Mars, Incorporated vs Mr. T. Raghulal & Another
2009 Latest Caselaw 2339 Del

     *IN THE HIGH COURT OF DELHI AT NEW DELHI

+IAs 10465/2003, 5962/2004, 7597/2005 and 7596/2005,
in CS(OS)1906/2003

%                                             Date of decision: 29th May, 2009

 MARS, INCORPORATED                                                      .......         Plaintiff
                                     Through: Mr. Sudhir Chandra, Sr Advocate with
                                               Ms Binny Kalra, Advocate

                                              Versus

MR. T. RAGHULAL & ANOTHER                                                  ....... Defendants
                                   Through: Mr. N.K. Kaul, Sr. Advocate with Mr
                                   Vivek B Saharya, Advocate.

CORAM :-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW

1.      Whether reporters of Local papers may
        be allowed to see the judgment?   Yes

2.      To be referred to the reporter or not?                           Yes

3.      Whether the judgment should be reported
        in the Digest?                                                         yes


RAJIV SAHAI ENDLAW, J.

1. The plaintiff, an American company carrying on business, inter

alia, as manufacturer of confectionery items including ice creams

and chocolates and owning several famous brands of chocolates viz

MARS, GALAXY, SNICKERS, CELEBRATIONS, MILKY WAY, TWIX

has instituted this suit inter-alia for permanent injunction to restrain

the defendant No.2, a private limited Indian Company having its

registered office at Ernakulam, Kerala and its Managing Director

defendant No.1 also resident of Ernakulam, Kerala and carrying on

business, inter alia, of manufacturing, marketing and distribution of

cakes, breads and confectionery from using the trademark

CELEBRATIONS in connection with chocolates or chocolate coated

goods including cakes and confectionery or in any other manner

pass off their goods and / or business as those of plaintiff.

The applications of the plaintiff for interim relief (IA.No.10465/2003)

and for judgment on admissions under Order 12 Rule 6 CPC (IA. No.

5962/2004) and of the defendants for framing of preliminary issue

qua territorial jurisdiction (IA.No.7597/2005) and for deletion of

portions of the replication in advancement/variation of the case in

the plaint (IA.No.7596/2005) are for consideration in this order.

2. The senior counsel for the defendant has contested the claim of

the plaintiff for interim relief and otherwise on several counts. The

discussion hereunder is divided under the following sub-heads -

           A.    On the defendant being the prior user of the
                 word/mark CELEBRATIONS.

3. It is the claim in the plaint that the plaintiff conceived the

trademark CELEBRATIONS in the year 1988 for use in relation to a

unique packaged assortment of their various chocolate products; the

CELEBRATIONS brand was test marketed in September, 1996 in the

United Kingdom followed with a national launch in 1997; thereafter

the product under the said trademark has been sold extensively in

different world markets including India and its neighbouring

countries. The plaintiff also claims to be the registered proprietor of

the trademark CELEBRATIONS in classes 5 and 30 in various

countries, though not in India. The plaintiff claims that its products

under the trademark CELEBRATIONS has been sold through duty

free outlets in India.

4. The plaintiff's claim to have during a trademark search

conducted around January/February, 2000 found a trademark

application filed by the defendants in class 30 in respect of "bread,

biscuits, cakes, pastry, confectionery, food preparations made from

cereals, ice, sauces and spices" with respect to the trademark

CELEBRATIONS; the plaintiff claims to have got issued a cease and

desist letter to the defendants advising them of the prior rights of

the plaintiff in the trademark CELEBRATIONS since 1988 and

calling upon the defendants to withdraw their application.

5. The defendants in their written statement have pleaded that

they have been successfully selling their cakes under the mark

CELEBRATIONS since the year 1995 and after noticing the grand

success of their products had applied for registration vide

application aforesaid on 24th December, 1997. It is the contention of

the defendants that since as per the averments in the plaint, the

plaintiff tested the brand CELEBRATIONS in the market in United

Kingdom for the first time only in September, 1996, even if it were to

be believed that the mark had conceived in 1988 by the plaintiff, as

alleged, the first test appearance thereof being only in September,

1996, the defendant is a prior user of the trademark

CELEBRATIONS.

