Full Judgment Text
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ FAO 480/2011
% Date of Decision: July 1, 2013
PIONEER PRODUCTS ..... Appellant
Through : Mr.Suhail Dutt, Sr.Adv. with
Mr.N.K.Kantawala, Mr.Praver
Sharma, Mr.Satyender Chahar and
Mr.Ritesh Mehra, Advs.
versus
ALBERTO CULVER INTERNATIONAL INC. ..... Respondent
Through : Mr.S.K.Bansal with Mr.Vikas
Khera, Advs.
CORAM:
HON'BLE MS. JUSTICE VEENA BIRBAL
VEENA BIRBAL, J.
*
1. Present appeal has been preferred by the appellant against the order
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dated 1 October, 2011 passed by the learned Additional District Judge, New
Delhi whereby application of the respondent under Order 39 Rule 1 & 2
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CPC was allowed and the interim order dated 9 September, 2009 has been
confirmed.
2. Appellant herein is defendant no.1 before the learned trial court.
Respondent herein is plaintiff before the learned trial court. The
FAO 480/2011 Page 1 of 19
respondent/plaintiff has filed a suit under Section 134 and 135 of the Trade
Marks Act, 1999 (hereinafter referred to as the Act) against
appellant/defendnant no.1 and one R.P. General Stores i.e. defendnat no.2
before the trial court for the relief of permanent injunction retraining the
appellant/defendant no.1 from using in any manner including by way of
manufacturing, sale trade etc. of the impugned marks VOV, VO5 or similar
or identical marks in relation to cosmetics, toiletries and personal care
products such as hair sprays, shampoos, personal deodorants, hair tonic, etc.
Prayer is also made for damages and/or rendition of accounts. Along with
the aforesaid suit an application under Order 39 Rules 1 and 2 was also filed
praying for the grant of ad interim injunction during the pendency of the suit
restraining the appellant/defendant no.1 from manufacturing, selling,
offering for sale, advertising in India and exporting their products under the
Trase Mark VOV which is phonetically similar to the
respondent‟s/plaintiff‟s Trade Mark VO5 in relation to aforesaid products.
The respondent/plaintiff is engaged in the business of manufacture and
distribution of wide range of cosmetic products such as hair sprays,
shampoos, deodorants, hair and scalp conditioners, hair oil, hair tonic, and
other allied products etc. It is alleged that in the year 1955,
respondent/plaintiff through its predecessors adopted and started using the
Trade Marks VO5 and V05 along with letters „ALBERTO‟. With the
passage of time, respondent/plaintiff also started using the Trade Mark VO
in the course of trade in respect of its goods. The Trade Mark VO, VO5 is
an essential, material and distinguishing feature of the said Trade Mark
Label. As per respondent/plaintiff, it has acquired worldwide reputation.
FAO 480/2011 Page 2 of 19
The respondent‟s/plaintiff‟s Trade Mark ALBERTO VO5, VO5 Label and
V05 are duly registered in India under the Trade Marks Act, 1999. The dates
of registration are given in the plaint. It is alleged that in view of registration
of its Trade Mark, respondent/plaintiff has exclusive rights thereto within the
meaning of the aforesaid Act. The art works involved in the aforesaid Trade
Mark/Label are original artistic work and the respondent/plaintiff holds copy
right therein. It is alleged that art work involved in the respondent/plaintiff‟s
Trade Mark/Label VO5 along with the word ALBERTO is duly registered
under the Indian Copyright Act, 1957. It is alleged that respondent/plaintiff
has already built up a globally valuable trade under the aforesaid Trade
Mark/Label and has conducted handsome business thereunder running into
billions of dollars worldwide. The respondent/plaintiff has spent millions of
dollars in advertising its products. It is alleged that respondent‟s goods are
known, recognized, demanded, sold and traded world over with reference to
the said Trade Mark/Label. It is alleged that respondent‟s/plaintiff‟s goods
under the aforesaid Trade mark/Label are available in Delhi including New
Delhi and other parts of the country through its authorized importer and
distributor M/s J.L.Morison (India) Ltd., “Crystal”, 79, Annie Besant Road,
Worli, Mumbai-400018 also at 404, Rohit House 3 Tolstoy Marg, New
Delhi-1100001.
