Full Judgment Text
IN THE HIGH COURT OF DELHI AT NEW DELHI
CS (OS) 1188 of 2011 & IAs 7950 of 2011 (u/O 39 R. 1 & 2 CPC),
3388 of 2013 (u/O XXVI R. 2 CPC) & 18427 of 2013 (by Plaintiff
u/O VII R. 14 CPC)
LT FOODS LIMITED ..... Plaintiff
Through: Mr. J. Sai Deepak with
Mr. Julien George, Advocates.
versus
HERTIAGE FOODS (INDIA) LIMITED ..... Defendant
Through: Ms. Pratibha M. Singh with
Mr. Arjun Mukherjee, Advocates.
CORAM: JUSTICE S. MURALIDHAR
O R D E R
20.11.2013
IA No. 10244 of 2011 (by Defendant u/O VII R. 10 & 11 CPC)
1. This is an application by the Defendant, Heritage Foods (India) Limited
(‘HFIL’) under Order VII Rule 10 and 11 of the Code of Civil Procedure,
1908 (‘CPC’) seeking rejection of the plaint.
2. LT Foods Limited (LTFL) has filed the above suit seeking a permanent
injunction to restrain HFIL from infringing LTFL’s trademark HERITAGE
under Class 30 and also restraining HFIL from processing, selling, exporting,
marketing, advertising or offering for sale of rice or any other cereals under
the trade mark HERITAGE which may amount to passing off of HFIL’s
goods for those of LTFL.
CS(OS) No. 1188 of 2011 Page 1 of 7
3. The case of LTFL is that it sells rice under various well-known and
internationally famous brands, i.e., DAAWAT , DAWAT , HERITAGE ,
ORANGE , DEVAAYA , CHEF’S SECRET , SONA etc. LTFL states that it
adopted the trade mark HERITAGE in 1997 and has since put in extensive
commercial use in India and internationally. LTFL has been granted
th
registration of the label mark HERITAGE in Class 30 for rice on 20 April
2018 and the said registration is stated to be subsisting. The annual sales
figures of LTFL’s rice from the year 1997-98 till 2008-09 have been set out
in para 9.
4. HFIL is a company in Hyderabad and also in the business of
manufacturing and marketing goods under the trademark HERITAGE.
HFIL’s website, www.heritagefoods.co.in reveals that it is in the business of
dairy, retail, agriculture etc. Its retail outlet/stores are named as @ Fresh and
th
also known as ‘Heritage Fresh’. LTFL states that on 4 March 2011 it
received a legal notice from HFIL’s attorneys asking LTFL to seize and
desist from using the trade mark HERITAGE in different classes. In the said
legal notice, HFIL stated that it held registrations for the trade mark
th
HERITAGE Label under Registration No. 597154 dated 14 May 1993 for
variety of goods including rice. The case of LTFL is that HFIL’s trade mark
registration is liable to be rectified as it will cause confusion and deception in
the public and would lead to passing off of HFIL’s Defendant’s goods as
those of LTFL.
nd
5. On 2 May 2011, LTFL filed a petition before the Intellectual Property
Appellate Board (IPAB) against HFIL’s trade mark registration. LTFL states
CS(OS) No. 1188 of 2011 Page 2 of 7
that HFIL has been purchasing HERITAGE branded rice in 1 Kg pack from
LTFL’s distributor, M/s Newandram Manghanmal Agencies, Hyderabad
th
since 2006. According to LTFL, after receiving HFIL’s legal notice dated 4
March 2011, it found that HFIL had started selling rice under the trade mark
HERITAGE . Claiming that this is bound to cause confusion among the
consumers as to trade and origin of the product, the above suit was filed by
LTFL.
