Pfizer Products, Inc. v. Rajesh Chopra

Badar Durrez Ahmed, J.— Although this application is styled as an application Page: 784under Order 7 Rule 11 for rejection of the plaint for want of territorial jurisdiction, it is actually an application under Order 7 Rule 10 for return of the plaint. The learned Counsel for the parties have argued this application on the understanding that this is an application under Order 7 Rule 10 and it is with this understanding that the present application is being disposed of.

2. The learned Counsel for the defendants/applicants submitted that this Court does not have the territorial jurisdiction to entertain the present suit. The suit filed by the plaintiff is one for injunction and damages for passing off and unfair competition. The learned Counsel for the defendants referred to paragraph 48 of the plaint to show that the plaintiff has approached this court on account of two factors. The first factor being that the defendants had applied for registration of the trademark GEODON and ZOLOFT in Delhi in the Trade Mark Registration which is in the jurisdiction of this court. The second factor stated by the plaintiff to give this court jurisdiction to entertain the present suit was that, according to the plaintiff, the defendants intended to sell and offer for sale the offending goods in Delhi. Paragraph 48 of the plaint is reproduced hereinbelow:

“48. This Hon'ble Court has the territorial jurisdiction to try and entertain the present suit by virtue of the fact that the first and the second defendants have applied for registration of the trade mark GEODON and ZOLOFT in Delhi, within the jurisdiction of this Hon'ble Court. Furthermore, the defendants intend to sell and offer for sale the offending goods in Delhi, within the jurisdiction of this Hon'ble Court. This Hon'ble Court has the territorial jurisdiction to try and entertain the present suit.”

3. The learned Counsel for the defendants submitted that in an action for passing off since the defendants have not sold any goods in Delhi, therefore, no cause of action would have arisen in Delhi and consequently this Court would not have jurisdiction to entertain this suit for the threatened or intended sale of the offending goods in Delhi.

4. Insofar as the first factor mentioned by the plaintiffs in the plaint that the defendants had applied for registration in Delhi is concerned, the learned Counsel for the defendants submitted that the mere filing of an application for registration in Delhi would not grant territorial jurisdiction to this Court to entertain the suit. He submitted that this issue is entirely covered by the Supreme Court decision in the case of Dhodha House v. S.K Maingi., 2006 (32) PTC 1.

5. The learned Counsel for the plaintiff controverted the arguments raised by the learned Counsel for the defendants. In the first instance, he submitted that the Supreme Court decision in Dhodha House (supra) does not hold that mere filing of an application by the defendants for registration of the very trade mark which is being used by the plaintiffs would not grant territorial jurisdiction to the Court to hear the matter. The learned Counsel for the plaintiff also submitted that as regards the second factor an injunction can certainly be granted when there is a threat of the Page: 785goods being sold in Delhi. He submitted that it is not necessary that before an injunction is granted, the goods must have been sold in Delhi. Even if there is an intention to sell and the plaintiff is able to make out a prima facie case of such intention then the Court can grant an injunction restraining the defendants from carrying out their intention to sell the offending goods at a particular place. He relied strongly upon the decision of a Division Bench of this Court in the case of Jawahar Engineering Company, Ghaziabad v. Jawahar Engineers Pvt. Ltd., Sri Rampur, Distt. Ahmednagar, 1983 PTC 207.

6. Considering the arguments advanced by the Counsel for the parties, it becomes clear that the point which requires resolution in this matter is what is the ratio of Dhodha House (supra) and whether Dhodha House (supra) in any way unsettles and what has been laid down in Jawahar Engineering (supra). For this purpose, it would be necessary to examine both these decisions in some detail.

7. I shall take up Jawahar Engineering (supra) first. Amongst other grounds and issues raised in that case, a Division Bench of this Court was faced with the question of territorial jurisdiction in the context of Order 7 Rule 10 of the CPC. The court observed as under:

“There is another ground for holding that the Court has jurisdiction. Section 20 of the Code of Civil Procedure shows that a suit like the present can be filed wherever the cause of action wholly or partly arises. The plaintiff has prayed for an injunction regarding a threatened breach of a registered trade mark. The learned Single Judge held that the Delhi Court does not have jurisdiction on the ground of any sale having been made in Delhi, but does have jurisdiction on account of the advertisement having appeared in the Trade Marks Journal. The real point which gives the Court jurisdiction is not the place where the advertisement has appeared, but the fact that the trade mark is sought for sale in Delhi amongst other places. Furthermore, when an injunction is sought, it is not necessary that the threat should have become a reality before the injunction is sought, it is not necessary that the threat should have become a reality before the injunction and it can even be sought for a threat that is still to materialise.

