1. This application is moved by the defendant under Order XIIIA of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 for summary judgment.
2. Initially the plaintiff had filed a suit for passing off. During pendency since its trademark was registered the plaintiff filed an amendment and included the relief of infringement in the said suit. Amended plaint has been filed so also the amended written statement/ replication.
3. The learned counsel for the defendant says this Court has no territorial jurisdiction to try and decide this suit and a bare reading of the plaint would reveal there are no allegations the defendant is carrying on its business in Delhi and that no part of the cause of action ever accrued in Delhi, thus the plaintiff has no possibility to succeed and the suit be dismissed by passing a summary judgment. The learned counsel for the defendant relied upon an order dated 08.12.2016 of this Court as under:
'6. It is the case of the plaintiff that this Court has territorial jurisdiction because the defendant is selling its goods at Delhi and because the defendant has an interactive website through which orders for sale all over India are taken.
7. On enquiry from the counsel for the plaintiff as to what is there to show that the defendant is selling at Delhi, inasmuch as the plaintiff though has filed voluminous documents but has not filed a single invoice of sale of goods by the defendant at Delhi, the counsel for the plaintiff states "that the plaintiff does not even know how the defendant is selling its goods at Delhi" and has only drawn attention to page 422 being the print out of the website of the defendant for placing orders on the defendant.
8. Prima facie there is no case of sale at Delhi by the defendant situated at Bangalore.
9. The counsel for the plaintiff has also drawn attention to letters written by the dealer of the plaintiff at Bangalore filed at pages 447 to 452 complaining that the consumers of the goods of the plaintiff at Bangalore are being mislead into purchasing the goods of the defendant and the market of the plaintiff is suffering.
10. The aforesaid also establishes that the plaintiff has a presence at Bangalore and could have conveniently sued the defendant at Bangalore.'
4. The learned counsel for the defendant then referred to paras 25 and 26 of the amended plaint. Para 25 of the plaint refers to cause of action and para 26 pertains to the jurisdiction as under:
'25. The cause of action first arose in September 2013 when the Plaintiff Company's then Marketing Head Mr. Rajiv Jaiswal came to know about the Defendant's illegal activities, whereafter which a legal notice dated 23.09.2013 was issued to the defendant to cease and desist from using the REFRESH mark and to withdraw his trademark application as well as the products with the REFRESH mark immediately. The cause of action again arose in June, 2016 when the Plaintiff came to know about the Defendant's adoption of impugned marks REFRESH SPRINGS upon receipt of notice of opposition against the Plaintiffs trademark application. The cause of action again arose in August 2016 when the Defendant's trademark application for mark REFRESH SPRINGS was advertised in the Trademark Journal. The cause of action further arose in September 2016 when the Plaintiff filed notice of opposition against the Defendant's trademark application. The cause of action also arose in September, 2016 when the Plaintiff received several letters from its distributors complaining about the confusion caused in the market due to the Defendant's product under the mark REFRESH SRPINGS and requested the Plaintiff to take proper action against such act of the Defendant. The cause of action once again arose on 23rd November, 2016 and 9th December, 2016 when the Plaintiffs trademarks REFRESH REVIVE and REFRESH GOOD MORNING LIFE were registered and the defendant's continued use of the impugned mark infringed the said registered trademarks of the Plaintiff. The Defendant continues to use the impugned mark in violation of the Plaintiffs rights and thus cause of action in the instant Suit is a continuous one and continues to arise from day to day till the Defendant is restrained by an order of injunction passed by this Hon'ble Court.
26. Plaintiff is the registered proprietor of two of the trademarks with registration numbers 2965348 and 3025831 which have been infringed by the Defendant, and the Plaintiff is carrying on business within the territorial limits of this Hon'ble Court through their registered office in Delhi. Therefore, this Hon'ble Court has the necessary territorial jurisdiction to adjudicate the present suit under the provisions of Section 134(2) of the Trade Marks Act, 1999.
26A. This Hon'ble Court also has jurisdiction to entertain and try the present suit under Section 20(c) of the Code of Civil Procedure as a part of the cause of action has arisen within the jurisdiction of this Hon'ble Court. The Defendant is committing the impugned acts within the jurisdiction of this Hon'ble Court by conducting, soliciting, and rendering the sale of its impugned products within the territorial jurisdiction of this Hon'ble Court, causing confusion and deception amongst customers and distributors in Delhi and causing loss to the Plaintiff within the territorial jurisdiction of this Hon'ble Court. The Defendant is also advertising its products under the impugned mark through its website www.refreshsprings.com accessible within Delhi. The Plaintiff has its registered office and principal of place of business situated in Mehrauli, Delhi and all loss to the Plaintiff as a result of the Defendant's unlawful acts is accruing within the jurisdiction of this Hon'ble court. Thus, an integral part of cause of action has arisen within the jurisdiction of this Hon'ble court and this Hon'ble court has territorial jurisdiction to entertain and try the instant suit.'