6. The plaintiff in replication has pleaded that it is the registered

proprietor of the trademark CELEBRATIONS in several countries of

the world, the earliest of which is for the mark CELEBRATIONS

dated 25th November, 1959 in United Kingdom and which predates

the defendants' application by almost four decades. (though

document shows registration effected in 1999) It is inter alia with

respect to the said plea in replication that the application for striking

off thereof has been filed. It is the case of the defendants that the

plaintiff having expressly pleaded in the plaint that the trademark

CELEBRATIONS was coined in 1988, cannot be permitted to plead

contrary thereto a registration thereof of 25th November, 1959.

7. Reliance is placed on M/s Anant Construction (P) Ltd Vs

Shri Ram Niwas 1994 (4) AD Delhi 185 and Dr Mrs N.D. Khanna

Vs Hindustan Industrial Corporation AIR 1981 Delhi 305 to

contend that such new and inconsistent pleas cannot be permitted to

be introduced through replication.

8. The senior counsel for the plaintiff has also relied on Cadila

Health Care Ltd Vs Cadila Pharmaceuticals Ltd (2001) 5 SCC

73, Honda Motors Company Ltd Vs Charanjit Singh 2003 (26)

PTC 1 (Delhi) and Chhattar Extractions Ltd Vs Kochar Oil Mills

Ltd AIR 1996 Delhi 144 to demonstrate the essentials of passing off

and has contended that the prior user is essential in an action for

passing off. Attention in this regard is invited to Coolways India Vs.

Princo Air Conditioning & Refrigeration PTC (Suppl.) (1) 470,

Uniply Industries Ltd. Vs. Unicorn Plywood Pvt. Ltd. (2001) 5

SCC 95, Bharat Hotels Ltd. Vs. Unison Hotels Ltd. 2004 (28) PTC

404 (Del.) It is contended that in the present case the defendant is

the prior user of the mark CELEBRATIONS. Reference is also made

to N.R. Dongre Vs Whirlpool Corporation 1996 (2) Arb.L.R. 488

SC to contend that even in a case of infringement of a registered

trademark prior use is a valid defence.

(B) Of the plaintiffs having not used the mark in India and being thus not entitled to any injunction in this action for passing off.

9. The senior counsel for the plaintiffs relied upon Franz Xaver

Huemer Vs New Yash Engineers AIR 1997 Delhi 79 (though

relating to patent) and Wyeth Holdings Corporation Vs Burnet

Pharmaceuticals (Pvt) Ltd 2008 (36) PTC 478 Bombay to contend

that to be able to maintain an action for passing off, it is essential for

the plaintiff to show use of the trademark in India. Reference is

made to para 11 of the plaint wherein the year when the plaintiff

claims to have set up operations in India has been left blank and

where it is only pleaded that the plaintiff through a subsidiary Effem

India Pvt Ltd is importing a variety of its products under well known

brands into India and that the said Effem India is currently engaged

in manufacture, imports and distribution of pet foods in India. It is

further highlighted that the plaintiff in the said paragraph admitted

that the direct operation had not been commenced by the plaintiff in

India. It is further pointed that the only averment of the plaintiff of

use of the mark in India is of the availability of the goods in the duty

free shop at the airports and of the goods being available to the

Indians visiting abroad.

10. It is further the contention of the senior counsel for the

plaintiff that the plaintiff has in the replication taken contrary pleas

in this regard also. On the contrary, it is contended that it is the

admitted case that the defendant has been using the trademark in

India.

