoked the territorial jurisdiction of this Court on various grounds i.e. (i) the defendants are committing the infringing of passing off within the jurisdiction of this Court; (ii) the plaintiff is also carrying on and managing its goods and business under the said trademark in Delhi and adjoining areas; (iii) the plaintiff has its registered office at Nanak Enclave, Kingsway Camp, Delhi; (iv) the plaintiff also has dealers in Delhi namely M/s. Amit Enterprises at C-164, Sector-7, Rohini, Delhi.
The issue of jurisdiction has been dealt with in the case of The Tata Iron and Steel Co. Ltd. Vs. Mahavir Steels and Others, wherein this Court has dealt with a similar objection and has held in para 11 of the judgment which reads as under:
The question regarding jurisdiction can only be gone into after the evidence of the parties is recorded in the case. Even in the Punjab case the suit was not thrown out at the threshold under Order 7 Rule 11 the Code but only after the parties were given an opportunity to lead evidence. The plaint in the present suit categorically states that the defendant No. 1 No. 1 was selling the channels of defendant No. 1 No. 2 under the offending trade mark which is deceptively similar to that of the plaintiff. On these averments the Court must assume jurisdiction and proceed with the suit to determine the question relating to the confirmation/vacation of the stay order at this stage.
In the case of LG Corporation and Anr. v. Intermarket Electroplasters (P) Ltd. and Anr. 2006 (32) PTC 429, para 7 reads as under:
...The question as to whether the Court has territorial jurisdiction to entertain a suit or not has to be arrived at on the basis of averments made in the plaint, that truth or otherwise thereof being immaterial as it cannot be gone into at this stage...
In view of settled law, prima facie, it appears that this Court has the territorial jurisdiction to entertain and try the said suit. However, the issue in this regard has already been framed. The plaintiff ultimately has to satisfy the Court as regards the question of territorial jurisdiction at the time of the final hearing of the suit. This application has no force and the same is false and frivolous and is dismissed with cost of Rs. 10,000/- to be paid by defendant No. 2 in each application by the next date of hearing.
Now coming to the merit of the case, as already stated the issues in the above said matter were framed on 31.8.2007. The plaintiff has also produced evidence by way of affidavit on 13.11.2007. However, the cross-examination has not been carried out by the defendants perhaps in view of the pendency of the applications.
At the time of hearing of interim application, learned Counsel for defendant No. 1 has referred the judgment passed by Sh. S.C. Goyal, ADJ, Panipat, dated 4.8.2004 wherein the suit filed by the firm Pachranga International. has been dismissed on merit and no relief with respect to the trademark Pachranga has been granted. He submits that no appeal or review against the said judgment has been preferred by the plaintiff. He submits that one of the Directors was a partner of Pachranga International when the suit was filed in the year 2000. It is argued that the same order be passed in the present case also.
Mr. Bansal on the other hand has argued that the defendant No. 1 in the present case was not a party in those proceedings, therefore, the present application for injunction is to be decided as per its own merit. Mr. Bansal has also argued that said judgment does not operate as res judicata in the present case as it is not binding upon the higher court.
Mr. Bansal further argued that since now the trademark Pachranga has been registered in the name of the present plaintiff, a fresh cause of action has arisen even against M/s. Panipat Pachranga Industries, who was the defendant No. 1 in the suit No. 1/2000 filed by Pachranga International. before the ADJ, Panipat. As regards the question of delay, Mr. Bansal submits that no evidence of user has been placed by defendant No. 1 about the user claimed, thus, the plaintiff is entitled to the injunction claimed.
After having gone through the pleadings and document filed by the parties, no doubt it is true that defendant No. 1 was not a party to the suit filed by Pachranga International. in Panipat, nor is this judgment binding on this Court while considering the injunction application in the present case, however, the fact cannot be ignored that in one matter the suit has been dismissed on merit and the facts in the two cases are admittedly common. Further, even if the submission of Mr. Bansal is accepted as regards the fresh cause of action on the basis of registration granted, no registration certificates have been produced nor has any proof been given by the plaintiff that these two trademarks have been entered in the register of Trade Marks and in the absence of proof, the submission of the plaintiff cannot be considered or accepted.
After having considered the entire gamut of the matter, I feel that it is not appropriate to pass the interim order as prayed particularly at this stage, when the matter is ripe for evidence, rather I shall dispose of the interim application without expressing any opinion on merit with the following directions:
a) The suit proceedings be expedited.
b) The defendant No. 1 shall maintain separate accounts pertaining to the use and sale of Pachranga products and file the same before this Court every quarterly. The first statement be filed on or before 15.2.2010 wherein the defendant No. 1 shall give the sale figure of Pachranga products from the date of user till date, thereafter, the defendant No. 1 shall keep on filing the statement of sale every quarterly.
c) The defendant shall be entitled to use the colour scheme and get-up as it appears in the amended label filed on 28.1.2004 or such other colour scheme and get-up which would not be similar to the plaintiff.
d) The defendant No. 1 by 15.02.2010 shall also file an undertaking in the form of affidavit that in case the suit of the plaintiff is decreed after trial, the defendant No. 1 shall pay the profits and damages if any suffered by the plaintiff.
e) The defendant would be entitled to use the mark CHAMPION PACHRANGA in capital letters in similarly sized font during the pendency of the suit in order to avoid confusion in the market. The defendant No. 1 shall make the necessary amendments in the packaging by 15.02.2010.
For the above said reasons, IA No. 11081/2003 is disposed of. Needless to say, these findings have been made without prejudice to the contentions on merit of either party and shall have no bearing on the final outcome of the case.
IA No. 2977/2009 filed by the plaintiff is for adjournment of the hearing. In view of the disposal of the pending applications, no further orders are required in this application.
CS (OS) No. 2029/2003
List the matter before the Joint Registrar on 24th February, 2010 for direction of evidence.