6. As regards the justification for LTFL approaching this Court, it is stated in
para 27 of the plaint as under:
“This Hon’ble Court has jurisdiction to entertain and try the present
th
suit as the Defendant in its legal notice dated 04 March 2011
addressed to the Plaintiff has admittedly stated that the goods of the
Defendant under the trade mark HERITAGE is sold or supplied
directly or indirectly throughout the length and breadth of the country,
which will include Delhi as well. Hence, the cause of action has arisen
within the territorial jurisdiction of this Hon’ble Court. This Hon’ble
Court has also jurisdiction under Section 134 of the Trade Marks Act,
1999.”
th
7. Summons in the suit was directed to be issued on 13 May 2011. There
was no interim order passed at that stage. After receipt of summons, HFIL
filed the present application seeking rejection of the plaint. Inter alia , it is
contended by HFIL that the present suit is only a counterblast to the legal
th
notice dated 4 March 2011 issued by it. It is stated that HFIL is the prior
user, common law owner and registered proprietor of the word/logo/name
HERITAGE especially with respect to food products since 1992. HFIL is a
registered proprietor of the mark HERITAGE for various products, including
CS(OS) No. 1188 of 2011 Page 3 of 7
rice, and therefore, in terms of Section 28(3) of the Trade Marks Act, 1999
(TM Act) no suit for infringement could be filed against HFIL. The present
suit could, therefore, be only for passing off. In that context, it is submitted
that no cause of action is shown to have arisen within the jurisdiction of the
Court. HFIL does not sell rice or cereal within the jurisdiction of this Court.
It is asserted that “......defendant has been selling HERITAGE brand rice
from its own outlets and the defendant does not have the outlet in Delhi”. It is
further stated that HFIL does not have any office in Delhi.
8. Ms. Pratibha M. Singh, learned counsel appearing for HFIL, submits that
th
merely because HFIL had, in its legal notice dated 4 March 2011, stated that
its products are available across length and breadth of the country, would not
by itself confer jurisdiction on this Court and that did not amount to any
admission that HFIL is selling its goods within the territorial jurisdiction of
this Court. Reliance is placed on the decisions in Haryana Milk Foods Ltd.
v. Chambel Dairy Products 98 (2002) DLT 359 and A.V.R. Engineers v.
Sharma Moulding Works 2008 (38) PTC 243 (Del.) .
9. Mr. J. Sai Deepak, learned counsel for LTFL, on the other hand, referred to
the decisions in Pfizer Enterprises Sare v. Cipla Ltd. 2009 (39) PTC 358
(Del) and Exphar SA v. Eupharma Laboratories Ltd. AIR 2004 SC 1682 to
urge that on HFIL’s own showing, as admitted by it in its legal notice dated
th
4 March 2011, it was selling HERITAGE branded rice throughout the
country and this included Delhi. Whether in fact HFIL was selling its
products in Delhi would be a matter for evidence. He submits that the Court
can only examine the plaint and the documents filed with it and not the
CS(OS) No. 1188 of 2011 Page 4 of 7
written statement of HFIL in which it has been denied that HFIL has an
office in Delhi or is selling its products in Delhi.
10. In the first place, it requires to be observed that the present suit is not
filed by LTFL Plaintiff as a qua timet action. In other words, the suit is not
based on an apprehension that HFIL is likely to sell its products in Delhi. The
assertion in para 19 of the plaint is that “.......the Plaintiff found that the
Defendant has now started selling rice under the trade mark HERITAGE ”.
The case of LTFL is based on the fact that a statement was made in the legal
th
notice dated 4 March 2011 of HFIL’s Attorneys that HFIL’s rice under the
trade mark HERITAGE is sold “directly or indirectly throughout the length
and breadth of the country”. LTFL has, in para 27 of the plaint, asserted that
the above statement would “include Delhi as well”.
11. There is no basis for the above assertion by LTFL. Nothing has been
placed on record to show that HFIL sold or is selling its rice in Delhi under
the trade mark HERITAGE either before the filing of the suit or even two
years thereafter, i.e. since the filing of the present suit. The admission/denial
of documents has since concluded. There was sufficient time for LTFL to
have filed documents to substantiate the above plea. However, it failed to do
so.
12. At this juncture, it must be pointed out that LTFL filed an application, IA
No. 18427 of 2013 under Order VII Rule 14 CPC, seeking leave of the Court
to place the additional documents on record. None of the documents sought
CS(OS) No. 1188 of 2011 Page 5 of 7
to be placed on record show that HFIL has been selling rice in Delhi either
before the institution of the suit or thereafter.
13. It must further be noted that admittedly HFIL holds registration for the
identical mark HERITAGE for the same goods and therefore in terms of
Section 28(3) TM Act no suit for infringement would lie against HFIL.