5. The learned counsel for the defendant also referred to para 5 and 6 of the replication to say the basis of filing the suit in Delhi, primarily, is based upon a) the alleged website of the defendant and b) a remark in an application of defendant for opposition to the trademark of the plaintiff wherein the defendant has alleged its product is widely sold all over India.
6. The learned counsel for the defendant also referred to an invoice at page no. 121 dated 30.12.2012 which shows the plaintiff is also carrying on its business in Hyderabad. The learned counsel for the defendant relied upon Banyan Tree Holding (P) Limited vs. A.Murali Krishna Reddy & Anr. 2010 (42) PTC 361 (Del.) (DB) wherein the Court held:
'45. This court holds that in order to prima facie establish that the Defendant purposefully availed of the jurisdiction of this court, the Plaintiff would have to show that the Defendant engaged in some commercial activity in the forum State by targeting its website specifically at customers within that State. This is consistent with the law laid down in Cyber sell and reiterated later in Toys R Us. It is also consistent with the application of the ‘tighter’ version of the ‘effects’ test which is ‘targeting’. In any action for passing off or infringement, it would have to be shown that the Defendant by using its mark intended to pass off its goods as that of the Plaintiff’s. A mere hosting of a website which can be accessible from anyone from within the jurisdiction of the court is not sufficient for this purpose. Also a mere posting of an advertisement by the Defendant depicting its mark on a passive website which does not enable the Defendant to enter into any commercial transaction with the viewer in the forum state cannot satisfy the requirement of giving rise to a cause of action in the forum state. Even an interactive website, which is not shown to be specifically targeted at viewers in the forum state for commercial transactions, will not result in the court of the forum state having jurisdiction. In sum, for the purposes of Section 20 (c) CPC, in order to show that some part of the cause of action has arisen in the forum state by the use of the internet by the Defendant, the Plaintiff will have to show prima facie that the said website, whether euphemistically termed as "passive plus" or "interactive", was specifically targeted at viewers in the forum state for commercial transactions. The Plaintiff would have to plead this and produce material to prima facie show that some commercial transaction using the website was entered into by the Defendant with a user of its website within the forum state and that the specific targeting of the forum state by the Defendant resulted in an injury or harm to the Plaintiff within the forum state. Question no. (ii) is answered accordingly. Question (iii) Is it permissible for the Plaintiff to establish such prima facie case through "trap orders" or "trap transactions"?'
7. And Godfrey Phillips India Limited vs. P.T.I. Private Limited & Ors. 2018 (73) PTC 178 (Del) wherein the Court held:
'7. xxxxxx However before discussing the two aspects it is required to be noted that discussion on these two aspects will have to take place keeping in view the parameters as mandated to commercial suits under the Commercial Courts, Commercial Division and Commercial Appellate Division of the High Courts Act, 2015 inasmuch as the subject suit is a commercial suit. Whereas in ordinary suits as per the procedure of the Code of Civil Procedure, 1908 (CPC) when disputed questions of fact arise then trial is mandatory but in commercial suits courts need not hold trial even if there are disputed questions of fact if a court comes to a conclusion that plaintiff lacks real prospect in succeeding in the suit. Commercial suits therefore can be dismissed by adopting the summary procedure and this summary procedure is the subject matter of Order XIII-A of CPC as applicable because of Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act. Order XIII-A Rule (3)(a) as applicable to commercial courts provides that a court can give a summary judgment against a plaintiff when the plaintiff has no real prospect of succeeding in the suit claim.'
8. The learned counsel for the defendant also referred to the letters dated 06.09.2016 written by the purported dealers of the plaintiff and such letters rather disclose the plaintiff’s dealers are suffering because of increasing of the sales of the product of the defendant. Hence the argument of the defendant is the plaint be returned and/or the suit be dismissed as this Court lack jurisdiction.
9. Let me examine the plaint. The plaint disclose the registered office of the plaintiff is at Delhi. Though the invoice dated 23.12.2012 at page 121 is relied upon by the defendant but it do not reveal the plaintiff has its branch/sub-ordinate office at Hyderabad, which even otherwise, would have been of no help to the defendant. The defendant has not disclosed any document which would reveal the plaintiff having its branch/subordinate office in Bangalore.