An injunction being prohibitive in nature is intended to prevent something that is likely to happen. Once the plaintiffs have learnt that the defendants have applied for registration of trade mark in Delhi, they can claim an injunction to prevent any sale of the infringing product in Delhi. In this sense, the Court will have jurisdiction whether any sale in Delhi has taken place or not. In any case, as already stated, the decision is of a preliminary nature, once the exact scope of what the defendants intend to do is known, it is open to the Court to return the plaint. In that sense, Page: 786it is not a final decision and in not open to appeal at the preliminary stage being not a final adjudication.

8. In that case what had happened was that the plaintiffs had learnt that the defendants had applied for registration of the trade mark in Delhi. The advertisement had also appeared in the Trade Mark Journal in various places including Delhi. The Single Judge in that case held that the advertisements in the Journal were not sufficient to confer jurisdiction on the Courts in Delhi. A preliminary issue was framed when the matter was before the Single Judge and the issue was: “Has this Court jurisdiction to try the suit?” This issue was taken up and on an examination of the evidence, it was found that there was not sale of diesel oil engines in Delhi. The defendants also had claimed that they not advertised their products in Delhi. The Single Judge hearing the matter held that the jurisdiction of the Court could not be invoked as there was no actual sale. He held that there was an advertisement in a Journal called “Parwez” which is published in Ludhiana. He further held that these advertisement were not sufficient to confer jurisdiction on the Courts in Delhi. The learned Single Judge also observed that apart from these advertisements, the same had been advertised in the Trade Mark Journal published by the Registrar of Trade Marks at Delhi as result to which the jurisdiction was conferred in the Courts at Delhi. The learned Single Judge hearing the matter did not say anything with regard to the filing of the application at Delhi. It is in this context that the aforesaid observation of the Division Bench was made and at is, therefore, clear that the observation made by the Division Bench that the place where the advertisement had appeared does not give the Court jurisdiction, is in line with what had been decided by the Supreme court in Dhodha House (supra) as will be apparent hereinbelow. However, the Division Bench observed that when an injunction is sough it is not necessary that the threat should have become a reality before an injunction is prayed for and it can even be sought when there is a thereat that is still to materialise. Therefore, the ratio in Jawahar Engineering (supra) is that mere advertisement in the Trade Mark Journal would not give a Court jurisdiction. However, a threat that the offending goods could be sold at a particular place would definitely give jurisdiction to the Court in such a place. An important aspect of the matter is that the Division Bench also held that an injunction being prohibitive in nature in intended to prevent something likely to happen and once the plaintiffs had learnt that the defendants had applied for registration of a trade mark in Delhi, they could claim an injunction to prevent any sale of the infringing product in Delhi, The Division Bench, therefore, held that the filing of an application for registration of a trade mark in Delhi would give rise to a threat perception in the minds of the people that the offending goods would be sold in Delhi and that would be sufficient to give the courts ins Delhi jurisdiction to entertain a suit for passing off.

9. Now, I come to the decision of the Supreme Court in the case of Dhodha House (supra). In Dhodha House (supra), the Supreme Court was concerned with two civil appeals; one in respect of Dhodha House and the other in respect of PM Page: 787Diesel. In the case of Dhodha House which came up to the Supreme Court from the Allahabad High Court, no application for registration had been filed by the defendants anywhere in India. Insofar as the case of PM Diesel Limited is concerned, the application was filed in the Trade Mark Registry at Bombay and the parties were also residents of Rajkot. That was a case which came to the Supreme Court via the Delhi High Court. In fact, before the Division Bench of the Delhi High Court three contentions as regards the jurisdiction of the Delhi High Court were raised. The first being under Section 62 of the Copyright Act, 1957 on the ground that the suit was a composite suit under the Copyright Act as well as under the Trade and Merchandise Marks Act, 1958. The second contention being that the defendants had sought registration of the trade mark at Delhi. The third contention was that the defendants were selling goods under the impugned trade mark at Delhi. Insofar as the third contention was concerned, the Division Bench made no observation and the suit continues before the Delhi High Court as would be apparent from a reading of paragraph 59 of the said decision. Insofar as the first question is concerned that pertains to the intricacies of a composite suit being filed under two separate causes of action and with regard to the joinder of causes of action Order 2 Rule 3 of the Civil Procedure Code with which we are not concerned in the present proceedings. On the second aspect that is that the defendants has sought registration of the trade mark at Delhi, it is clear that no application has, in point of fact, been made in Delhi. The application was made in Bombay and the parties were residents of Rajkot. The Supreme Court in the case of Dhodha House (Supra) held that the second contention for conferring jurisdiction on the Court at Delhi was not available.

