Appropriate Jurisdiction under the Trade Marks Act, 1999.

The Delhi High Court in M/S Maan Pharmaceuticals Ltd V. M/S Mindwave Healthcare Pvt. Ltd observed that mere non-filing of a 'legal proceedings certificate' is not a concealment of such a material nature so as to disentitle the plaintiff to file a suit seeking an injunction, wherein it apprehends infringement of its trademark.

The case, in brief, is that there is a dispute regarding the usage of the trademark “BUPROEX-N. MINDWAVE claims to be the registered trademark owner and has alleged unauthorized use of the said trademark by MAAN. MAAN has approached this court against the order passed by the commercial court. 

The preliminary dispute was of jurisdiction and the plaintiff-respondent in order to prove the Commercial Court’s jurisdiction it took a plea that Plaintiff is carrying on the business from the place within the territorial jurisdiction of this Hon’ble Court having principal 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. 

However, it was strongly contested by MAAN on the ground that there’s a lack of territorial jurisdiction as per directions/guidelines prescribed by the Court in the case of Amrish Aggarwal v. M/s Venus Home Appliances Pvt. Ltd. It was pleaded that MINDWAVE only has a sales office within the territorial jurisdiction of the learned Trial Court at Saket and its registered office is located in the Mangol Puri Industrial area, which is outside the territorial jurisdiction of the learned Trial Court at Saket.

However, the Trial Court discarded MAAN’s plea and held that “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.”

Hence, MAAN by way of this Petition sought relief before the Hon’ble High Court. 

The Court after hearing both sides observed that the issue of territorial jurisdiction in relation to infringement of trademarks is governed by Section 134(2) of the Trade Marks Act, 1999 read with Section 20 of the CPC. Since, MINDWAVE has apprehended the launch of the infringing product within the territorial jurisdiction of the learned Trial Court at Saket, there is no jurisdictional defect as such. 

The court upheld the trial court’s order and observed that “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 he is otherwise entitled to.”