Pachranga Syndicate Pvt. Ltd. vs N. Kheri Gram Udyog Mandal & Anr.
2010 Latest Caselaw 393 Del

*             HIGH COURT OF DELHI : NEW DELHI

+           IA Nos. 11081/2003, 179/2008, 8568/2008 & 2977/2009 in
            CS (OS) No. 2029/2003

     Pachranga Syndicate Pvt. Ltd.                           ... Plaintiff
                    Through : Mr. S.K. Bansal, Adv.

                                   Versus

     N. Kheri Gram Udyog Mandal & Anr.              ... Defendants
                    Through : Mr. N.K. Kantawala with Mr.
                              Rajesh Sharma and Mr. Priyank
                              Sharma, Advs.

Reserved on : September 3, 2009
Decided on : January 25, 2010

Coram:

HON'BLE MR. JUSTICE MANMOHAN SINGH

1. Whether the Reporters of local papers may
   be allowed to see the judgment?                     No

2. To be referred to Reporter or not?                  Yes

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

MANMOHAN SINGH, J.

1. By this order I shall dispose of the following applications

filed by the parties:

a) IA No.11081/2003 under Order XXXIX Rules 1 & 2 of

the Code of Civil Procedure, 1908 (hereinafter referred to as

the CPC) filed by the plaintiff.

b) IA No.179/2008 under Order VI Rule 17 CPC filed by the

plaintiff.

c) IA No.8568/2008 under Order VII Rule 10 CPC filed by

defendant No.1.

d) IA No.2977/2009 under Section 151 CPC filed by the

plaintiff.

2. The plaintiff has filed the suit under Sections 133 & 134 of

the Trade Marks Act, 1999.

3. The brief facts are that the plaintiff is a company duly

incorporated under the provisions of the Companies Act, 1956 and since

its incorporation in the year 1994 the plaintiff has been engaged in the

business of manufacture, sale, trade and exports of pickles of various

kinds and related goods like food processing. As per the plaintiff, in the

year 1994 the plaintiff honestly and in a bona fide manner in the course

of trade started using the trade mark „Pachrangas Farm Fresh‟ in an

artistic manner and the trade name „Pachranga‟, which is being used in a

distinctive manner with artistic work which is unique due to its get up,

lettering styles and colour scheme. The said trade mark „Pachranga

Farm Fresh‟ is being used commercially, openly and exclusively in

relation to the goods mentioned above and the plaintiff has built up a

valuable trade, goodwill and reputation therein and acquired proprietary

rights therein.

4. As per the plaintiff, it is the proprietor and prior user of the

said trade mark and name. It is also stated that in the year 1943, the

ancestors of the Directors of the plaintiff company i.e. Sh. Chander

Mohan Dhingra and Sh. Rajinder Dhingra started the business of pickles

storage and processing and with the passage of time the business was

expanded into other allied goods like food processing.

5. In the year 1953, the trade mark Pachranga was duly

registered with the Registrar of Trade Marks under registration No.

158354 in the name of the firm and its partners in class 29 in respect of

pickles. The name of the firm was M/s. Muralidhar Ram Narain. There

was a disclaimer attached to the said registration to the effect that the

registration would give no right of exclusive use of the expression

"Achar Pachranga". One of the partners of the said firm was Sh. Asa

Nand who is the father of Mr. Chander Mohan Shingra and grand father

of Mr. Rajinder Kumar Dhingra. Both are at present Directors of the

plaintiff company.

6. It is averred in the plaint that the family firm acquired rights

under the trade name Pachranga by virtue of being legal heirs and by

transmission. Since 1994, the present company was formed and

promoted by its promoter/directors being legal heirs and part of the same

family adopted and used the name Pachranga and Farm Fresh. It is also

stated that the directors of the plaintiff had earlier floated another

partnership firm known as Pachranga International which had as its

partners Sh. Asa Nand Dhingra, Sh. Chander Mohan Dhingra and Sh.

Rajinder Kumar Dhingra. It was the same business as pickles.

7. Later on, a change came in the constitution of the aforesaid

firm due to ingress and egress of incoming and outgoing partners. Now

the firm is comprised of Sh. Chander Mohan Dhingra, Sh. Rajesh Kumar

Dhingra and Sh. Amit Kumar Dhingra as partners thereof and the firm is

known as Pachranga International (Chander Group).

