Full Judgment Text
2022:DHC:3604-DB
IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment delivered on:12.09.2022
+ FAO(COMM) 78/2022
M/S MAAN PHARMACEUTICALS LTD. ..... Petitioner
versus
M/S MINDWAVE HEALTHCARE PVT. LTD. ..... Respondent
Advocates who appeared in this case:
For the Petitioner : Mr. Shailen Bhatia, Mr. Arnav Chatterjee
& Mr. Ashok Shukla, Advs.
For the Respondent : Mr. Sushant Mahapatra, Mr. Deepak Kumar
Mahapatra & Mr. Amit Singh Gulia, Advs.
CORAM
HON’BLE MR JUSTICE VIBHU BAKHRU
HON’BLE MR JUSTICE AMIT MAHAJAN
JUDGMENT
AMIT MAHAJAN, J
1. The appellant (hereinafter ‘ MAAN ’) has filed the present
appeal, aggrieved by an order dated 07.12.2021 (hereinafter ‘ the
impugned order ’) passed by the learned District Judge (Commercial
Court-02), Saket Courts - South District, New Delhi (hereinafter ‘ the
learned Trial Court ’), whereby the application filed by the appellant
(defendant) under Order VII Rules 10 and 11 of Code of Civil
Procedure, 1908 (hereinafter ‘ the CPC ’), was dismissed.
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2. The respondent, M/s Mindwave Healthcare Pvt. Ltd.
(hereinafter ‘ MINDWAVE ’), filed a suit against MAAN, inter alia ,
seeking permanent injunction restraining MAAN from using the
trademark “BUPROEX-N”. MINDWAVE claims to be the registered
owner of the said trademark and it alleged unauthorized use of the said
trademark by MAAN.
3. MINDWAVE, for the purpose of territorial jurisdiction of the
learned Trial Court at Saket, pleaded as under:
“19. That this Hon’ble Court has jurisdiction to entertain the
present suit arising out of the suit for infringement as Plaintiff is
registered owner of the Trademark and Plaintiff is carrying on the
business from the place within the territorial jurisdiction of this
Hon’ble Court having principle office for sale, distribution
&control within the territorial jurisdiction of this Hon’ble Court.
Defendant is all set to launch the product under impugned
trademark BUPROEX within the territorial jurisdiction of this
court and in fact, is negotiating various traders within the
jurisdiction of this Hon’ble Court as a direct challenge to Plaintiff.
The threat perceived by Plaintiff is also extended to the place
within the territorial jurisdiction of this court. In the case of
registered trademark section 134 of the Trademark Act. 1999,
specifically confers the jurisdiction at the place where Plaintiff
resides and carries on their business. Hence the Hon’ble Court has
the jurisdiction to entertain and try the instant suit as the present
suit is for infringement of the registered trademark of Plaintiff.”
(emphasis supplied)
4. However, MAAN took a preliminary objection and filed an
application under Order VII, Rules 10 and 11 read with Section 151 of
the CPC seeking return of the plaint due to lack of territorial
jurisdiction and the alleged non-compliance by MINDWAVE, in
terms of the directions/guidelines prescribed by this Court in the case
of Amrish Aggarwal v. M/s Venus Home Appliances Pvt. Ltd.: 2019
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SCC OnLine Del 9966 . MAAN pleaded that MINDWAVE only has a
sales office within the territorial jurisdiction of the learned Trial Court
at Saket and the registered office of MINDWAVE is located in
Mangol Puri Industrial area, which is outside the territorial jurisdiction
of the learned Trial Court at Saket.
5. MAAN contended that even though the registered office of
MINDWAVE has now been shifted to Neb Sarai, which is within the
territorial jurisdiction of the learned Trial Court at Saket, however, at
the material time when the suit was filed, the learned Trial Court at
Saket had no territorial jurisdiction. MAAN further contended that a
suit for injunction on the basis of mere apprehension cannot be
maintained being without cause.
6. The learned Trial Court, after considering the rival contentions,
dismissed the said application by the impugned order, which led to
filing of the present appeal.
7. The learned Trial Court had held as under:
“21. Indisputably, the plaintiff company had office at Neb Sarai
at the time of filing of the suit, so if a company has a sales office
even if not a registered office, it would be difficult to dispute that
plaintiff company carried on its business at that place as well. In
this view of the matter support can be obtained from L'oreal Vs.