14. Since the suit is not based on an apprehension of infringement, it cannot
be construed as a qua timet action as was sought to be done by the learned
counsel for LTFL. Therefore, the decision in Pfizer Enterprises Sare v. Cipla
Ltd. is not helpful to the Plaintiff. Even in Exphar SA v. Eupharma
Laboratories Ltd. , the Supreme Court pointed out that the objection to
jurisdiction must proceed on the basis that the facts pleaded by the initiator of
the proceedings are true. In that case, the Division Bench had relied on the
contention in the written statement that the goods were sold within the
territorial jurisdiction of the Delhi High Court. Since the DB had gone
beyond the statements contained in the plaint, its decision was reversed. A
close examination of the facts in that case shows that the averments were that
the Defendants were trading, launching the product in the Indian market and
that they were carrying on business for profit in New Delhi within the
jurisdiction of the High Court. However, the averments in the plaint in the
present case proceeds only on the basis of the statement made in the cease
th
and desist notice dated 4 March 2011 issued by HFIL and nothing else. In
similar circumstances, in Haryana Milk Foods Ltd. v. Chambel Dairy
Products , it was observed that a mere statement in reply to a legal notice to
assert reputation and goodwill in whole of the country “........does not ipso
CS(OS) No. 1188 of 2011 Page 6 of 7
facto confer territorial jurisdiction on this Court”. In A.V.R. Engineers v.
Sharma Moulding Works , it was pointed out that the “.......mere
advertisement in the Trademarks Journal or preferring of application or even
the registration of a trademark at a particular place, will not and cannot
confer jurisdiction.....”.
15. Consequently, this Court is satisfied that LTFL has not been able to make
out a case for entertaining the suit for passing off or any of the consequential
incidental reliefs. LTFL has not been able to show that any part of the cause
of action for grant of such relief has arisen within the territorial jurisdiction
of this Court.
16. In the circumstances, the application is allowed and the plaint is returned
to the Plaintiff for presentation in the court of appropriate jurisdiction. The
suit and all pending applications are disposed of.
S. MURALIDHAR, J.
NOVEMBER 20, 2013
akg
CS(OS) No. 1188 of 2011 Page 7 of 7
CS (OS) 1188 of 2011 & IAs 7950 of 2011 (u/O 39 R. 1 & 2 CPC),
3388 of 2013 (u/O XXVI R. 2 CPC) & 18427 of 2013 (by Plaintiff
u/O VII R. 14 CPC)
LT FOODS LIMITED ..... Plaintiff
Through: Mr. J. Sai Deepak with
Mr. Julien George, Advocates.
versus
HERTIAGE FOODS (INDIA) LIMITED ..... Defendant
Through: Ms. Pratibha M. Singh with
Mr. Arjun Mukherjee, Advocates.
CORAM: JUSTICE S. MURALIDHAR
O R D E R
20.11.2013
IA No. 10244 of 2011 (by Defendant u/O VII R. 10 & 11 CPC)
1. This is an application by the Defendant, Heritage Foods (India) Limited
(‘HFIL’) under Order VII Rule 10 and 11 of the Code of Civil Procedure,
1908 (‘CPC’) seeking rejection of the plaint.
2. LT Foods Limited (LTFL) has filed the above suit seeking a permanent
injunction to restrain HFIL from infringing LTFL’s trademark HERITAGE
under Class 30 and also restraining HFIL from processing, selling, exporting,
marketing, advertising or offering for sale of rice or any other cereals under
the trade mark HERITAGE which may amount to passing off of HFIL’s
goods for those of LTFL.
CS(OS) No. 1188 of 2011 Page 1 of 7
3. The case of LTFL is that it sells rice under various well-known and
internationally famous brands, i.e., DAAWAT , DAWAT , HERITAGE ,
ORANGE , DEVAAYA , CHEF’S SECRET , SONA etc. LTFL states that it
adopted the trade mark HERITAGE in 1997 and has since put in extensive
commercial use in India and internationally. LTFL has been granted
th
registration of the label mark HERITAGE in Class 30 for rice on 20 April
2018 and the said registration is stated to be subsisting. The annual sales
figures of LTFL’s rice from the year 1997-98 till 2008-09 have been set out
in para 9.
