CS(OS) No. 1188 of 2011

before the Hon’ble High Court of Delhi at New Delhi

Decided on: 20.11.2013

The Plaintiff filed a suit against the Defendant for permanent injunction seeking restraining orders towards infringement and passing off of it’s trade mark HERITAGE. The Defendant was a registered proprietor of the Trade Mark HERITAGE for the same goods. Therefore, the Hon’ble Court observed that in terms of Section 28(3) of the Trade Marks Act, 1999 no suit for infringement would lie against the Defendant.

Therefore, the only remedy available to the Plaintiff was the suit for passing off. In respect of the same, the Defendant filed an application under Order VII Rule 10 of the Code of Civil Procedure, 1908 on the ground that as the Defendant does not sell it’s products in Delhi, no cause of action has arisen within the territorial jurisdiction of Delhi.

The jurisdiction claimed by the Plaintiff in it’s plaint was on the basis of the legal notice addressed to the Plaintiff by the Defendant. As per the Plaintiff, the Defendant had claimed in it’s legal notice that the Defendant sells it’s goods under the trade mark HERITAGE through the length and breath of the country and that would include the state of Delhi.

The Plaintiff relied on Pfizer Enterprises Sare v. Cipla Ltd. 2009 (39) PTC 358 (Del) and Exphar SA v. Eupharma Laboratories Ltd. to contend that the question whether HFIL was selling it’s products in Delhi would be a matter for evidence and at this stage the Hon’ble Court can only examine the plaint and the documents filed with it and not the written statement.

The Hon’ble Court held that since the suit is not based on an apprehension of infringement, it cannot be construed as a qua timet action. Therefore, Pfizer Enterprises Sare v. Cipla Ltd. is not helpful to the Plaintiff. 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. However, the averments in the plaint in the present case proceeds only on the basis of the statement made in the cease and desist notice dated 4th March 2011 issued by Defendant and nothing else.

The Court allowed the application of the Defendant and returned the plaint of the Plaintiff  by relying on Haryana Milk Foods Ltd. v. Chambel Dairy Products, wherein 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 facto confer territorial jurisdiction on this Court”

The Hon’ble Court also relied on A.V.R. Engineers v. Sharma Moulding Works, wherein it was held 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”.

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