Dushyant Shah, the decision of our High Court reported as
MANU/DE/4389/2011. Quia Timet action is when plaintiff
apprehends infringement even if defendant had not commenced
operation, the right of the plaintiff to maintain cause of action on
account of apprehension of infringement of its trademark is well
known. In Saurav Agro' case, referred above by the plaintiff, in
para 77, Pfizer products Inc. Vs. Rajesh Chopra & Ors was
referred wherein also it was observed that the threat of selling the
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offending goods in Delhi would confirm the jurisdiction in the
court in Delhi to entertain a suit claiming an injunction in respect
thereof and in so far as Order VII Rule 10 is concerned, assuming
that whatever is stated in the plaint is correct, one would have to
assume that the threat of the defendant to sell and offer for sale the
offending goods in Delhi was also correct. Therefore, if the threat
exists, then the court certainly has jurisdiction to entertain the
present suit. The legal position is well settled that 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 and defence being immaterial, cannot be gone into at this
stage.
22. As regards not filing the Legal Proceeding Certificate,
which inadvertently skipped the notice of this court while hearing
the plaintiff at the outset consequences of not filing the same would
not be rejection of the plaint as the plaintiff can only be asked to
comply with the directions before the next date and/or case
management hearing stage which has been undertaken by the
plaintiff. There is no dispute that the alleged suppressed facts must
be material one in the sense that had it not been suppressed, it
would affect the merits of the case, which rule has been evolved out
of the need of the court to deter a litigant from abusing the process
of court by deceiving. In ITC Limited Vs. Green India Rice Mill &
Exporter Pvt. Ltd, it was observed that even if application was
filed, mere pendency of application for rectification would not be a
ground to hold that the person who is having his trademark
registered has no right to seek ad-interim injunction.”
8. We have heard the arguments advanced on behalf of both the
parties and find no infirmity with the impugned order passed by the
learned Trial Court.
9. It is not disputed by MAAN that MINDWAVE had a godown
and was carrying on the business from its office at Neb Sarai, which is
located within the territorial jurisdiction of the learned Trial Court at
Saket. The contention raised by the learned counsel appearing for
MAAN that since the registered office of MINDWAVE was not at
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Neb Sarai, but only the sales office, would dis-entitle the Trial Court
at Saket to have territorial jurisdiction, is unmerited.
10. The issue of territorial jurisdiction in relation to infringement of
trademarks is governed by Section 134(2) of the Trade Marks Act,
1999 (hereafter ‘ the Trade Marks Act ’) read with Section 20 of the
CPC. Section 134 of the Trade Marks Act is relevant and reads as
under:
“134. Suit for infringement, etc., to be instituted before District
Court.
(1) No suit -
(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.”
11. In relation to the suit for infringement of a trademark, the law
provides for an additional forum in terms of Section 134 of the Trade
Marks Act, on the basis of which a suit can be filed at a place “ 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
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them, actually and voluntarily resides or carries on business or
personally works for gain ”. MINDWAVE has apprehended the launch
of the infringing product within the territorial jurisdiction of the
learned Trial Court at Saket.
12. Section 20(c) of the CPC provides that every suit shall be
instituted in a court within the local limits of whose jurisdiction the
cause of action, wholly or in part, arises.
13. MINDWAVE, in the present case, has not only pleaded that it is
carrying on its business from its principal office for sale, distribution
and control, which is within the territorial jurisdiction of the learned
Trial Court at Saket, but it has also apprehended that MAAN would
launch the infringing product within the territorial jurisdiction of the
learned Trial Court and is, further, negotiating with various traders
within the jurisdiction of the Trial Court at Saket.
14. A Coordinate Bench of this Court in Ultra Home Construction
Pvt. Ltd. v. Purushottam Kumar Chaubey & Ors.: 2016 SCC Online
Del 376, held as under:
“14. It is evident from the above observations that the
interpretation given to the expression “carries on business” in the
context of a defendant under section 20 of the Code has also been
employed in the context of a plaintiff under the said sections 134(2)
and 62(2). Thus, in addition to the places where suits could be filed
under section 20 of the Code, the plaintiff can also institute a suit
under the Trade Marks Act, 1999 and the Copyright Act, 1957, as the
case may be, by taking advantage of the provisions of section 134(2)
or section 62(2), respectively. Both the latter provisions are in pari
materia. Under these provisions four situations can be contemplated
in the context of the plaintiff being a corporation (which includes a
company). First of all, is the case where the plaintiff has a sole office.
