GST Helpdesk   Subscription   Demo   New User   Login      
Tax Management India .com
TMI - Tax Management India. Com
Extracts
Home List
← Previous Next →

2017 (1) TMI 575 - DELHI HIGH COURT

2017 (1) TMI 575 - DELHI HIGH COURT - TMI - Infringement of trademark/copyright - whether the averments made in the plaint indicate that the present suit is a quia timet action and is based on the plaintiff’s apprehension of infringement of trademark/copyright within the territorial limits of this Court? - Held that:- The cause of action in the present case – even as described by the plaintiff in paragraph no. 26 of its plaint – is not of any apprehended injury by future action but essentially s .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

cause of action. Thus, the contention that part of cause of action has arisen within the territories of this Court since the plaintiff has made a bald statement that it apprehends that defendant would launch its product in Delhi, cannot be accepted. - CS(OS) 2267/2013 & IA Nos. 18638/2013, 24280/2015, - Dated:- 6-1-2017 - MR VIBHU BAKHRU J. For the Plaintiff: Mr Rajiv Nayar, Senior Advocate with Mr Shrawan Chopra, Mr Sanjay S. Chhabra , Mr Saurabh Seth and Mr Kanak Bose, Advocates.

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

Companies Act, 1956 and is, inter alia, engaged in the business of manufacturing and marketing alcoholic beverages, including Indian Made Foreign Liquor (hereafter IMFL ). The plaintiff has averred in the plaint that it sells alcoholic beverages under various distinctive trademarks and labels including Officer s Choice . 3. The plaintiff has further claimed that its trademark and label Officer s Choice have acquired an enviable reputation and goodwill and is one of the highest selling .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

e plaintiff also claims that defendant no.1 holds a sub-lease from defendant no.2 which has its registered office in the State of Andhra Pradesh. The plaintiff states that defendant no.1 is, inter alia, engaged in the business of bottling and manufacturing alcoholic beverages, including whisky under a trademark Smart Choice which the plaintiff claims, is deceptively and confusingly similar to the plaintiff s trademark Officer s Choice . It is further alleged that the label used by defendant no. .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

l jurisdiction of this Court. It has premised the present application on the aforesaid assertion claiming that the plaint is liable to be returned. 7. Mr Hemant Singh, learned counsel appearing on behalf of the applicant (defendant no. 1) drew the attention of this Court to the various averments made in the plaint and submitted that since the cause of action as pleaded by the plaintiff has arisen in the State of Andhra Pradesh, this Court would have no jurisdiction to try the present .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

d since the cause of action had arisen in the State of Andhra Pradesh where the plaintiff also carries on its business, the Courts at Andhra Pradesh and not this Court would have the jurisdiction to try the present suit. 8. He referred to the decision of the Supreme Court in Indian Performing Rights Society Limited v. Sanjay Dalia and Another: (2015) 10 SCC 161 and the decision of a Division Bench of this Court in Ultra Home Construction Pvt. Ltd. v. Purushottam Kumar Chaubey & Or .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

. Mr Rajiv Nayar, learned Senior Advocate appearing for the plaintiff/ non-applicant did not dispute that by virtue of the law as laid down by the Supreme Court in Indian Performing Rights Society Limited (supra), this Court would not have any jurisdiction if no part of cause of action had arisen within the territorial limits of this Court. He, however, contended that in the present case, the cause of action had arisen in Delhi since it was pleaded that defendant no.1 was a unit of Tilaknagar In .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

ction where the cause of action included an apprehension of injury within the territorial jurisdiction of this Court and, therefore, this Court would have the jurisdiction to decide the suit. He further submitted that the question of jurisdiction was a mixed question of fact and law which would be determined at the stage of trial. He strongly relied on the decision of the Division Bench of this Court in Teva Pharmaceutical Industries Ltd. and Ors. v. Natco Pharma Ltd.: (2014) 210 DLT 591 (DB) an .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