11. Per contra, the senior counsel for the plaintiff has contended

that though, at the time of institution of the suit, the plaintiff's

subsidiary Effem India Pvt Ltd only provided support to local

distributors who were directly importing the confectionery products

from the plaintiff's group companies but now the said Effem India is

importing directly. It is further contended that the mark aforesaid of

the plaintiff has a trans-border reputation. Reference is made to

N.R. Dongre (supra). It is further contended that non availability of

the CELEBRATIONS product of the plaintiffs is no bar to the

plaintiffs maintaining the present action. Strong reliance is placed

on Milment Oftho Industries Vs Allegran Inc AIR 2004 SC 3355

(though relating to pharmaceutical products and in the context of

doctors) laying down that the mere fact that the mark has not been

used in India would be irrelevant if the party suing for the said mark

is first in the world mark.

12. It is contended that the plaintiffs CELEBRATIONS chocolates

have been available in India since 1997 not only at duty free outlets

but also through distributors who directly import the goods into

India. It is further argued that subsequent to the institution of the

suit, the CELEBRATIONS chocolates are now being directly

imported into India by the plaintiff's subsidiary aforesaid.

(C) On the ground of this court not having territorial jurisdiction.

13. The plaintiff has invoked territorial jurisdiction of this court on

the plea of the defendants' product being offered for sale through

their website, inter alia, in Delhi and which can be accessed by

traders and consumers in Delhi. It is further pleaded that dynamic

effect of the defendants' wrongful use of the impugned trademark is

also felt by the plaintiff, inter alia, at Delhi where the plaintiff is

carrying on business through its subsidiary aforesaid. The

defendants have, per contra, in their written statement contended

that their products are sold only in the States of Kerala, Tamil Nadu

and Karnataka; that no cause of action had accrued to the plaintiff

against the defendants within the territorial jurisdiction of this court;

that the defendants admittedly did not have their place of business

and residence within the jurisdiction of this court. It is further

pleaded that even the plaintiff does not have as its registered office

in the jurisdiction of this court. With respect to the website, the

same is not denied but it is argued that it is a dormant and not an

interactive website. Reliance is placed on Haryana Milk Foods Ltd

Vs Chambel Dairy Products 2002 V AD Delhi 728 and (India TV)

Independent News Services Pvt Ltd Vs India Broadcast Live

LLC 2007 (35) PTC 177 (Delhi) and host of other judgments in this

regard. Judgments in support of the proposition of a preliminary

issue going to the root of the matter being required to be decided

first have also been cited.

14. Per contra, the senior counsel for the plaintiff has argued that

the admission by the defendants of the website clearly indicates that

one can place an order for all kinds of cakes of the defendants from

Delhi and to be delivered to any part of Chennai, Bangalore,

Coimbatore and any parts of Kerala. It is further argued that there

is a very large section of persons from these three South Indian

States living in Delhi who are interested in placing orders to their

friends and relatives in places mentioned above and therefore the

cause of action has also arisen in Delhi. Admission of the defendant

of advertising its products at Delhi through its website aforesaid is

relied upon. The plaintiff has also filed an affidavit of an

independent investigator, inter alia, to the effect that he had placed

order on the defendants from Delhi for delivery at Bangalore.

Though the senior counsel for the defendants objected to the filing of

the said affidavit but in my view the parties can, in support of their

applications for interim relief, file affidavits by way of evidence in

support of their respective cases. The same is permitted by

language itself of Order 39 Rule 1 CPC. The weight to be given

thereto is of course in the domain of the courts. The senior counsel

for the plaintiff has also relied upon Jawahar Engineering Co

Ghaziabad Vs M/s Jawahar Engineering Pvt Ltd 1983 PTC 207

and Pfizer Products Vs Rajesh Chopra 2006 (32) PTC 301 Delhi to

contend that where the trademark is sought for sale in Delhi

amongst other places and or where a threat of sale exists has the

territorial jurisdiction to entertain the suit. It was further contended

that since on the basis of the admitted website, business was

solicited from/carried on by the defendants at Delhi, this court would

have jurisdiction. Independent News Services Pvt. Ltd. (supra) is

contended to be in favour of plaintiff. Lastly, it was argued that the

jurisdiction being a mixed question of fact and law, cannot be

decided as a preliminary issue. Reliance was also placed on Pepsico

Inc Vs Sunrise Beverages 2007 (35) PTC 687 to contend that since

the goods of the plaintiff are sold at Delhi the damages to the

plaintiff's mark has occurred at Delhi this court would have

jurisdiction.