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In such a case, even if the cause of action has arisen at a different
place, the plaintiff can institute a suit at the place of the sole office.
Next is the case where the plaintiff has a principal office at one place
and a subordinate or branch office at another place and the cause of
action has arisen at the place of the principal office. In such a case,
the plaintiff may sue at the place of the principal office but cannot sue
at the place of the subordinate office. The third case is where the
plaintiff has a principal office at one place and the cause of action has
arisen at the place where its subordinate office is located. In this
eventuality, the plaintiff would be deemed to carry on business at the
place of his subordinate office and not at the place of the principal
office. Thus, the plaintiff could sue at the place of the subordinate
office and cannot sue (under the scheme of the provisions of section
134(2) and 62(2)) at the place of the principal office. The fourth case
is where the cause of action neither arises at the place of the principal
office nor at the place of the subordinate office but at some other
place. In this case, the plaintiff would be deemed to carry on business
at the place of its principal office and not at the place of the
subordinate office. And, consequently, it could institute a suit at the
place of its principal office but not at the place of its subordinate
office. All these four cases are set out in the table below for greater
clarity:
| S. | Place of | Place of Plaintiff's | Place | Place where |
|---|---|---|---|---|
| No. | Plaintiff's | Subordinate/Branch | where | Plaintiff can |
| Principal Office | Office | cause of | additionally sue | |
| (Sole office in | action | under section | ||
| s. no. 1) | arose | 134(2) and | ||
| section 62(2) | ||||
| 1 | A | -- | C | A |
| 2 | A | B | A | A |
| 3 | A | B | B | B |
| 4 | A | B | C | A |
15. Thus, even if it is to be held that MINDWAVE only has a
subordinate office within the territorial jurisdiction of the learned Trial
Court, it cannot be disputed that MINDWAVE has also based its cause
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of action by virtue of MAAN being in the process of launching the
infringing product within the territorial Jurisdiction of the learned
Trial Court at Saket.
16. It is settled law that while considering an application under
Order VII Rule 10 of the CPC, at the initial stage, statements made in
the plaint are to be accepted as correct. For the purpose of deciding an
application under Order VII Rule 10 of the CPC, for return of plaint
on the ground of lack of territorial jurisdiction, it has been held that
only the averments in the plaint are to be seen. In M/s. RSPL Limited
v. Mukesh Sharma & Anr.: 2016 SCC OnLine Del 4285, a
Coordinate Bench of this Court held as under:
“27. Coming back to the facts of the present case, the
plaintiff/appellant in paragraph 36 set out the nature of the
cause of action, namely, the defendants/respondents were
engaged in providing services under the impugned trade name
‘GHARI TRADEMARK COMPANY’. In paragraph 37 of the
plaint, it has been averred, first of all, that this Court has the
territorial jurisdiction to try and adjudicate the present suit. But,
this by itself, would not be sufficient because merely quoting the
words of a section or the ingredients of a provision like the
chanting of a mantra would not amount to stating material facts
as noted by the Supreme Court in Hari Shanker Jain (supra).
