Mohan Kumar vs M/S. Narendra Products
1995 Latest Caselaw 566 Del

JUDGMENT

Devinder Gupta, J.

1. The following preliminary issue was framed on 2nd November, 1993.

"Whether this court has the territorial jurisdiction to entertain and try the present suit ?

Parties have led evidence on affidavits who have been heard.

2. The petitioner has filled a suit under Section 105 and 106 of the Trade and Merchandise Marks Act, 1958 for grant of a decree of injunction restraining the defendants from manufacturing, selling offering for sale, advertising or displaying directly or indirectly or dealing in Pan Masala (Gutka) and allied goods under the trade mark SHANKER or any other trademark identical with or deceptively similar to the plaintiff's trade mark JAISHIVSHANKER and for rendition of accounts. Plaintiff has alleged that it is engaged in the business of manufacturing \scented Supari (Betal not powder) and Pan Masala and is the proprietor of trade mark JAISHIVSHANKER logo in respect of the abovementioned goods. The plaintiff adopted the trademark JAISHIVSHANKER logo on 13th April, 1992 in relation to scented supari and extended the use of the said trade mark in relation to Pan Masala in the second week of February 1993 after getting approved the label from Central Excise Department (Rajasthan). It is also Plaintiff's case that in order to acquire statutory rights of the said trade mark, the plaintiff filed an application for registration under application No. 591215 for scented supari and Pan Masala falling in Clause 31 of the Fourth Schedule of the Trade and Merchandise Marks Act, 1958. After making other averments in is claimed by the plaintiff that defendant issued and advertised a Trade Mark Caution Notice in "Aaj" dated 1st April 1993 which is published from Agra under the caption "Beware of Imitators" and also claiming therein to be the proprietor of the trade mark SHANKER by the defendant is dishonest and fraudulent. Goods being sold by the plaintiff as well as by the defendant are of the same description. The plaintiff claims that cause of action arose on 1st April 1993 when the defendant issued an advertisement in the Hindi Newspaper 'Aaj' under the caption 'Beware of Imitators'. As regards territorial jurisdiction of the court, it is alleged in para 14 of the plaint that the defendant works for gain in Delhi as is evident from the newspaper 'Aaz' containing advertisement pursuant to the trade mark Shanker which is having wide circulation in Delhi and the defendant is also selling and marketing is goods under the impugned trademark in Delhi. Thus, this court has jurisdiction to entertain and try this suit. Defendant has contested the suit and has raised an objection as regards territorial jurisdiction. The defendant has denied the contents of para 14 alleging that no cause of action has arisen within the territorial Jurisdiction diction of this court and the newspaper Aaz is not having any circulation in Delhi. Defendant is also not selling any goods in Delhi, therefore, Delhi \court has no jurisdiction to entertain and try this suit.

3. By way of evidence, the plaintiff has produced on record copy of application No. 584168 dated 4th November, 1992 by which the defendant has sought registration of trade mark Shanker with respect to Gutka Pan Masala before the Trade Mark Registry, New Delhi. The defendant claiming himself to be the proprietor has claimed that he is a manufacturer, supplier and trade and has sought registration of trade mark Shanker on the ground that he is the user of this trade mark since 1992. From the copy produced on record there is no manner of doubt that the application has been duly advertised in Delhi. In view if this material on record and in view of the nature of the suit brought about by the plaintiffs, this court undoubtedly will have jurisdiction to entertain and try the suit. This court in M/s. Jawahar Engineering Co. and others v. M/s. Jawahar Engineers Pvt. Ltd. has held that an injunction being prohibitive in nature is intended to prevent something that is likely to happen. Once the plaintiff has learnt that the defendant has applied for registration of trade mark in Delhi, they can claim an injunction to prevent any sale of the infringing product in Delhi. In another decision in M/s. Amar Soap Factory v. M/s. Public Gram Udyog Samiti (1985 PTC 85) it was held that the publication of the trade mark application by the defendant in the trade mark journal issued from Delhi can be said to be an infringement of the plaintiff's trade mark. In view of the ratio jurisdiction to entertain and try the instant suit. In view of the evidence led and the allegation made that the defendant's application has been advertised in trade mark journal in Delhi. Preliminary issue is decided accordingly.

Suit No. 811/93

4. List on September 19, 1995, I.A. 4697/94.

5. List on November 21, 1995 for disposed reply if any by filed within a period of four weeks.