4. HFIL is a company in Hyderabad and also in the business of
manufacturing and marketing goods under the trademark HERITAGE.
HFIL’s website, www.heritagefoods.co.in reveals that it is in the business of
dairy, retail, agriculture etc. Its retail outlet/stores are named as @ Fresh and
th
also known as ‘Heritage Fresh’. LTFL states that on 4 March 2011 it
received a legal notice from HFIL’s attorneys asking LTFL to seize and
desist from using the trade mark HERITAGE in different classes. In the said
legal notice, HFIL stated that it held registrations for the trade mark
th
HERITAGE Label under Registration No. 597154 dated 14 May 1993 for
variety of goods including rice. The case of LTFL is that HFIL’s trade mark
registration is liable to be rectified as it will cause confusion and deception in
the public and would lead to passing off of HFIL’s Defendant’s goods as
those of LTFL.
nd
5. On 2 May 2011, LTFL filed a petition before the Intellectual Property
Appellate Board (IPAB) against HFIL’s trade mark registration. LTFL states
CS(OS) No. 1188 of 2011 Page 2 of 7
that HFIL has been purchasing HERITAGE branded rice in 1 Kg pack from
LTFL’s distributor, M/s Newandram Manghanmal Agencies, Hyderabad
th
since 2006. According to LTFL, after receiving HFIL’s legal notice dated 4
March 2011, it found that HFIL had started selling rice under the trade mark
HERITAGE . Claiming that this is bound to cause confusion among the
consumers as to trade and origin of the product, the above suit was filed by
LTFL.
6. As regards the justification for LTFL approaching this Court, it is stated in
para 27 of the plaint as under:
“This Hon’ble Court has jurisdiction to entertain and try the present
th
suit as the Defendant in its legal notice dated 04 March 2011
addressed to the Plaintiff has admittedly stated that the goods of the
Defendant under the trade mark HERITAGE is sold or supplied
directly or indirectly throughout the length and breadth of the country,
which will include Delhi as well. Hence, the cause of action has arisen
within the territorial jurisdiction of this Hon’ble Court. This Hon’ble
Court has also jurisdiction under Section 134 of the Trade Marks Act,
1999.”
th
7. Summons in the suit was directed to be issued on 13 May 2011. There
was no interim order passed at that stage. After receipt of summons, HFIL
filed the present application seeking rejection of the plaint. Inter alia , it is
contended by HFIL that the present suit is only a counterblast to the legal
th
notice dated 4 March 2011 issued by it. It is stated that HFIL is the prior
user, common law owner and registered proprietor of the word/logo/name
HERITAGE especially with respect to food products since 1992. HFIL is a
registered proprietor of the mark HERITAGE for various products, including
CS(OS) No. 1188 of 2011 Page 3 of 7
rice, and therefore, in terms of Section 28(3) of the Trade Marks Act, 1999
(TM Act) no suit for infringement could be filed against HFIL. The present
suit could, therefore, be only for passing off. In that context, it is submitted
that no cause of action is shown to have arisen within the jurisdiction of the
Court. HFIL does not sell rice or cereal within the jurisdiction of this Court.
It is asserted that “......defendant has been selling HERITAGE brand rice
from its own outlets and the defendant does not have the outlet in Delhi”. It is
further stated that HFIL does not have any office in Delhi.
8. Ms. Pratibha M. Singh, learned counsel appearing for HFIL, submits that
th
merely because HFIL had, in its legal notice dated 4 March 2011, stated that
its products are available across length and breadth of the country, would not
by itself confer jurisdiction on this Court and that did not amount to any
admission that HFIL is selling its goods within the territorial jurisdiction of
this Court. Reliance is placed on the decisions in Haryana Milk Foods Ltd.
v. Chambel Dairy Products 98 (2002) DLT 359 and A.V.R. Engineers v.
Sharma Moulding Works 2008 (38) PTC 243 (Del.) .