The material facts would, inter alia, have to include positive
statement of facts. In the present case, paragraph 37 of the
plaint contains the positive statement of fact that the defendants
are committing the impugned acts within the jurisdiction of this
Court by ‘conducting, soliciting, rendering the impugned
services under the impugned trade name’. Further statements
are made in the very same paragraph that the plaintiff has its
corporate office in Delhi and carries out its business activity in
Delhi under its trade mark/label through its dealers/distributors
located in Delhi. A specific averment has also been made that
the plaintiff's goodwill and reputation is being tarnished by the
alleged activities of the defendants, particularly in North-East
Delhi as also in other parts of the country and that the
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plaintiff/appellant's proprietary rights are being prejudicially
affected in the Delhi area due to the said activities. While
considering an application under Order 7 Rule 10 CPC, these
statements would have to be taken as correct. This would mean
that this Court would have jurisdiction to try and adjudicate the
present suit by virtue of Section 134(2) of the Trade Marks Act,
1999 read with Section 20 CPC. The material fact that has been
pleaded by the plaintiff is that the defendants/respondents are
conducting, soliciting, rendering the impugned services under
the trade name - GHARI TRADEMARK COMPANY - within the
jurisdiction of this Court. In case the defendants/respondents
deny this averment (as they have done in their written statement
but, which cannot be looked into at the stage of Order 7 Rule 10
CPC), the issue would arise as to whether the
respondents/defendants are conducting, soliciting, rendering the
impugned services under the trade name-GHARI TRADEMARK
COMPANY-within the jurisdiction of this Court? Obviously, the
onus of proof would lie on the appellant/plaintiff and at the
stage of trial, evidence would have to be placed to substantiate
this plea. But, at this stage, in our view, it is not necessary as
Lord Denman, C.J. in Williams v. Wilcox (supra), to set out the
subordinate facts which are the means of proving the material
fact or the evidence to sustain the allegation contained in the
material fact. We, therefore, do not agree with the view taken by
the learned Single Judge that the plaint is bereft of any
particulars with regard to territorial jurisdiction. We may
observe that the learned Single Judge has also looked at the
written statement and even at the replication in the course of
arriving at his decision. This, in the context of an Order 7 Rule
10 CPC application, cannot be done as already pointed out by
us above. Taking the objection of territorial jurisdiction raised
in the Order 7 Rule 10 CPC application, by way of a demurrer,
as it must, the facts pleaded by the appellant/plaintiff must be
taken to be true. Therefore, if we take the statement of the
appellant/plaintiff in paragraph 37 to the effect that the
defendants/respondents are committing the impugned acts
within the jurisdiction of this Court by conducting, soliciting,
rendering the impugned services under the impugned trade
name to be correct, then, it follows that this Court would have to
proceed with the trial of the suit and cannot return the plaint
under Order 7 Rule 10 CPC.”
(Emphasis supplied)
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17. In Boston Scientific International B.V. v. Metro Hospital :
2007 SCC OnLine Del 6 , a Single Bench of this Court held as under:-
“6. Having obtained unconditional leave to defend the suit,
the defendant has filed the present application under Order 7
Rule 10 for return of the plaint on the ground of lack of
territorial jurisdiction. Now, on the one hand we have an order
of this Court granting unconditional leave to defend on the
ground that a ‘triable issue’ arises qua the plea of territorial
jurisdiction and, on the other, we have the present application
wherein the defendant seeks return of plaint without the issue
being tried. This, to me, seems a somewhat incongruous
situation. A ‘triable issue’ means that the same requires to be
decided after leading of evidence. Whereas, the parameters of
disposing of an application under Order 7 Rule 10, CPC, at
the initial stage without going into evidence, requires the
Court to only look at the averments contained in the plaint.
xxxx xxxx xxxx
8. It is, therefore, clear that for the purposes of this
application only the plaint and the documents in support of the
plaint need be looked into. The pleas of the defendant can only
be examined at the stage of trial and for which purpose it
would be necessary to lead evidence. It must be reiterated that
in deciding this application I am not required to decide the
question of territorial jurisdiction as if it were a triable issue
and I was to give my decision on the basis of evidence led by
the parties. I am only required to examine the plaint and,
perhaps, the documents accompanying it to arrive at a
decision as whether this Court has or does not have territorial
jurisdiction to entertain the suit.”
18. The Hon’ble Apex Court in the case of Exphar Sa v.
Eupharma Laboratories Ltd.: (2004) 3 SCC 688 , held as under:-
“9. Besides, when an objection to jurisdiction is raised by
way of demurrer and not at the trial, the objection must
proceed on the basis that the facts as pleaded by the initiator
of the impugned proceedings are true. The submission in order
to succeed must show that granted those facts the court does
not have jurisdiction as a matter of law. In rejecting a plaint
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| on the ground of jurisdiction, the Division Bench should have | ||
|---|---|---|
| taken the allegations contained in the plaint to be correct. | ||
| ……………. “ | ||
business within the territorial jurisdiction of the learned Trial Court at
Saket from its office at Neb Sarai. In paragraph 19 of the plaint, it has
specifically been pleaded that “ Plaintiff is carrying on the business
from the place within the territorial jurisdiction of this Hon’ble Court
having principle office for sale, distribution &control within the
territorial jurisdiction of this Hon’ble Court. Defendant is all set to
launch the product under impugned trademark BUPROEX within the
territorial jurisdiction of this court and in fact, is negotiating various
traders within the jurisdiction of this Hon’ble Court as a direct
challenge to Plaintiff.”