3. It is alleged that the respondent/plaintiff is a global leader in the
aforesaid goods and business. M/s Alberto Culver Company is the
predecessor-in-title of the respondent/plaintiff. The said predecessor has
assigned all rights, titles and interests in the aforesaid trade marks/
copyrights along with the goodwill to the respondent/plaintiff, vide a Deed
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of Assignment dated 14.04.2006. It is alleged that respondent/plaintiff is one
of the Group Companies of M/s Alberto Culver Company.
4. The respondent/plaintiff has alleged that appellant/defendant No.1 has
adopted an identical/deceptively similar trade mark VOV (which is a
colourable imitation of the respondent‟s/plaintiff‟s mark since „5‟ is written
in Roman numerals „V‟) in relation to the same/similar goods being
cosmetics including nail polish, lipstick, eye liner, compact, liquid kumkum
and other beauty products etc. It is alleged that appellant/defendant no.1
had filed an application for registration of trade mark VOV which was
abandoned. The defendant no.2 i.e.R.P. General Stores is the
dealer/distributor of the appellant/defendant no.1 in Delhi including the
markets of South Delhi. The trade mark VOV being used by the
appellant/defendant no.1 in relation to their goods and business is identical
with and deceptively similar to respondent‟s/plaintiff‟s said “VO, VO5 and
VO5 with ALBERTO” trade marks in each and every respect including
phonetically, structurally, conceptually and in its essential features. It is
alleged that appellant/defendant no.1 by their impugned adoption and use of
the trade mark VOV amounts to violating respondent‟s/plaintiff‟s trade mark
and amounts to passing off their goods as that of respondent/plaintiff.
5. The case of the appellant/defendant no.1 is that respondent/plaintiff
has wrongly invoked the territorial jurisdiction to entertain and try the
present suit against appellant/defendant no.1. There is no cause of action in
favour of respondent/plaintiff against appellant/defendant no.1. That the
respondent/plaintiff has never used nor advertised the mark ALBERTO VO5
or VO5 in India at any point of time. It is alleged that appellant/defendant
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no.1 is carrying on its lawful business as manufacturer and merchant of
cosmetics under the mark V O V (label) in a specific artistic way and the
three letters V O V written within rectangles is altogether different and
distinct from that of the mark ALBERTO VO5 of respondent /plaintiff. The
appellant/defendant no.1 honestly and bona fidely adopted the mark V O V
for kumkum only in the year 1987 and in the year 2002 added more cosmetic
products under the mark VOV and has used the same openly and
continuously. It is also alleged that there is no document on record to show
that user/reputation of the mark ALBERTO VO5 in India. Respondent
/plaintiff from time to time made statements before the Registrar of Trade
Marks that the impugned mark is “proposed to be used”. It is stated that
even in the matter of latest application no.1349772; filed by respondent
/plaintiff on 8.4.2005 for the mark ALBERTO VO5 in India, the user shown
is `proposed to be used‟ which is clear indicator of the fact that even in
2005, respondent no.1/plaintiff had an intention to use the mark ALBERTO
VO5 whereas appellant/defendant no.1 is using the mark V O V since 1987
for kumkum and since 2002 for other cosmetics. It is also stated that
conduct of respondent/plaintiff shows that respondent/plaintiff is interested
only to harass the appellant/defendant no.1 in one way or the other. It is
stated that respondent /plaintiff has filed number of cases, the details of those
are given in reply dated 12.8.2011 of appellant/defendant. It is alleged that
the same shows conduct of respondent/plaintiff. It is also alleged that
respondent no.1/plaintiff has never used or advertised the mark ALBERTO
VO5 in India at any point of time. It is further alleged that
respondent/plaintiff has filed a copy of the alleged distribution agreement
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dated 09.02.2009 with J.L.Morison (India) Ltd to show that J.L.Morison
(India) is an exclusive distributor in Delhi. It is alleged that apart from the
copy of agreement dated 9.2.2009, no other documents have been filed to
prove that the alleged distributor is an „exclusive distributor‟ or has at any
point of time distributed the goods of respondent no.1/plaintiff under the
mark ALBERTO VO5 in Delhi or within the jurisdiction of this court. It is
their further stand that the goods of respondent no.1/plaintiff under the mark
ALBERTO VO5 have never been sold in any part of India or within the
jurisdiction of this court. It is further alleged that J.L. Morison (India)
Limited is not an exclusive distributor of the respondent‟s/plaintiff‟s goods
under the mark „ALBERTO VO5‟. It is alleged that the so called distributor
has never distributed the goods of the respondent‟s/plaintiff‟s in India under
the mark ALBERTO VO5 at any time. It is alleged that as per
respondent/plaintiff the distributorship was applied only on 09.02.2009
whereas appellant/defendant is using the mark V O V for kumkum in 1987
and in 2002 for other cosmetic products. It is further alleged that
labels/packaging/artworks of appellant/defendant no.1 for the mark V O V
are different from that of the labels/packaging/artworks of
respondent/plaintiff impugned mark ALBERTO VO5 which is altogether
different and distinct from the mark V O V of appellant/defendant no.1.
