I.A. No. 4397 of 2020 in CS (Comm) No. 166 of 2020
Hon’ble High Court of Delhi
Date of Decision: 15th October, 2020
- On 2nd June, 2020 it was discovered by the Plaintiff that the Defendant had launched its product in the market under the trade mark “Chetak Whisky” whose label was allegedly deceptively similar to that of Plaintiff’s “Officers Choice” label.
- Thus, Plaintiff filed a suit against the Defendant before the Hon’ble High Court of Delhi along with an application for interim relief. The present summary is of the decision of the Hon’ble Court on the said application for interim relief wherein Hon’ble Court decided on the rival contentions till the pendency of the said application.
- The Defendant had also challenged the territorial jurisdiction of the Hon’ble High Court of Delhi at the preliminary stage and thus the Hon’ble Court also decided the said issue.
- Hon’ble High Court has jurisdiction over this case, under Section 134(2) of the Trade Marks Act, 1999, Section 20 of Civil Procedure Code and Section 62(2) of the Copyright Act, 1957 since the Plaintiff is engaged in carrying its business within the territorial limits of the Hon’ble High Court and the Defendant is going to launch its product in such territory, therefore the Hon’ble Court has the jurisdiction in this case.
- In addition to this, the “Contact Us” page of the Defendant’s website also mentions about the address which is within the jurisdiction of the Hon’ble Court.
- The Division Bench of the Hon’ble High Court of Delhi in Allied Blenders and Distillers v. R.K. Distilleries and Allied Blenders and Distillers v. Prag Distillery Pvt. Ltd. has held that while examining the issue of territorial jurisdiction at the initial stage, the Court is required to proceed on demurrer, treating the submissions in the plaint, as unrebutted.
- The mark “Officer’s Choice” and “Officers Choice Blue” have a unique label with gold line which divides the label into two halves and that the lower half has a red background while the background of the upper half is white. The place where the “Officers Choice” is mentioned in the label is the same place where “Chetak” is mentioned in the Defendant’s label.
- The decisions cited by the Plaintiff are distinguishable on facts as they had been rendered in the context of Order VII Rule 10 of the CPC, whereas the considerations governing application under Order XXXIX of CPC (interim orders) is totally different. The stipulation that, while examining the issue of territorial jurisdiction at the initial stage, the Court is required to proceed on the basis of demurrer, may apply to Order VII Rule 10, but would not apply to an application under Order XXXIX of the CPC.
- The Delhi address of the Defendant was of the Registrar, who, in accordance with the provisions of the Depositories Act, 1996, read with Companies (Prospectors and Allotment of Securities) Rules, 2014, was to be contacted in the case of transfer of shares, etc. It was not a ‘contact address’ of the Defendant and Defendant was carrying business in Rajasthan.
- The Defendant is based in Rajasthan and has excise approval only for the State of Rajasthan.
- Trade mark “Chetak Whisky” is a different name from that of Plaintiff which is “Officers Choice”. In addition to this, the label and packaging style of its goods are different from that of the Plaintiff. Moreover, the bottles are also different is shape and size when compared to the Plaintiff’s bottle.
On Territorial Jurisdiction:
- In Allied Blenders and Distillers v. R.K. Distillerie (Supra)s and Allied Blenders and Distillers v. Prag Distillery Pvt. Ltd. (Supra) the Hon’ble Division Bench examined the aspect of territorial jurisdiction, in the context of a trademark infringement suit, in the backdrop of Order VII Rule 10 of the CPC, as contradistinguished with Order XXXIX Rules 1 and 2.
- The Division Bench has undoubtedly, contradistinguished the considerations which govern a prayer for interim injunction, under Order XXXIX Rules 1 and 2, with those which govern an application under Order VII Rule 10, of the CPC.
- This distinction, however, does not seriously impact the present order, as this order is not disposing of the application, of the Plaintiff, under Order XXXIX Rules 1 and 2, CPC, but is merely considering its prayer for ad interim relief, pending consideration and disposal of the application for interim relief, under Order XXXIX Rules 1 and 2. There can be no question, therefore, of this Court, at this stage, being guided by the averments in the written statement.
- Further, even if the Defendant is not able to make out a case for return of plaint under Order VII Rule 10, a Plaintiff may still be denied a temporary injunction if the Defendant is able to establish that the territorial jurisdiction of the Hon’ble Court is highly debatable and prima facie not tenable as observed by the Division Bench of this Hon’ble Court. This indicates that onus would be on the Defendant to establish, prima facie, that the plaint is not amenable to the territorial jurisdiction of this Court – or, at the least, that the contentions, of the Plaintiff, for invoking the territorial jurisdiction of this Court are, prima facie, not acceptable.
- Written Statement of the Defendant is not on record and thus the Court has to proceed on the basis of the averments in the plaint, for the purposes of considering the prayer for ad interim relief.
- Defendant’s “Contact Us” page mentions about the address in New Delhi, on which it can be contacted. Prima facie, Defendant has an office at the said address.p
- Further, mere apprehension of the likelihood of the Defendant launching the allegedly infringing product within the territorial jurisdiction of the Court, would confer jurisdiction on the Court. Thus, at least a part of cause of action has arisen within the territorial jurisdiction of this Hon’ble Court. It cannot be said that the claim of the Plaintiff that this Hon’ble Court has territorial jurisdiction is “highly debatable and prima facie not tenable”.
- Plaintiff has prima facie justified the invocation of jurisdiction of this Hon’ble Court.
- The label of Plaintiff as well as Defendant,when compared to each other, signifies that they are deceptively similar. For example: there are similar lines in both the labels, with an outer gold border which is exactly the same.
- A consumer with average intelligence as well as imperfect recollection, is likely to get confused between the product of the Plaintiff and the Defendant.
- The triple identity test also applies in the present case as the Defendant’s mark(label) is deceptively similar to that of the Plaintiff. Moreover, they are dealing under identical goods, through a trade channel which is also similar.
An ad interim injunction (pending hearing and final disposal of the application for temporary relief) was passed against the Defendant, restraining it from being engaged in or likewise dealing in any product under its trademark “Chetak”(label), or any other such trade marks which is deceptively similar to that of Plaintiff’s concerned marks.
 2017 (69) PTC 493 (Del)
 2017 SCC OnLine Del 7225
Co-author: Ms. Amanya Shree Gangawat, Amity University, Kolkata