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Judgment
Rajiv Sahai Endlaw, J
IA No.1078/2018 (of the defendant under Order VII Rule 10 CPC).
The defendant, in this suit for permanent injunction restraining infringement of the trade mark and passing off and for ancillary reliefs, after the
issues were framed in this suit on 23rd February, 2017 including an issue as to the territorial jurisdiction of this Court, seeks return of the plaint under
Order VII Rule 10 of the Code of Civil Procedure, 1908 (CPC).
The counsel for the plaintiffs appearing on advance notice seeks adjournment to file reply.
An application under Order VII Rule 10 of the CPC is to be decided on the basis of averments contained in the plaint and for this reason it is felt
that there is no need for a reply and the plaintiffs who have already received advance copy of the application ought to have come prepared to address
on the application. Adjournment sought is thus refused.
The senior counsel for the defendant/applicant has been heard.
The plaintiff no.1, a Company incorporated in Germany and the plaintiff no.2 Zenner Aquamet India Pvt. Ltd., a licensee of the plaintiff no.1 and
having its registered office at Delhi, have sued the defendant/applicant having its registered office at Ernakulam and local office at 2, Community
Centre, Saket, New Delhi â€" 110 017, for the reliefs as aforesaid. Para 35 of the plaint with respect to territorial jurisdiction is as under:-
“35. This Hon’ble Court has jurisdiction to entertain and try present suit as Plaintiff No.1 carries on business in India through its
subsidiary Plaintiff No.2 which has a registered office in Delhi as mentioned in paragraph 2 hereinabove. The defendant is also having its
office in the city of Delhi. Hence this Hon’ble Court has jurisdiction to entertain and try the present suit.â€
The suit was entertained and summons and notice of the application for interim relief issued to the defendant/applicant, though no ex parte or
interim relief granted till now.
The defendant/applicant, in its written statement, with respect to the paragraph of the plaint qua territorial jurisdiction has pleaded as under:-
“It is denied that this Hon’ble Court has any jurisdiction. In any event Section 10 CPC is attracted and therefore, the present suit is
liable to be stayed. It is denied that the plaintiff shall suffer any loss, damage and injury. It is the plaintiffs who by their unauthorised
adoption and use of the trade mark Zenner are deceiving the consumers and public at large. The allegations to the contrary are wrong and
are denied.â€
I have enquired from the senior counsel for the defendant/applicant, whether the defendant/applicant, elsewhere in its written statement has denied
having its local office at 2, Community Centre, Saket, New Delhi as pleaded by the plaintiffs.
The senior counsel for the defendant/applicant, on instructions states that there is no denial thereof.
On 23rd February, 2017, while framing issues, issue no.8 framed is as under:-
“8. Whether this court has territorial jurisdiction to entertain and agitate the present suit?â€
Though in my view, the defendant having not denied having local office at the address pleaded in the plaint, at Delhi, the parties were not at issue
on the aspect of territorial jurisdiction and the issue aforesaid ought not to have been framed, be that as it may, the defendant is in any case not entitled
to maintain this application under Order VII Rule 10 of the CPC.
Though the application is liable to be dismissed merely on the grounds of (i) the defendant/applicant having not denied office at Saket, New Delhi;
and, (ii) the application having been filed after the suit has been pending for nearly six years and is set down for trial but since the senior counsel for
the defendant/applicant has also contended that the plaintiffs are not entitled to invoke Section 134 of the Trade Marks Act, 1999 and an issue has
been framed, it is deemed appropriate to deal with the said aspect as well.
The contention of the senior counsel for the defendant/applicant is that it is only the registered proprietor or the registered user who can invoke
Section 134 of the Trade Marks Act and the plaintiff no.2 who though claims to be a licensee for India of the plaintiff no.1, is not the registered user
of the trade mark with respect to which the suit is filed is thus not entitled to invoke Section 134. Attention is drawn to Section 52 and Section 134
which are reproduced hereinbelow:-
“52. Right of registered user to take proceedings against infringement.- (1) Subject to any agreement subsisting between the parties, a
registered user may institute proceedings for infringement in his own name as if he were the registered proprietor, making the registered
proprietor a defendant and the rights and obligations of such registered user in such case being concurrent with those of the registered
proprietor.