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6. Vide impugned order dated 1 October, 2011, the learned trial court
has allowed the application of the respondent/plaintiff under Order 39 Rule 1
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and 2 CPC and has confirmed the order dated 9 September, 2010 thereby
allowing the application under Order 39 Rule 1 and 2 CPC.
FAO 480/2011 Page 6 of 19
7. At this stage, it may be necessary to refer to the history of litigation
between the parties to the present case.
8. Respondent/plaintiff had earlier filed CS(OS) no.672/2004 on the
original side of this court. In that case, appellant/defendant herein was made
the sole defendant. After pleadings were completed, issues were framed.
One of the issues framed, relates to the territorial jurisdiction of this court.
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9. The learned Single Judge of this court vide order dated 27 August,
2010 treated the issue relating to territorial jurisdiction as a preliminary issue
and held that this court has no jurisdiction to try the suit and ordered that suit
be returned to the respondent/plaintiff to be filed before the Principal Civil
Judge at Thane with the following observation:-
“8. .…………………………………………………………..
.………………………………………………………………....
…………………………………………………………………..
…………………………………………………………………..
In Dhodha House case, the Supreme Court held that the mere
fact that the goods are available in a particular place – in that
instance in Delhi or that they were sold in different area, would
not itself mean that the plaintiff carried on any business in
Delhi. This Court is bound by that ruling. The materials on
record, particularly the pleadings, nowhere point to the plaintiff
having any office in Delhi or even averring that it appointed a
distributor whose office are located within the jurisdiction of
the Court nor is there any averment whosoever vague disclosing
that the plaintiff has any business either substantially or
otherwise in the form of turn over from Delhi or for that matter
in India. In these circumstances, this Court is satisfied that the
suit so far as the infringement is concerned based upon the
application of Section-134, is not maintainable.
9. So far as question as to whether any part of the cause of
action has arisen in the jurisdiction of this Court is concerned,
FAO 480/2011 Page 7 of 19
the documents available in the form of about 557 pages filed
along with the list of documents would reveal that there is no
material establishing that the defendant sold their products
within the jurisdiction of this Court or anywhere in Delhi. No
doubt, the plaintiff has a right to adduce the evidence in the trial
to establish the defendant‟s presence, but the Court is conscious
of the fact that after issues were framed, parties were provided
with the opportunity to produce further or additional
documents. It was not pointed out that such additional
documents were ever filed all this while after the issues were
framed more than 4½ years ago. In any event, no such
application for producing additional documents to establish the
defendant‟s presence within the territorial limits of this Court‟s
jurisdiction was ever moved. It is also settled that once issues
are struck and the parties are required to lead evidence, there is
no question of the Court entertaining the application for
adducing further documentary evidence during the trial.
10. Having regard to this, it is apparent that the Court now
has to consider the effect of the two documents placed on the
record by the defendant. While the defendant‟s arguments that
the Court‟s enquiry is to be confined to while considering the
plea about jurisdiction or the lack of it in the averments in the
suit and the list of documents filed along with it as correct, at
the same time, the Court cannot be oblivious of the materials
which are on the record particularly after admission/denial. The
defendant here has placed two invoices on the record. At best,
they only indicate that some goods were dispatched to Delhi.