ection as to the jurisdiction must be considered on the basis of the averments made in the plaint alone. Reasoning and Conclusion 11. It is trite law that an objection under Order VII Rule 10 CPC as to the territorial jurisdiction of a Court at the pre-trial stage, is to be considered only on the basis of the averments made in the plaint and the material produced by the plaintiff without looking into the written statement filed by the defendant. In Exphar SA and Another (su .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

ed in the plaint to be correct. 12. In view of the above, at this stage, the question whether this Court has the jurisdiction to try the present suit would have to be considered on demurrer; without looking into the defence pleaded by the defendants. 13. As stated earlier, Mr Nayar did not contest the position that this Court would not have jurisdiction to entertain the present suit only on the basis that the plaintiff s office was situated in Delhi or that the plaintiff c .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

ntiff apprehended that defendant no. 1 would launch its product in Delhi and, thus, this Court would have the jurisdiction to try the suit. 14. In view of the above, the only question to be considered at this stage is whether the averments made in the plaint indicate that the present suit is a quia timet action and is based on the plaintiff s apprehension of infringement of trademark/copyright within the territorial limits of this Court. 15. In order to address the above co .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

aintiff has described its registered trademarks as well as trade label in the plaint. The plaintiff has further provided the history of the use of the trademark and trade label Officer s Choice and has made averments relating to plaintiff s title and use of the trademarks. 17. In paragraph 18 of the plaint, the plaintiff has described defendant no.1 to be a company having its registered office at P.O. Tilaknagar, Tal. Shrirampur, Dist. Ahmednagar, Shrirampur, Maharashtra. It is also a .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

ed mark )….. 18. The plaintiff has averred that the impugned mark Smart Choice is deceptively and confusingly similar to plaintiff s registered trademark Officer s Choice and further the Label Smart Choice is also a substantial reproduction of the plaintiff s Officer s Choice label. 19. In paragraph 20 of the plaint, the plaintiff has stated that it became aware of the defendant s infringing activities in September, 2013 when it came across defendant s whisky being .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

ducts. 20. A plain reading of the averments made in paragraph nos. 20 to 25 indicate that the plaintiff is aggrieved by the use - and not the apprehended use - of the impugned mark (Smart Choice) and label by the defendants. The relevant averments indicating the same are set out below:- 20. The Plaintiff first became aware of the Defendants infringing activities in September, 2013 when the Plaintiffs representatives came across the Defendants' "Smart Ch .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

erefore, an infringement of the Plaintiff s proprietary rights in its trademark and copyright vesting in the artistic work in the label. A bare perusal of the Defendants' product evidences an intention to pass off its products as being associated with and/or emanating from the Plaintiff. The Defendants have slavishly imitated and reproduced the overall get up, layout, color scheme and arrangement of features as the Plaintiff s label. Further, use by the Defendants' of the impugned mark a .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

he degree and extent of similarity dismisses the likelihood of it being a mere coincidence. Further, it is apparent that the Plaintiff s proprietary trademark "Officer's Choice" has inspired the Defendant to come up with the impugned mark for identical products. The Defendant's aim is to pass of its product as a variant of the Plaintiff s product or as one having a connection or association with the Plaintiff s well-known whisky products. The Plaintiff has used the mark "O .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

d label that was specifically commissioned by it for its own whisky products. The Defendants have expended no time, money or effort to design their own label and have chosen to slavishly reproduce the Plaintiff s original, unique and distinct artistic work for their inferior products. Further, use of a deceptively similar trademark amounts to confusing the consuming public into believing that the Defendants' goods originate from the Plaintiff s repertoire or are in some way associated with o .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

ing used with respect to identical goods i.e. whisky that are sold through the same trade channels. The sale and distribution of the Defendants' whisky products bearing the impugned mark and label would result in tremendous harm and prejudice to the Plaintiff s business, rights and interests. The impugned label has been dishonestly copied by the Defendants such that a consumer of ordinary intelligence and imperfect recollection is likely to believe that the Defendants' products are emana .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