(D) On the ground of delay

15. It is the case of the plaintiff in the plaint itself that the plaintiff

learnt of the use by the defendants of the mark CELEBRATIONS in

January, 2000. The suit has been filed in the year 2003. The plaintiff

has pleaded that the plaintiff since 2000 was issuing cease and desist

notices to the defendants and finally instituted the suit on noticing

the website of the defendants and which is available at Delhi. The

senior counsel for the defendants has contended that this being an

action for passing off, the plaintiff is not entitled to interim relief for

the reason of delay, which is vital in such actions. It is contended

that the defendants have established use of the impugned trademark

since 1995 and the suit has been filed after eight years in 2003; the

defendants in the meanwhile have built goodwill.

16. Per contra, the senior counsel for the plaintiff has contended

that there is no delay. It is argued that the present suit is a quia

timet action. It is urged that the plaintiff has instituted the present

suit not for the relief of restraining the defendants from using the

trademark CELEBRATIONS with respect to plum cakes for which the

defendants are presently using the said trademark but only for the

relief of restraining the defendants from using the said trade mark in

relation to chocolate or chocolate coated goods including cakes and

confectionery and with respect whereto the defendants are

admittedly not using the trademark. It is contended that the suit has

been instituted because the plaintiff is under a threat. Thus, it is

contended that the question of delay or latches does not arise.

Reference in this regard is made to Mars Inc. Vs. Kumar Krishna

Mukherjee 2003 (26) PTC 60 (Del.) and Bank of America Vs.

Registrar of Trade Marks [1976] FSR 582 (that TM is only in

relation to goods and not dehors the goods). Delay is also stated to

be not coming in the way of the plaintiff for the reason of the

opposition of the plaintiff to the application for registration of

defendant having been filed and pending all this while.

(E) Of the defendants being honest and concurrent user.

17. It is contended that in the aforesaid facts and circumstances

the defendants can at best be an honest and concurrent user and on

that principle alone the plaintiff is not entitled to any injunction

against the defendants. Documents are filed to show that defendants

got the mark designed from an agency, bona fide; it is also

contended that colour combination, formation of alphabets,

packaging of/in the defendants' mark is entirely different from that

in plaintiff's and by no means any intent to piggy ride on plaintiff is

made out. It is further contended that there could be no question of

deception since the plaintiff's product was till the institution of suit

admittedly not available in the markets here.

18. The senior counsels for both the parties have also drawn

attention to the documents filed by each of the parties to

demonstrate prior use. The senior counsel for the plaintiff has

vehemently relied upon advertisement of the plaintiff of the goods

under the trademark CELEBRATIONS appearing in the 24th August,

1996 issue of the Grocer's Magazine which is stated to be a most

read for all persons in the food trade as the defendants. It is

contended that though from the documents filed by the defendants it

appears that the word CELEBRATIONS was being used by the

defendants prior to the said issue only as a description for one of the

varieties of its plum cakes but the defendants after knowing of the

launch by the plaintiff of its goods under the said trademark has

started giving prominence to CELEBRATIONS so as to take

advantage of the marketing and efforts of the plaintiff and to pass off

their goods as that of the plaintiff. The senior counsel for plaintiff

would call it the "Smoking Gun Evidence" of defendants' guilt.