That by itself is sufficient, in the opinion of the Court, to hold
that the defendant is either trading in Delhi or cause of action of
such nature is occurred, occasioning the plaintiff to file the
present suit. The two transactions at best would amount to a
flash in the pan, which, in no way, establish that the dispute can
be entertained as is sought to be urged by the plaintiff. In
Sector Twenty One Owner’s Welfare Association v. Air Force
Naval Housing Board 65 (1997) DLT 81, it was held that trivial
or insignificant part of the cause of action arising at a particular
FAO 480/2011 Page 8 of 19
place would not be enough to confer jurisdiction.
11. This Court is not persuaded to take a view different from
that taken in Alberto’s case (supra) where the plaint was
returned. In the circumstances, the suit is returned to the
plaintiff to be filed before the Principal Civil Judge at Thane.
Parties are directed to be present before the Principal Civil
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Judge, Thane, on 25 October, 2010.”
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10. The order dated 27 August, 2010 passed by the learned Single Judge
attained finality as no recourse was taken by the respondent/plaintiff against
the said order. During the period CS(OS) 672/2004 on the Original side of
this court, there was no interim order operating between the parties.
11. On 09.09.2010 the respondent/plaintiff instead of filing the returned
plaint at the Courts at Thane, preferred a fresh suit against
appellant/defendant No.1 at the District Court at Saket Courts Complex.
This time the respondent/plaintiff claimed that the court has territorial
jurisdiction to try the suit in view of agreement dated 09.02.2009 whereby
one J.L. Morison (India) Ltd. (hereinafter J.L. Morison) has been appointed
as agents and distributors in India for their products marketed under the trade
mark VO5 and that J.L. Morison has their regional distributorship at 404,
Rohit House, 3 Tolstoy Marg, New Delhi. In addition, the defendant No.2
i.e. R.P. General Stores was made a party to the case. Here it may be
mentioned that defendant No.2 was the same entity to whom the
appellant/defendant No.1 had supplied the goods in pursuance of the two
invoices which were relied by the plaintiff in CS(OS) No.672/2004 for
contending that the courts at Delhi has the territorial jurisdiction to try the
FAO 480/2011 Page 9 of 19
suit.
12. The learned Additional District Judge to whom the suit was assigned
granted ex parte stay to the respondent/plaintiff. After completion of
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pleadings the learned Additional District Judge vide order dated 28 May,
2011, in view of the fact that the office of the regional distributorship of J.L.
Morison was at New Delhi district and not in South Delhi District returned
the plaint for being presented before the court of competent jurisdiction and
the interim order dated 9.9.2010 was ordered to be continued for a period of
five days.
13. The respondent/plaintiff presented the plaint returned by the court at
Saket to the court of Additional District Judge-I, Patiala House Courts, New
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Delhi on 1 June, 2011. On the aforesaid dated the learned Additional
District Judge, New Delhi, issued notice to appellant/defendant no.1 and
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extended the interim order dated 9 September, 2010. The
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appellant/defendant preferred an appeal against the order dated 1 June, 2011
before this court which was registered as FAO 344/2011. The learned Single
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Judge of this court has disposed of the said appeal vide order dated 8
th
August, 2011. The relevant paras of the order dated 8 August, 2011 reads
as under:-
“3. I agree with the contentions of the learned counsel for the
appellant that there is no question of extension of stay as has
been done by the impugned order because after the plaint was
returned by the order dated 9.9.2010 by the ADJ, at Saket
Courts, Delhi, filing of the suit in a competent Court, there was
a fresh filing of the suit and therefore whether or not injunction
FAO 480/2011 Page 10 of 19
ought to have been granted should have been considered afresh
keeping in mind the requirements of Order 39 Rule 1 and 2
CPC. Also, the application of the respondent/plaintiff for
seeking extension of injunction is also misconceived for self-
same reason. If the trial Court was inclined to grant an ex parte
injunction de novo, the trial Court ought to have discussed the
triple factors, prima facie case, balance of convenience and
irreparable loss and which are not found in the impugned order.
The order is completely a non-speaking order.