10. In Ultra Home Construction Pvt. Ltd. vs. Purushottam Kumar Chaubey & Ors. 227(2016) DLT 320 (DB) the Court held:
'13. It is evident from the above observations that the interpretation given to the expression "carries on business" in the context of a defendant under section 20 of the Code has also been employed in the context of a plaintiff under the said sections 134(2) and 62(2). Thus, in addition to the places where suits could be filed under section 20 of the Code, the plaintiff can also institute a suit under the Trade Marks Act, 1999 and the Copyright Act, 1957, as the case may be, by taking advantage of the provisions of section 134(2) or section 62(2), respectively. Both the latter provisions are in pari materia. Under these provisions four situations can be contemplated in the context of the plaintiff being a corporation (which includes a company). First of all, is the case where the plaintiff has a sole office. In such a case, even if the cause of action has arisen at a different place, the plaintiff can institute a suit at the place of the sole office. Next is the case where the plaintiff has a principal office at one place and a subordinate or branch office at another place and the cause of action has arisen at the place of the principal office. In such a case, the plaintiff may sue at the place of the principal office but cannot sue at the place of the subordinate office. The third case is where the plaintiff has a principal office at one place and the cause of action has arisen at the place where its subordinate office is located. In this eventuality, the plaintiff would be deemed to carry on business at the place of his subordinate office and not at the place of the principal office. Thus, the plaintiff could sue at the place of the subordinate office and cannot sue (under the scheme of the provisions of section 134(2) and 62(2)) at the place of the principal office. The fourth case is where the cause of action neither arises at the place of the principal office nor at the place of the subordinate office but at some other place. In this case, the plaintiff would be deemed to carry on business at the place of its principal office and not at the place of the subordinate office. xxxxxx'
11. Per Ultra Home (supra) if the plaintiff has its principal office at one place; its branch office at another and the cause of action arose at a third place then plaintiff can conveniently file a suit at the place where it has its principal office. Admittedly the plaintiff has its registered office at Delhi and hence this Court shall have jurisdiction. The order dated 16.03.2017 of this Court rather notes after amendment to the pleadings by the plaintiff to incorporate the relief of infringement, the defendant had actually withdrawn its application under Order VII Rule 10 CPC wherein it had raised an objection qua territorial jurisdiction, probably due to Ultra home (supra) since to pursue the cause for infringement the plaintiff has a right to file a suit in Delhi.
12. Further in M/s. RSPL Limited vs. Mukesh Sharma & Anr. FAO(OS) 145/2016 decided on 03.08.2016, the Court held:
'24. xxxxxx The material facts would, inter alia, have to include positive statement of facts. In the present case, paragraph 37 of the plaint contains the positive statement of fact that the defendants are committing the impugned acts within the jurisdiction of this Court by conducting, soliciting, rendering the impugned services under the impugned trade name’. Further statements are made in the very same paragraph that the plaintiff has its corporate office in Delhi and carries out its business activity in Delhi under its trade mark/label through its dealers/ distributors located in Delhi. A specific averment has also been made that the plaintiff’s goodwill and reputation is being tarnished by the alleged activities of the defendants, particularly in North-East Delhi as also in other parts of the country and that the plaintiff/appellant’s proprietary rights are being prejudicially affected in the Delhi area due to the said activities. While considering an application under Order 7 Ru
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le 10 CPC, these statements would have to be taken as correct. This would mean that this Court would have jurisdiction to try and adjudicate the present suit by virtue of Section 134(2) of the Trade Marks Act, 1999 read with Section 20 CPC. The material fact that has been pleaded by the plaintiff is that the defendants/respondents are conducting, soliciting, rendering the impugned services under the trade name – GHARI TRADEMARK COMPANY – within the jurisdiction of this Court. In case the defendants/ respondents deny this averment (as they have done in their written statement but, which cannot be looked into at the stage of Order 7 Rule 10 CPC), the issue would arise as to whether the respondents/defendants are conducting, soliciting, rendering the impugned services under the trade name–GHARI TRADEMARK COMPANY–within the jurisdiction of this Court? Obviously, the onus of proof would lie on the appellant/ plaintiff and at the stage of trial, evidence would have to be placed to substantiate this plea.' 13. Para 26 of the plaint alleges the defendant is soliciting its business at Delhi through its website and it find support from the defendant’s own assertion in an Opposition Application filed by defendant to the Registrar of Trade Mark alleging its product is widely sold all over India. This shall be enough at this stage, for the Court to prima facie believe its jurisdiction. Though Banyan Tree (supra) talks of proof but in the peculiar facts of this case, Ultra Home (supra) comes in the way of defendant. 14. The application has no merit and is dismissed. No order as to costs. CS(COMM) 1606/2016, IA No.15284/2016 15. List on 12.12.2018.