Arguments were also addressed on the plaintiff using the word

CELEBRATIONS as its trademark and the defendants, at least till the

launch in the manner aforesaid of the plaintiff's trademark not using

the word CELEBRATIONS as a trademark; their trade mark being

ELITE. It is argued prior user is relevant only as a Trade Mark and

the user shown by the defendants is not as a Trade Mark. It was

further pointed that that while the defendants had not applied for

registration as a trademark of any of the other words used by it to

describe various varieties of its products, registration had been

applied for of CELEBRATIONS with a malafide intention so as to

squat over the said trademark for illegal enrichment, being fully

aware that the plaintiff having worldwide business in the said

trademark and having applied for and being in the process of

obtaining registration of the said trademark in several countries of

the world, would be ultimately inclined for registration of the same

in India also. The senior counsel for defendants counters that just as

MARS is the principal brand of plaintiff with CELEBRATIONS being

only a sub brand, ELITE is the principal brand and CELEBRATIONS

sub brand of defendants.

19. The aforesaid factual matrix and the pleas and counter pleas

would demonstrate that the present is not a suit in which it can be

said that no trial is necessary or which can be decided on documents

alone, as in several of the cases of infringement of

trademark/copyright. The case also does not fall in the exception

carved out in Milment Oftho (supra) with respect to Multinational

Corporations having no intention of coming to India or introducing

their product in India and only wanting to throttle an Indian

Company. The plaintiff claims to be in India in a big way.

20. It will have to be determined only after trial and nothing can

be said with certainty at this stage as to who is the first user / prior

user of the trademark. The nature and extent of the use will also

have to be adjudicated only by examination and cross examination of

witnesses. I am unable to hold that the interim relief can be denied

to the plaintiff at this stage on the grounds of territorial jurisdiction

or delay also. The question of territorial jurisdiction is also not found

to be such which can be adjudicated without recording any evidence.

As aforesaid, the plaintiff has filed affidavit of a purchase having

been made of the goods of the defendants sitting in Delhi. The

nature of the website of the defendants will also have to be

adjudicated only after evidence.

21. A preliminary issue can be framed, which can be adjudicated

without recording any evidence. However, where an issue even if

going to the root of the matter requires evidence to be recorded, the

same cannot be treated as a preliminary issue for adjudication before

other issues. Law/procedure does not permit a piecemeal trial. On

the aspect of delay also, there is merit in the contention of the senior

counsel for the plaintiff. The suit is for a threatened action. Even if

a threat is presumed to have existed for over 3 or four years prior to

the institution of the suit, the same would not be a ground for

denying the interim relief. Threat is a matter of perception. A

person is not expected to rush to the court immediately. The

defendants admittedly, as per their own admission, have confined

their business to only three States of this country. The defendants

are also till date not in the field of chocolate/chocolate related

products. The plaintiff appears to have reconciled to the defendants

using the mark CELEBRATIONS in relation to the plum cakes for

which the defendants are using the mark till now. The plaintiff

appears to have been spurred into action on seeing the expansionist

plans of the defendants by widening their reach through website and

realizing that if they do not initiate action now, the defendants may

tomorrow to the prejudice of the plaintiff also use the said trademark

in relation to the products same as that of the plaintiff. The present

is a different case in this respect from the others.

22. The judgments cited by the senior counsel for the defendants

are, where the impugned goods have been marketed for selling and

with the knowledge of the plaintiff. In those cases it has been held

that the plaintiff having acquiesced and/or allowed the defendants to

continue its business is not entitled to the interim relief. Here

admittedly there is no business as yet, which is sought to be

restrained. There could then be no question of delay. One cannot

also loose sight of the fact that the plaintiff is opposing the

registration applied for by the defendant. The defendant was from

such opposition fully aware of the stand of plaintiff. It is not the case

of defendant that the defendant has after knowledge of opposition by

plaintiff extended or expanded the trade mark subject matter of suit

to other goods/territories. There is thus not consent, acquiescence,

waiver found in the conduct of the plaintiff so as to disentitle it to

interim relief on this ground, if otherwise entitled to.