4. Accordingly, though the impugned order, in view of what
is stated above, is liable to set aside, however, if one does not
go on technicalities, it can also be said that the impugned order
seeks to grant an ex parte injunction in a fresh suit. However,
the ex parte injunction would suffer from the infirmities of not
being a speaking order and not considering the necessary
ingredients for grant of the injunction and more so on grant of
an exparte injunction, the requirement of Order 39 Rule 3 CPC
had to be directed to be complied with and which has not
been done.
5. Accordingly, while accepting the appeal and setting aside
the impugned order, I direct that the matter be taken up by the
trial Court on 17th August, 2011 and on which date the
respondent/plaintiff will file an application under Order 39
Rules 1 and 2 CPC for grant of interim orders. I may hasten to
clarify that though the impugned order is being
set aside, interim order passed by the trial Court on 1.6.2011 is
being continued only and only upto 17.8.2011 and when the
trial Court will examine the issue with respect to entitlement of
the respondent/plaintiff to an injunction uninfluenced by the
fact that interim injunction is continued till 17.8.2011 and after
ensuring that requirements of law for grant of an interim order
FAO 480/2011 Page 11 of 19
in terms of Order 39 CPC are complied with. The trial Court
will hear both the parties and pass a speaking order as to the
entitlement or disentitlement of grant of interim orders.
With the aforesaid observations the appeal and
application are disposed of.”
14. Thereupon respondent/plaintiff filed fresh application under Order 39
Rule 1 and 2 of CPC. The arguments were heard on the said application.
Vide order dated 01.10.2011, impugned in this appeal, the learned ADJ
confirmed the stay granted earlier on 09.09.2010.
15. On the territorial jurisdiction, Learned senior counsel Mr.Suhail Dutt
appearing for the appellant/defendant no.1 has contended that the
respondent/plaintiff has wrongly invoked the jurisdiction as per section
134(2) of the Act as respondent/plaintiff does not carry any business in Delhi
either directly or through any exclusive dealer/distributor. It is contended
that respondent/plaintiff has no sale in Delhi or even in India. It is contended
that not even a single document is produced which shows any use or
advertisement of trade mark ALBERTO VO5 by respondent/plaintiff in
India. It is contended that as per respondent/plaintiff it has appointed
authorized importer/distributor in India on 9.2.2009 but has failed to produce
a single document to prove sales, if any, done by it in India either prior or
even after its appointment. It is contended that jurisdiction or cause of action
paras of the plaint does not say that J.L.Morrison Ltd. is the
respondent/plaintiff‟s “Exclusive Distributor”, the plaint only says
“Distributor”. Learned Senior Counsel has also contended that the plaint of
FAO 480/2011 Page 12 of 19
first suit was returned by this court in CS(OS) No.672/2002 vide order dated
27.8.2010 by holding that Delhi Courts lack territorial jurisdiction to
entertain and try the suit. In the said order, specific finding was given by the
learned Single Judge of this court that two invoices of defendant no.2 placed
on record were insufficient to hold that respondent/plaintiff was either
trading in Delhi or cause of action had occurred at Delhi. It is contended
that the said order was not assailed by respondent/plaintiff, as such, suit is
barred by res judicata. It is further contended that plaint of second suit
being Suit No.1389/2010 vide order dated 28.5.2011 by the learned ADJ,
Saket, was returned to be presented before the court of competent
jurisdiction. In that case, it was observed that court at Delhi lacks
jurisdiction.
16. On merits, learned senior counsel has contended that marks of both the
parties are visually and phonetically different and customers of
respondent/plaintiff‟s are different. It is contended that the
respondent‟s/plaintiff‟s products are not available in India. It is contended
that in case the same are made available the same would be purchased by
elite and literate society as the products of respondent/plaintiff are costly. It
is further contended that the customers of products of both the parties are
literate who can easily distinguish between the two in terms of the mark,
their packaging, their use etc. It is contended that there is huge price
variation of products of both the parties. It is further contended that
products of both the parties are entirely different in use and their application.