20. The aforesaid statement, in terms of the law discussed above,
has to be accepted as correct, which would give the territorial
jurisdiction to the learned Trial Court at Saket for the purposes of
entertaining the suit.
21. It, therefore, cannot be said that the plaint has failed to disclose
that the cause of action is within the territorial jurisdiction of the
learned Trial Court at Saket.
22. It is also a matter of fact that during the course of the
proceedings, MINDWAVE has also shifted its registered office to the
place where its principal office for sale, distribution and control is
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located, which is admittedly within the territorial jurisdiction of the
learned Trial Court at Saket.
23. MAAN has not been able to point out the prejudice being
caused and the purpose for the plaint to be returned since the said
plaint would be presented again before the same court as the registered
office has been shifted to the place, where the principal sales office is
located.
24. The learned Trial Court, therefore, has rightly rejected the
application preferred by MAAN under Order VII Rule 10 of the CPC
seeking return of the plaint on the ground of lack of territorial
jurisdiction.
25. Next, we deal with the issue that has been raised by MAAN
seeking rejection of the plaint on the ground that mere apprehension of
sale of goods with the impugned trademark in the future, will not
amount to cause of action.
26. MINDWAVE (the plaintiff), in its suit, has pleaded that MAAN
(the defendant) is all set to launch the product under the impugned
trademark ‘BUPROEX’, within the territorial jurisdiction of the
learned Trial Court and is also negotiating with various traders within
the jurisdiction of the court. As noted above, for the purpose of
deciding an application under Order VII Rule 11 of the CPC, only the
averment in the plaint and the documents filed with the plaint are to be
considered and the said documents are believed to be correct for the
purpose of ascertaining whether the cause of action exists.
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27. The Hon’ble Apex Court in Liverpool & London S.P. & I
Assn. Ltd. v. M.V. Sea Success I : (2004) 9 SCC 512 , held as under:
“139. Whether a plaint discloses a cause of action or
not is essentially a question of fact. But whether it does
or does not must be found out from reading the plaint
itself. For the said purpose the averments made in the
plaint in their entirety must be held to be correct. The
test is as to whether if the averments made in the plaint
are taken to be correct in their entirety, a decree would
be passed.”
28. In D. Ramachandran v. R.V. Janakiraman : (1999) 3 SCC 267,
the Hon’ble Apex Court held that:
| “8. We do not consider it necessary to refer in detail to | ||
|---|---|---|
| any part of the reasoning in the judgment; instead, we | ||
| proceed to consider the arguments advanced before us on | ||
| the basis of the pleadings contained in the election | ||
| petition. It is well settled that in all cases of preliminary | ||
| objection, the test is to see whether any of the reliefs | ||
| prayed for could be granted to the appellant if the | ||
| averments made in the petition are proved to be true. For | ||
| the purpose of considering a preliminary objection, the | ||
| averments in the petition should be assumed to be true | ||
| and the court has to find out whether those averments | ||
| disclose a cause of action or a triable issue as such. The | ||
| court cannot probe into the facts on the basis of the | ||
| controversy raised in the counter.” | ||
is commonly known as quia timet suit, which are latin words and in
legal terminology, defined as action by which a person is entitled to
obtain an injunction and restrain a threatened act, which if done,
would cause a substantial damage. The person, who is under a threat
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of infringement, is not remediless and as has been held by various
courts, can maintain a suit for injunction. There is no doubt that such
apprehension or threat has to be genuine, and not a figment of the
plaintiff’s imagination.
30. The Hon’ble Apex Court in Kuldip Singh v. Subhash Chander
Jain : (2000) 4 SCC 50 , held 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 or
anticipated mischief and not to undo a wrong or mischief
when it has already been done. In such an action the
court, if convinced, may interfere by appointment of
receiver or by directing security to be furnished or by
issuing an injunction or any other remedial process.
In Fletcher v. Bealey [(1885) 28 Ch D 688: 54 LJ Ch
424: 52 LT 541], Mr Justice Pearson explained the law
as to actions quia timet as follows:
“There are at least two necessary ingredients for
a quia timet action. There must, if no actual damage is
proved, be proof of imminent danger, and there must also
be proof that the apprehended damage will, if it comes,
be very substantial. I should almost say it must be proved
that it will be irreparable, because, if the danger is not
proved to be so imminent that no one can doubt that, if
the remedy is delayed the damage will be suffered, I think
it must be shown that, if the damage does occur at any
time, it will come in such a way and under such
circumstances that it will be impossible for the plaintiff to
protect himself against it if relief is denied to him in
a quia timet action”.”