23. The stand of the defendants in their written statement guides

me to the interim order called for in the present case. The

defendants in their written statement in para 9 of the preliminary

objections have stated

"However, the defendants have been selling only traditional plum cakes under the brand CELEBRATIONS especially during the festive seasons and no chocolate base cake or confectionary has even been manufactured or sold by the defendants herein under the brand name "CELEBRATIONS". The plaintiffs have admitted in the suit that they manufacture only cocoa based products and hence there is no injury at all, caused to the plaintiffs and there is no cause of action for the present suit. The plaintiff has no proprietary right over the brand "CELEBRATIONS" and they have no trademark application pending with regard to the same before the Registrar of Trademark in India. The defendant has been advertising its brand of "CELEBRATIONS" plum cakes in its website ever since 1998 itself. In fact, injury has been caused to the defendants, who are liable to be compensated by the plaintiffs who are harassing the defendants in the name of imaginary grievances."

24. The defendants again in para 23 of the reply on merits in their

written statement have stated

"The defendants are not manufacturing any confectionary and are manufacturing only cakes and biscuits. Hence the apprehension of the plaintiffs at present is totally misplaced and there is no injury caused to them whatsoever."

25. Yet again in para 25 it is stated -

"These defendants have never sold chocolate coated cakes under their trademark and copyright CELEBRATIONS. The plaintiffs have no cause of action at all and the defendants have every right to continue the sale of their CELEBRATIONS brand of plum cakes."

26. The aforesaid being the state of the pleadings and the present

suit itself having already remained pending for the last nearly six

years and the defendants in spite of knowledge of the plaintiff

claiming rights with respect to the trademark CELEBRATIONS and

marketing their chocolates thereunder having not taken any steps

for whatsoever for restraining the defendants from doing so, in my

prima facie view the rights have accrued to the plaintiff also, even if

all the pleas of the defendants are to be believed, to use the

trademark CELEBRATIONS in India, at least in relation to cocoa and

cocoa based products.

27. The products of the plaintiff and the defendants though having

some similarity are yet different. The parties notwithstanding

vehement contest in these applications appear to be reconciled to

both existing in harmony. This court also by interim order dated 19th

April, 2004 had restrained the defendants from using the trademark

CELEBRATIONS for chocolate related goods. Nothing has been

informed that the defendants have since then also forayed into

chocolate or chocolate coated goods. In my view, equity shall be

balanced if during the pendency of the suit interim order as claimed

is granted, i.e. of restraining the defendants from using the mark

CELEBRATIONS in relation to chocolate and chocolate coated goods.

28. It is significant that it is nowhere the case of the defendants

that the plaintiff has copied the mark of the defendants. In fact, the

case of the defendants is of its business having been restricted to

three States only. The defendants do not even claim a pan Indian

least pan international presence. It is best that the status as

prevailing today continues during the trial also. Judicial notice of

events subsequent to the institution of the suit can be taken. It is the

case of the plaintiff that since the institution of the suit the

subsidiary of the plaintiff in India has been directly importing,

distributing and marketing the chocolate goods in the name of

CELEBRATIONS in India. Even otherwise there has been a sea

change in the international trade and travel in the last six years since

the suit was instituted. Owing to the outsourcing of various services

to India and Indians setting up businesses abroad and

communication barriers collapsing with lowering of tariffs, there is

an increasing number of Indians travelling to UK and other countries

where the plaintiff claims to have launched the mark first and where

the said mark is claimed to be established and similarly a larger

number of persons from those counties, of Indian or foreign origin,

are coming to India and/or communicating with each other.

Undoubtedly if the chocolate related goods under the name/marks

CELEBRATIONS are permitted to be marketed/sold by the

defendants during the pendency of the suit, the same is likely to lead

to confusion amongst the customers and the possibility of the

customers picking the goods of the defendants from the shelve

relying upon their experience/reputation of the goods of the plaintiff

of the same mark cannot be ruled out. The same ought not to be

permitted during trial especially when the same has not happened

till now.