(2) Notwithstanding anything contained in any other law, a registered proprietor so added as defendant shall not be liable for any costs
unless he enters an appearance and takes part in the proceedings.â€
“134. Suit for infringement, etc., to be instituted before district Court.-(1) No suit â€
(a) for the infringement of a registered trade mark, or
(b) relating to any right in a registered trade mark, or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the
plaintiff’s trade mark, whether registered or unregistered.
shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of sub-section (1), a ""District Court having jurisdiction"" shall, notwithstanding anything
contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the
local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding,
or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for
gain. Explanation.- For the purpose of sub-section (2), ""person"" includes the registered proprietor and the registered user.â€
In the present case, it is the plaintiff no.1 who, claiming to be the registered proprietor, has filed this suit for infringement. It is the plea in the plaint
that the plaintiff no.2 is a licensee for use of the trade mark of the plaintiff no.1 in India and a Licence Agreement between the plaintiff no.1 and the
plaintiff no.2 is produced before this Court.
I have enquired from the senior counsel for the defendant/applicant, whether not in the case of a foreign corporation having neither registered
office nor any branch office in India but carrying on business in India through an Indian entity, the latter part of Section 134(2) of the Act providing for
institution of the suit at the place where the registered proprietor actually and voluntarily resides or carries on business or personally works for gain,
applies. In my view, a foreign corporation carrying on business in India through another entity even if not the registered user within the meaning of the
Trade Marks Act, would definitely be carrying on business in India at the place where it is so carrying on business through its licensee or some other
arrangement.
The senior counsel for the defendant/applicant has drawn attention to para 13 of Ultra Home Construction Pvt. Ltd. Vs. Purushottam Kumar
Chaubey 2016 (65) PTC 469 Delhi (DB )but agrees that the same deals with corporations registered in India only and does not deal with a case of a
foreign corporation as the plaintiff no.1. Though reliance is also placed on para 25 of Indian Performing Right Society Limited Vs. Sanjay Dalia (2015)
10 SCC 161 but the same also is found to be using the words “where he originally resides or at its head office or registered office or where he
otherwise carries on business or personally works for gain.........â€. The use of the words “at its head office or registered office or otherwise
carries on business†in alternative shows that the place where business is being carried on, also has territorial jurisdiction.
Though the senior counsel for the defendant/applicant has sought to suggest that Section 134 of the Act is for Indian companies only but admits
that the trade mark of which infringement is claimed by the plaintiff no.1 is registered in favour of the plaintiff no.1 in India and once it is so, to my
mind, no distinction can be made between a foreign owner of a trade mark and the Indian owner of a trade mark.
The senior counsel or the defendant/applicant at this stage has drawn attention to The Foundry Visionmongers Ltd. Vs. Satyanarayana Reddy S.
Manupatra Intellectual Property Reports/2015/3/0068 in para 12 whereof a Co-ordinate Bench of this Court has held that a company which is not
registered in India and has no subordinate office in India cannot be said to be carrying on business at New Delhi owing to the existence of a
Commission Agent i.e. exclusive reseller at New Delhi.
However a perusal of the judgment shows the Court to have as a matter of fact found that the business of the Commission Agent was not the
business of the foreign company.
The counsel for the plaintiffs though given an opportunity has not argued anything.
I may however state that I had in Exxon Mobil Corporation Vs. P.K. Sen 2016 SCC OnLine Del 4814 taken the same view as expressed above,
that a foreign proprietor of a trade mark is entitled to invoke Section 134 at the place where its permitted user is carrying on business. The said view
was reversed by the Division Bench in P.K. Sen Vs. Exxon Mobi Corporation (2017) 236 DLT 333 and SLP (C) No.7223/201 7preferred
whereagainst was dismissed in limine on 12th December, 2017. Thus, Section 134 cannot be said to be available to the plaintiff.
I may however add that the Division Bench of the High Court of Bombay in Harman Overseas Vs. Dongguan TR Bearing Company Limited
2017 SCC OnLine Bom 7327 has taken a view contrary to the view taken by Division Bench of this Court and SLP (C) No.28607/2017 preferred
thereagainst is also found to have been dismissed in limine on 6th November, 2017. I may also add that a Division Bench of the High Court of
Allahabad, as far back as in Guardian Assurance Company Vs. Shiva Mangal Singh ILR (1937) Allahabad 23 4held that a foreign company which
had an agent in India, carries on business in India at the place where its agent is situated, within the meaning of Section 20 of the CPC. Mention may
also be made of dicta of Division Bench of Bombay High Court in Pratap Singh Vs. Bank of America 1976 SCC OnLine Bom 111 holding, though in
the context of clause 12 of Letters Patent of that Court but at par with Section 20(c) of CPC, that a clear distinction is made between “carrying on
business†and “personally working for gainâ€; while in latter, the legislative requirement is that the defendant should personally work for gain, no
such requirement is postulated in “carrying on business†â€" it means that the defendant may carry on business himself or through an agent. It
was further held that the word “defendant†in clause 12 of Letters Patent as well as in Section 20 of CPC includes both natural and artificial
persons and no distinction in law can be made between corporations as are incorporated in India and corporations as are incorporated outside India.