The appellant/defendant no.1‟s products are nail polish, compact powder,
kumkum, mascara, lip gloss etc and respondent/plaintiff only produces hair
FAO 480/2011 Page 13 of 19
related products i.e., shampoo and conditioners. It is contended that
respondent/plaintiff uses the word ALBERTO as a prefix to VO5 whereas
appellant/defendant no.1 uses the single word V O V i.e., WOW which
suggest great pleasure and amazement. It is contended that in the earlier suit
i.e. CS(OS) 672/2004 filed by respondent/plaintiff, no injunction in its
favour was granted by this court and the said suit remained pending for 6
years. On return of the plaint, respondent/plaintiff filed a fresh suit at
District Court at Saket Court Complex and obtained an ex parte order dated
9.9.2010 and later on the said plaint was also returned and thereafter
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injunction was granted vide impugned order dated 1 October, 2011 by the
ld.ADJ, Patiala House Courts. In these circumstances, balance of
convenience was also in favour of appellant/defendant no.1 and the learned
trial court has not considered the same. It is contended that
appellant/defendant no.1 has documentary evidence to prima facie show use
of the mark trade VOV for the past 25 years whereas there is no prima facie
case in favour of respondent/plaintiff. It is contended that in the facts and
circumstances of the case, the appellant/defendant no.1 would suffer an
irreparable loss and injury if the impugned order is not set aside.
17. Learned counsel for the respondent/plaintiff has contended that
respondent/plaintiff is a registered proprietor of trade mark VO5 in India,
accordingly, the respondent/plaintiff is entitled for the remedy of
infringement. It is contended that for the purpose of territorial jurisdiction,
the respondent/plaintiff is entitled to special benefit of section 134(2) of the
Act wherein respondent/plaintiff is provided with additional forum for filing
suit in case of infringement of its trade mark at a place where
FAO 480/2011 Page 14 of 19
respondent/plaintiff resides and carries on its business. It is further
contended that respondent/plaintiff has also pleaded jurisdiction of this court
on account of appellant‟s/defendant no.1‟s activities of selling its products in
New Delhi area clandestinely and surreptitiously, under the provisions of
section 20 of CPC. It is contended that M/s J.L.Morison India Ltd was
appointed on 9.2.2009 as exclusive distributor of VO5 products in India and
M/s J.L.Morison India Ltd has its office at Mumbai and also at Tolstoy
Mark, New Delhi which is within the jurisdiction of this court, as such,
courts at Delhi has jurisdiction to try the present suit. It is contended that
respondent/plaintiff has Indian trade mark registrations for the mark
„ALBERTO VO5‟ (word mark) under No.196213B in Class 3 dated
30.5.1960; ALBERTO „VO5‟ label under No.1349772 in Class 3 dated
8.4.2005; VO5 (word mark) under No.788766 in Class 3 dated 23.1.1998;
VO5 logo under No.788768 in Class 3 dated 23.1.1998. It is contended that
respondent/plaintiff has exclusive rights to use the trade mark VO5 under
Sections 28 and 29 of the Act, 1999. It is contended that
appellant/defendant no.1 in its trade mark application filed in the Trade
Marks Office No.1263141 in Class 3 has claimed use of its trade mark V O
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V from 31 December, 2002 in relation to cosmetic preparations whereas in
the present appeal, appellant/defendant no.1 is trying to claim use of the
trade mark from 1986. It is contended that no document in this regard has
been filed. It is contended that respondent/plaintiff has trade mark
registration for ALBERTO VO5 since 1960 and VO5 from the year 1998
and respondent/plaintiff has claimed use of the mark internationally since
1955. It is contended that appellant/defendant no.1 has not been able to
FAO 480/2011 Page 15 of 19
establish continuous use of the mark prior to respondent/plaintiff‟s
registration. It is contended that respondent/plaintiff is also entitled to the
benefit of trans border use and reputation of the mark. It is further
contended that the learned ADJ after considering the facts and circumstances
of the case has exercised discretion by granting injunction in favour of
respondent/plaintiff. It is contended that there is nothing on record to show
that discretion has been exercised arbitrarily or capriciously, as such, the
appellate court would not interfere with the exercise of discretion of the
court of first instance and substitutes its own unless discretion has been
exercised arbitrarily or capriciously.