9. Mr. J. Sai Deepak, learned counsel for LTFL, on the other hand, referred to
the decisions in Pfizer Enterprises Sare v. Cipla Ltd. 2009 (39) PTC 358
(Del) and Exphar SA v. Eupharma Laboratories Ltd. AIR 2004 SC 1682 to
urge that on HFIL’s own showing, as admitted by it in its legal notice dated
th
4 March 2011, it was selling HERITAGE branded rice throughout the
country and this included Delhi. Whether in fact HFIL was selling its
products in Delhi would be a matter for evidence. He submits that the Court
can only examine the plaint and the documents filed with it and not the
CS(OS) No. 1188 of 2011 Page 4 of 7
written statement of HFIL in which it has been denied that HFIL has an
office in Delhi or is selling its products in Delhi.
10. In the first place, it requires to be observed that the present suit is not
filed by LTFL Plaintiff as a qua timet action. In other words, the suit is not
based on an apprehension that HFIL is likely to sell its products in Delhi. The
assertion in para 19 of the plaint is that “.......the Plaintiff found that the
Defendant has now started selling rice under the trade mark HERITAGE ”.
The case of LTFL is based on the fact that a statement was made in the legal
th
notice dated 4 March 2011 of HFIL’s Attorneys that HFIL’s rice under the
trade mark HERITAGE is sold “directly or indirectly throughout the length
and breadth of the country”. LTFL has, in para 27 of the plaint, asserted that
the above statement would “include Delhi as well”.
11. There is no basis for the above assertion by LTFL. Nothing has been
placed on record to show that HFIL sold or is selling its rice in Delhi under
the trade mark HERITAGE either before the filing of the suit or even two
years thereafter, i.e. since the filing of the present suit. The admission/denial
of documents has since concluded. There was sufficient time for LTFL to
have filed documents to substantiate the above plea. However, it failed to do
so.
12. At this juncture, it must be pointed out that LTFL filed an application, IA
No. 18427 of 2013 under Order VII Rule 14 CPC, seeking leave of the Court
to place the additional documents on record. None of the documents sought
CS(OS) No. 1188 of 2011 Page 5 of 7
to be placed on record show that HFIL has been selling rice in Delhi either
before the institution of the suit or thereafter.
13. It must further be noted that admittedly HFIL holds registration for the
identical mark HERITAGE for the same goods and therefore in terms of
Section 28(3) TM Act no suit for infringement would lie against HFIL.
14. Since the suit is not based on an apprehension of infringement, it cannot
be construed as a qua timet action as was sought to be done by the learned
counsel for LTFL. Therefore, the decision in Pfizer Enterprises Sare v. Cipla
Ltd. is not helpful to the Plaintiff. Even in Exphar SA v. Eupharma
Laboratories Ltd. , the Supreme Court pointed out that the objection to
jurisdiction must proceed on the basis that the facts pleaded by the initiator of
the proceedings are true. In that case, the Division Bench had relied on the
contention in the written statement that the goods were sold within the
territorial jurisdiction of the Delhi High Court. Since the DB had gone
beyond the statements contained in the plaint, its decision was reversed. A
close examination of the facts in that case shows that the averments were that
the Defendants were trading, launching the product in the Indian market and
that they were carrying on business for profit in New Delhi within the
jurisdiction of the High Court. However, the averments in the plaint in the
present case proceeds only on the basis of the statement made in the cease
th
and desist notice dated 4 March 2011 issued by HFIL and nothing else. In
similar circumstances, in Haryana Milk Foods Ltd. v. Chambel Dairy
Products , it was observed that a mere statement in reply to a legal notice to
assert reputation and goodwill in whole of the country “........does not ipso
CS(OS) No. 1188 of 2011 Page 6 of 7
facto confer territorial jurisdiction on this Court”. In A.V.R. Engineers v.
Sharma Moulding Works , it was pointed out that the “.......mere
advertisement in the Trademarks Journal or preferring of application or even
the registration of a trademark at a particular place, will not and cannot
confer jurisdiction.....”.
15. Consequently, this Court is satisfied that LTFL has not been able to make
out a case for entertaining the suit for passing off or any of the consequential
incidental reliefs. LTFL has not been able to show that any part of the cause
of action for grant of such relief has arisen within the territorial jurisdiction
of this Court.
16. In the circumstances, the application is allowed and the plaint is returned
to the Plaintiff for presentation in the court of appropriate jurisdiction. The
suit and all pending applications are disposed of.
S. MURALIDHAR, J.
NOVEMBER 20, 2013
akg
CS(OS) No. 1188 of 2011 Page 7 of 7