29. I am also of the view that during the pendency of the suit, the

use of the mark by the defendants ought to be restricted to the same

manner and style as of now. The manner and style of use of the

mark by the defendants as of today is to equally highlight the

trademark ELITE of the defendants and as has in fact been argued

by counsel for defendants. In fact, I find that prominent use by the

defendants of the mark ELITE alongwith CELEBRATIONS is a

distinctive feature between the goods of the plaintiff and of the

defendants even though related and which may guide the customers

and prevent confusion/deception. The business of the defendants of

plum cakes under the name CELEBRATIONS with the trademark

ELITE also prominently displayed is unlikely to make the buyers

thereof treat the same to be coming from the stable of the plaintiff

and vis versa. However, if the defendants, during the pendency of

the suit, are permitted to sell even its non chocolate products under

the name of CELEBRATIONS only with the trademark ELITE being

deleted or not being given prominence, the same is again likely to

cause confusion.

30. In cases of this kind, it is not the parties alone whose interest

has to be protected. The public good and of the good of the ultimate

buyers/consumers who act on the basis of the trademark is also to be

given consideration. Though the senior counsel for the plaintiff had

also argued of the defendants having for the first time used the word

CELEBRATIONS only and after the announcement of the launch of

the mark CELEBRATIONS of the plaintiff and of the plaintiff having

originally used the word CELEBRATION but in my view, neither does

anything turn on the same nor do I find any such clear action on the

part of the defendants. On the contrary, the documents show that

the defendants even earlier had been using the mark CELEBRATION

and CELEBRATIONS interchangeable.

31. I am thus inclined to grant the interim relief claimed and the

order dated 19th April, 2004 and to make the same absolute during

the pendency of the suit. The defendants, their officers, agents are

thus restrained from manufacturing, selling and offering for sale or

advertising chocolate or chocolate coated goods including cakes and

confectionary under the mark CELEBRATIONS or any other mark

deceptively similar thereto. The defendants are also restrained from

varying or altering the use of the mark CELEBRATIONS on the goods

already being used, as set out in the written statement and recorded above,

so as to pass off the said goods even as those of the plaintiff. However, the

said order is subject to the condition on the plaintiff not to use the

trademark CELEBRATIONS in relation to the goods for which the

defendants is using the same and not to use the mark in a manner similar

to that of the defendants.

32. As far as the application of the plaintiff under Order 12 Rule 6 CPC

is concerned, I find that the defendants have in the written statement while

stating that they are not using the mark CELEBRATIONS at present for

chocolate or chocolate coated goods have not admitted to the suit being

disposed of on those terms and have asserted their right, to in future

use the said mark in relation to chocolate goods also. In the

circumstances there is no such admission on the basis whereof the

suit can be decreed as claimed. IA.No. 5962/2004 is thus dismissed.

33. On IA.No.7597/2005 of the defendants for framing of

preliminary issue I have already held above that the issue of

territorial jurisdiction requires evidence and any issue which

requires evidence cannot under the CPC be framed as a preliminary

issue and has to be tried alongwith other issues. IA.No.7597/2005 is

thus dismissed.

34. As far as IA.No.7596/2005 of the defendants for striking off

portions of the replication of the plaintiff is concerned, at this stage I

do not deem it appropriate to allow the same. The plaintiff having

taken the pleas to which objections is taken immediately on the filing

of the written statement, and the suit being at a preliminary stage,

even if the said pleas are ordered to be struck off, the plaintiff would

still have a right to apply for amendment of the plaint, inter alia, to

take the said pleas. The same is likely to lead to further delays in the

disposal of the suit. The said application as such is disposed of with

the direction that the effect of the inconsistency in the pleas in the

plaint and the replication shall be considered at the stage of final

hearing and it shall be open to the defendants to lead any evidence

in rebuttal to any new pleas taken by the plaintiff in the replication.

RAJIV SAHAI ENDLAW (JUDGE) May, 29 2009 M