31. In the case of Mars Incorporated v. Kumar Krishna Mukerjee:
2003 (26) PTC 60 (Del) , a Single Bench of this Court held as under:
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“To expect the aggrieved party to wait and watch for
the opening of business or manufacturing or sale of
goods under the apprehended infringement of trade mark
is too much. A stitch in time always saves nine and that is
what is the essence of Quia Timet Action…
…It is immaterial whether or not there is a real or
tangible possibility of starting a business. Such a threat
will even loom large over the head of the plaintiff and
therefore entitle him to resort to Quia Timet Action, as
the intentions are bad, designs are dubious. There is no
other object of such a defendant than to hoard the trade
mark and black mail the plaintiff in order to use it in
future. Thus, in both the cases, the action and proposed
activities are manifestly mala fide and calculated to
deceive the public or would be purchasers as to the
connection of the defendants with the plaintiff.”
32. In view of the settled law as discussed above, there is no merit
in the objection taken by MAAN that an apprehension to sell the
goods with impugned trademark in future will not confer a cause of
action in favour of MINDWAVE to file the present suit.
33. In the present case, MINDWAVE has categorically pleaded its
apprehension that the product under the impugned trademark
‘BUPROX’ is all set to be launched by MAAN within the territorial
jurisdiction of the learned Trial Court and MAAN is also negotiating
with various traders. It is also a matter of fact that the Local
Commissioner appointed by the learned Trial Court also refers to an
email dated 05.05.2021 in his report dated 19.07.2021, whereby a
picture of the infringing trademark “ was found to be made on
cartons ”, in the name of MAAN.
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34. The contention of the learned counsel for MAAN with regard to
non-filing of the Legal Proceedings Certificate, has been rightly dealt
with by the learned Trial Court. The said plea has been taken on the
strength of the decision passed by a Single Bench of this Court in the
case of Amrish Aggarwal v. M/s Venus Home Appliances Pvt. Ltd.
( supra ). In the said case, this Court had passed certain directions in
order to deter frivolous litigations and for the purpose that the time of
the courts is not wasted due to non-filing of relevant documents. It
was felt that a Legal Proceedings Certificate is an important
document, which should be placed before the Court at the time of
deciding preliminary applications. It is to be noted that there is no
such requirement in the statute that a suit for infringement will not be
entertained, if not accompanied by a Legal Proceedings Certificate.
35. In the present case, it appears that MAAN had filed a
rectification petition on 31.05.2021 against the trademark registered in
favour of MINDWAVE, which was prior to the date of filing of the
suit on 12.07.2021. It is settled law that filing of a rectification petition
does not take away the right of a registered proprietor to injunct the
infringement of its trademark. The pendency of the rectification does
not create any bar for grant of interim injunction. It is pertinent to note
that the said fact was subsequently brought to the knowledge of the
learned Trial Court before the impugned order was passed.
36. MINDWAVE has admitted that it had inadvertently failed to
file the said certificate and the reasons have specifically been
mentioned in the reply filed by it. MINDWAVE had also specifically
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pleaded that at the time of filing of the suit, rectification was not
served upon it.
37. The learned Trial Court has rightly held that the said fact, even
otherwise, is not material one and of such character that would affect
the merits of the case.
38. Though a Legal Proceedings Certificate is an important
document, which should be placed before the court at the time of
deciding preliminary applications, the same, however, will not take
away the statutory right of a plaintiff to seek injunction, which it is
otherwise entitled to.
39. In our opinion, mere non-filing of such a document is not a
concealment of such material nature so as to disentitle the plaintiff to
file a suit seeking an injunction, wherein it apprehends infringement.
Moreover, no prejudice is caused to MAAN because of non-filing of
the said document.
40. For the above stated reasons, we find no infirmity in the order
passed by the learned Trial Court. The appeal is, therefore, dismissed.
AMIT MAHAJAN, J
VIBHU BAKHRU, J
SEPTEMBER 12, 2022
SS
FAO(COMM) 78/2022 Page 17 of 17