Similarly, the Division Bench of the High Court of Madras also, inW ipro Ltd. Vs. Oushadha Chandrika Ayurvedic India (P) Ltd. AIR 2008 Mad 165
held that the contrast between the words “actually and voluntary resides†and “carries on businessâ€, in Section 62 of Copyright Act, 1957 and
Section 134 of Trade Mark Act, if correctly perceived, reveal that while there is limitation regarding residence, there is no such restriction with
reference to “carrying on business†â€" this is a clear indication that the term “carries on business†is not confined to only principal place of
business â€" if the legislature intended to mean the principal place only, it would have suitably qualified the expression “carries on businessâ€.
Be that as it may, for reasons earlier given, the application is dismissed.
An issue on the aspect of territorial jurisdiction has already been framed and all that is required to be clarified is that the dismissal of this
application will not affect the finding on the issue already framed in accordance with the evidence led. There is thus no merit in the application.
Dismissed.
IA No.10131/2012 (of the plaintiffs under Order XXXIX Rules 1&2 CPC).
There is no interim order in favour of the plaintiffs/applicants.
The senior counsel for the defendant has also contended that the plaintiffs/applicants have not filed even affidavits by way of examination-in-chief
inspite of opportunity.
The counsel for the plaintiffs/applicants has today also not shown any keenness to argue this application.
The conduct of the plaintiffs/applicants disentitles the plaintiffs/applicants to any interim relief.
Dismissed.
CS(COMM) 156/2017.
After framing the issues on 23rd February, 2017, the plaintiffs were directed to file affidavits by way of examination-in-chief within four weeks
and the suit listed before the Joint Registrar on 18th April, 2017.
The plaintiffs did not file any affidavits, not even list of witnesses by 18th April, 2017 and further opportunity of three weeks was granted to the
plaintiffs and the suit notified for plaintiffs†evidence on 21st August, 2017.
On 21st August, 2017, an adjournment slip was moved by the plaintiffs and no affidavits had been filed and the Joint Registrar adjourned the suit to
13th December, 2017 for plaintiffs†evidence, granting further eight weeks†time to the plaintiffs to file affidavits.
The position remained the same on 13th December, 2017 and one more opportunity was granted and the plaintiffs directed to file list of witnesses
and affidavits within four weeks with advance copy to the counsel for the defendant.
Though the evidence of the plaintiffs should have been closed much earlier, but the Joint Registrar granted time. However the said time of four
weeks is also over and the plaintiffs have not filed any affidavits by way of examination-in-chief till now.
The counsel for the plaintiffs seeks further one weekâ€s time to file affidavit by way of examination-in-chief.
The plaintiffs have already availed of four opportunities and this being a “Commercial Suit†and the plaintiffs being trade and business entities
having not chosen to lead evidence, cannot be granted any further accommodation. Though four weeks†time granted on 13th December, 2017
expired on 12th January, 2018 but till date neither any application has been filed nor is any cogent reason disclosed for the delay. All that is stated is
that the attorney of the plaintiffs has changed and an affidavit was received from Germany but was not notarised.
These are no explanations and the plaintiffs cannot be permitted to, after filing the suit, endlessly keep the same pending. In fact, a perusal of the
order sheet shows that the suit came up first before this Court on 25th May, 2012 and the plaintiffs repeatedly sought adjournments on 25th May,
2012, 23rd July, 2012, 31th July, 2012, 8th August, 2012, 9th October, 2012 and 13th December, 2012 and summons of the suit were finally issued on
17th May, 2013. The process of the Court cannot be permitted to be so abused.
A perusal of the issues framed in the suit shows the onus of all the issues to be on the plaintiffs only. The plaintiffs having failed to lead any
evidence, the senior counsel for the defendant on instructions states that the defendant is not required to lead any evidence.
The plaintiffs have failed to prove their case.
Resultantly, the suit is dismissed.
Decree sheet be drawn up.
The date of 20th March, 2018 before the Joint Registrar is cancelled.