by riding on the coattails of the Plaintiff and thereby, causing incalculable damage and losses to the Plaintiff s business reputation both in India and abroad. It is submitted that the Plaintiff s "Officer's Choice" trademark has acquired international reputation and goodwill and the same qualifies as a famous and well-known trademark as envisaged in Section 11 of the Trade Mark Act, 1999. The Plaintiff reserves its right to seek damages against the Defendants in the event proceed .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

ave been granted a license to use the said label in relation to an identical class of products; c) the business of the Defendants have been endorsed by the Plaintiff; or d) the Plaintiff has released a variant of its whisky "Officer's Choice" in the market under the name "Smart Choice". As such the Defendants have no justification or explanation whatsoever for their unauthorized use and adoption of the impugned label and mark for identica .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

intiff. There is no averment in the entire plaint from paragraphs nos. 1 to 25 which would indicate that the plaintiff apprehended the use of the trade mark in question in future; on the contrary the averments articulate the plaintiff s grievance regarding the use of the trademark by the defendant. The reading of the plaint does not indicate that it is occasioned by any apprehension of a future launch of the products by defendants. This is amply clear from paragraph no. 26 of the plai .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

st the Defendants is continuing from day to day till the filing of the present suit and will continue until the Defendants are restrained by an order of injunction by this Hon'ble Court." 22. However, in paragraph 27 of the plaint - which is the paragraph regarding the jurisdiction - the plaintiff has averred that it has reasonable apprehension that the defendants have a distribution network in Delhi or are likely to sell the products bearing the impugned mark and label with .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

sed that still remains is whether the averments made in paragraph 27 of the plaint have the effect of establishing the plaint to be a quia timet action. 25. It is well settled that the plaint must be read as a whole. A plain reading of the plaint from paragraph 1 to paragraph 26, which sets out the averments indicating the plaintiff s claim as well as its grievance - the cause of action - clearly indicate that the suit is based on the present use of the trademark/label Smart Choice by .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

s". 26. The Corpus Juris Secundum, Volume 30A, 2007 Edition, explains the concept of quia timet in equity as under: Preventive relief; quia timet. A class of cases whose jurisdiction depends chiefly or altogether on the necessity for relief obtainable only in equity, is that of bills quia timet, whose objective it is to prevent anticipated mischiefs which could not after their occurrence be adequately redressed. Bills quia timet lie where a person has reaso .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

prevent a multiplicity of suits, or to protect the subject matter of a controversy where there is actual danger that it may be so dealt with as to prejudice the plaintiff s rights. 27. In Kuldip Singh v. Subhash Chander Jain & Ors.: (2000) 4 SCC 50, the Supreme Court had explained the quia timet action as under:- 6. A quia timet action is a bill in equity. It is an action preventive in nature and a specie of precautionary justice intended to prevent apprehended wrong .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

e use of the trademark/label Smart Choice by the defendant in praesanti. It is alleged that defendant no.1 is using the trademark in Andhra Pradesh, which was discovered by the plaintiff in 2013; and this is the cause of action for the plaint as pleaded by the plaintiff. 29. A mere bald statement at the end of the plaint which has no foundation in the entire plaint cannot be accepted as indicating the cause of action; the averments made in the plaint must, ex-facie, disclose the cause .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

be ousted by the defendant making a statement not to do any such act in Delhi. However, in that case, the plaint was based on the plaintiff s apprehension of an emanating launch of the drug Glatiramer Acetate for the treatment of multiple sclerosis. The Court specifically noted that the plaint contained pleadings to the effect that the news article was published on 17.01.2012 reporting that the defendants would work with Mylan Pharmaceuticals Inc. (MPI) to launch Glatiramer Acetate for the treat .....

X X X X X X X

Extract - Part text only
Click here to Access Full Contents

X X X X X X X

 

 

 

 

 



|| Home || Acts and Rules || Notifications || Circulars || Schedules || Tariff || Forms || Case Laws || Manuals ||

|| About us || Contact us || Disclaimer || Terms of Use || Privacy Policy || TMI Database || Members || Site Map ||

© Taxmanagementindia.com [A unit of MS Knowledge Processing Pvt. Ltd.] All rights reserved.

Go to Mobile Version