10. Referring to the decision of the Division Bench in the case of Jawahar Engineering (supra), the Supreme Court observed as under:

3.1 The said decision has no application in the instant case fore more than one reason. For the purpose of the registration of a trade mark, an application must be filed in the branch office of the Registrar of Trade Marks. It is not in dispute the under Section 5(3) of the 1958 Act, the Central Government has issued a notification in the Official Gazette defining the territorial limits within which an office of the Trade Marks Registry may exercise its functions. The office of the Trade Marks Registry at New Delhi exercise jurisdiction over the States of Haryana. Himachal Pradesh Jammu & Kashmir, Punjab Rajasthan and Uttar Pradesh and the Union Territory of Chandigrah and National Capital Territory of Delhi. Whereas in Dhodha House v. S.K Maingi no such application has been filed admittedly in Patel Marshal Industries v. R.M Diesels Ltd., the Delhi office has no jurisdiction as parties are residents of Rajkot and an application was filed by the appellant for registration of its trade mark at Bombay. If an objection is to be filed, the same has to be filed at Bombay. An advertisement by itself in a journal or a paper would not confer jurisdiction upon a Court, as would be evident Page: 788from the following observations of this Court in Oil and Natural Gas Commission v. Utpal Kumar Basu, (1994) 4 SCC 711:

“Therefore, broadly speaking, NICCO claims that a part of the cause of action arose within the jurisdiction of the Calcutta High Court because it became aware of the advertisement in Calcutta, it submitted its bid or tender from Calcutta and made representations demanding justice from Calcutta on learning about the rejection of its offer. The advertisement itself mentioned that the tenders should be submitted to EIL at New Delhi; that those would be scrutinised at New Delhi and that a final decision whether or not to award the contract to the tenderer would be taken at New Delhi. Of course, the execution of the contract work was to be carried out at Hazira in Gujarat. Therefore, merely because it read the advertisement at Calcutta and submitted the offer from Calcutta and made representations from Calcutta would not, in our opinion, constitute facts forming an integral part of the cause of action. So also the mere fact that it sent fax messages from Calcutta and received a reply thereto at Calcutta would not constituted an integral part of the cause of action.”

11. From the aforesaid extract, it becomes clear that the decision in the Jawahar Engineering (supra) was not disapproved by the Supreme Court. It merely said that the decision has no application in the case before it. One of the reasons granted was that the application had not been filed in Delhi. Although the Supreme Court had noted that the office of the Trade Marks Registry at New Delhi exercised jurisdiction over the States of Haryana, Himachal Pradesh, Jammu & Kashmir, Punjab, Rajasthan and Uttar Pradesh and the Union Territory of Chandigarh and National Capital Territory of Delhi, the Supreme Court categorically observed that in the case of Dhodha House no application at all had been filed whereas in the case of P.M Diesels Ltd. the Delhi office of the Registrar of Trade Marks had no jurisdiction as the parties were residents of Rajkot and the application for registration itself had been filed at Bombay. It is in this context that the Supreme Court held that the decision in Jawahar Engineering (supra) would not be applicable to the facts of the case before it. To make it clear, since the application for registration in the two cases before it had not been made within the territory of Delhi, the Supreme Court found the decision in the case of Jawahar Engineering (wherein such an application was made in Delhi) to be inapplicable to the facts of the case before it. The ratio of the Supreme Court decision in Dhodha House (supra) therefore, in my view, is not that the filing of an application at the Registrar of Trade Marks at a particular place would not clothe Courts at that place with territorial jurisdiction to entertain the matter. The ratio is that an advertisement by itself in a Trade Mark Journal would not confer jurisdiction upon a Court within whose territorial limits the advertisement is published or is seen. That ratio does not militate against what has been held in Jawahar Engineering (supra). Therefore, the arguments advanced by the learned Counsel for the defendants are not tenable and I find that the decision in the case of Jawahar Engineering (supra) covers the Page: 789present case which has not been unsettled by the Supreme Court in Dhodha House (supra).

12. The other aspect of the matter is that a threat of selling the offending goods in Delhi would in itself confer jurisdiction in the Courts in Delhi to entertain a suit claiming an injunction in respect thereof. Whether the threat perception is justified or not is another matter which has to be considered and decided upon in the application filed by the plaintiff under Order 39 Rules 1 and 2 or on merits when the suit is taken up for disposal. Insofar as Order 7 Rule 10 is concerned, assuming that whatever is stated in the plaint is correct, one would have to also assume that the threat or the intention of the defendants to sell and offer for sale the offending goods in Delhi is also correct. Therefore, if the threat exists then this Court would certainly have jurisdiction to entertain the present suit.

13. In these circumstances, this application is dismissed. No order as to costs.

Application dismissed.