18. In order to succeed in his application, the respondent/plaintiff was
required to establish that it has a good prima facie case. Such inquiry would
have necessarily required the examination of question as to whether the
courts at Delhi have the territorial jurisdiction to try this suit. The
respondent/plaintiff may have averred in the plaint that Courts at Delhi have
jurisdiction to try this suit but the issue that would arise is as to whether the
respondent/plaintiff has succeeded in prima facie showing that the courts at
Delhi have such jurisdiction. The courts at Delhi have the jurisdiction to try
the suit either under Section 134 of the Trade Marks Act, 1999 or under
Section 20 of CPC. Apart from relying on the two documents which relate
to the transaction between the two defendants and which were held to be not
sufficient to vest the courts at Delhi with the territorial jurisdiction in
CS(OS) No.672/2004, the respondent/plaintiff has relied upon its dealership
agreement with J.L. Morison which is having its regional distribution at 404,
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Rohit House, 3 Tolstoy Marg, New Delhi. The plaintiff also relies on the
fact that the defendant No.2 is residing and carrying on business at Delhi.
19. The respondent/plaintiff itself is neither registered at Delhi nor has its
office at Delhi. It is otherwise not the case of the respondent/plaintiff that it
is personally working for gain at Delhi. Thus, to that extent the position in
the suit and the earlier suit remains the same.
20. In the case of Dhodha House v. S.K. Maingi 2006 (9) SCC 4, the
Supreme Court has held that the expression „carries on business‟ and the
expression, „personally works for gain‟ connote two different meanings. For
the purpose of carrying on business only presence of a man at a place is not
necessary. Such business may be carried at a place through an agent or a
manager or through a servant. The owner may not even visit that place. The
phrase „carries on business‟ at a certain place would, therefore, mean having
an interest in a business at that place, a voice in what is done, a share in the
gain or loss and some control thereover. The expression is much wider than
what the expression in normal parlance connotes, because of ambit of a civil
action within the meaning of Section 9 of the Code. But it is, inter alia,
necessary that the agent must be a special agent who attends exclusively to
the business of the principal and carries it on in the name of the principal and
not a general agent who does business for any one who pays him. In the
case in hand, there is no allegation in the plaint that agent is an exclusive
agent of the respondent/plaintiff. From the documents placed on record it
would appear that J.L. Morison is doing the business for other persons also.
It is not shown at this stage that the respondent/plaintiff is having an interest
FAO 480/2011 Page 17 of 19
in the business or at the place of business of J.L. Morison at Delhi, or a voice
in what is done, or a share in the gain or loss and some control thereover.
Not even a single document has been placed on record to show, sales if any,
done by it in Delhi or India after the appointment of J.L. Morison as its
distributor. Thus, under Section 134 of the Trade Marks Act, 1999 is of no
assistance to the respondent/plaintiff. To my mind, in the facts of this case,
fact that the defendant No.2 is doing business at Delhi is also of no
significance inasmuch as the two documents relating to the transaction
between the two i.e. appellant/defendant no.1 and defendant no.2 were held
to be not sufficient to vest the courts at Delhi with territorial jurisdiction.
After having chosen to continue the earlier suit without making the
defendant No.2 a party to the said suit the plaintiff cannot now agitate the
same issue on the basis of same documents by making defendant No.2 a
party to the suit. Every violation of a trade mark or act of passing of may be
a fresh cause of action. That however, cannot mean the respondent/plaintiff
is at liberty to rely on those very transactions, which were the subject matter
of the earlier suit between the parties and which were specifically gone into
by the court. Thus, Section 20 CPC is also not going to help the
respondent/plaintiff at this stage.
21. In the circumstances, it appears to this court that respondent/plaintiff
has failed to prima facie show that the courts at Delhi have territorial
jurisdiction to try the suit for reason of his Dealership Agreement with J.L.
Morison or on account of having made defendant No.2 party to the suit.
FAO 480/2011 Page 18 of 19
22. In view of above discussion, I do not find it appropriate to deal with
other contentions of the parties as the same pertains to merits of the case.
Accordingly, the other contentions and case law referred to by the parties
have not been discussed herewith.
23. Accordingly, the appeal is allowed and the impugned order stands set
aside. The trial court shall now proceed in accordance with law for which
the parties shall appear before the learned Trial Judge on 16.7.2013.
24. The appeal stands disposed of.
25. Nothing contained in this order shall be treated as expression of
opinion on the merits of the case.
VEENA BIRBAL, J
JULY 1, 2013
ssb/kks
FAO 480/2011 Page 19 of 19