8. The averments made by the plaintiff against the defendants is

that they have been in the same trade of pickles and allied goods. The

defendant No.1 is the manufacturer and the defendant No.2 is the

marketing agent of defendant No.1. It is stated that the defendants have

adopted and commercially started using the trade mark and label

Pachranga which is identical to/ deceptively similar with the

trademark/label of the plaintiff. The trademark Pachranga forms an

essential part of the impugned trademark and therefore, the defendants

are passing off their goods as those of the plaintiff‟s. The defendant is

also infringing the copyright claimed by the plaintiff in the label. It is

contended by the plaintiff that the impugned adoption and user by the

defendants is dishonest, tainted, mala fide and fraudulent and it has been

adopted by the defendants with the calculated view to cause deception

and confusion in the market and to pass off the goods of the defendants

as that of the plaintiff as the defendants were aware about the name,

goodwill and reputation of the plaintiff. In the interim application the

plaintiff has sought the prayer restraining the defendants from using the

impugned trademark Pachranga and label attached as Annexure-D-A-1

or any other trademark/label identical to/ deceptively similar with the

trademark of the plaintiff.

9. The suit between the plaintiff and defendant No.2 was

resolved by order dated 5.12.2005 passed by this Court wherein the

defendant No.2 made the statement that he would completely opt out of

the business of making pickles and would not copy any of the labels of

the plaintiff. In view of the statement, the plaintiff‟s suit was dismissed

as withdrawn in respect of defendant No.2.

10. The defendant No.1 placed the amended label before the

Court which was referred in order dated 29.1.2004. The case of the

defendant No.1 is that the defendant No.1 is carrying on its lawful

business as manufacturer and merchant of pickles under the descriptive

expression PACHRANGA since the year 1998 within the knowledge of

the plaintiff.

11. It is also stated in the written statement that the defendant

No.1 had advertised its trademark in the magazine under the title "2nd

National Seminar on Achar and Murabba" in March 2003 at Page

No.40 in which the advertisement of the plaintiff also appears at the back

cover. As far as the label part is concerned, the defendant has stated that

the new amended label has already been filed on record.

12. It is stated by the defendant that the word PACHRANGA is a

descriptive term for pickles and the plaintiff has no monopoly rights for

the same. As far as the registration referred by the plaintiff bearing

No.158354 is concerned, it is stated that the registration is subject to the

disclaimer of the words ACHAR PACHRANGA. The contention of the

defendant no. 1 is that there is delay, laches and acquiescence on the part

of the plaintiff due to which the plaintiff is not entitled to discretionary

relief of injunction.

13. Defendant no. 1 also raised the preliminary objection that the

plaintiff has not paid the proper court fee, therefore the suit of the

plaintiff is liable to be dismissed.

14. Issues in the above said matter were framed on 31.8.2007.

Thereafter, further two applications being IA No.179/2008 under Order

VI Rule 17 CPC for amendment of the plaint by the plaintiff and IA

No.8568/2008 under Order VII Rule 10 CPC by the defendant No.1

were filed.

15. I have heard the arguments in both the applications along

with another pending application being IA No.11081/2003 under Order

XXXIX Rules 1 & 2 CPC.

16. I shall first take up the applications filed by the plaintiff

under Order VI Rule 17 read with Section 151 CPC. In this application

the plaintiff has sought amendment in the plaint on the ground that the

plaintiff‟s two applications for registration bearing No.735067 and

672552 which were opposed by M/s. Pachranga Foods, C-3, Industrial

Area, Panipat, Haryana have now been registered as the said parties had

entered into an agreement on 29.10.2007 whereby both the oppositions

had been withdrawn by the latter party. According to the plaintiff, as a

result of the withdrawal of the said notice of oppositions, the said

trademark applications have been registered.

17. In the amendment sought, the plaintiff has sought to include

the relief of infringement of trademark in addition to the relief of passing

off and infringement of copyright etc. already filed. It is settled law that

an amendment can be allowed during the pendency of the suit for

passing off by incorporating the relief of infringement of trademark if

the said trademark is registered in favour of the plaintiff. However, it

appears from the record in the present case that this application has been

pending for the last two years and the registration certificates have not

been placed by the plaintiff on record. In the absence of the said

registration certificates it is not possible to give a finding to the effect

that the said trademarks have been registered with the Registrar of Trade

Marks as the Court cannot allow such amendment without prima facie

proof of registration as per rules. Therefore, the amendment cannot be

allowed and it will be kept pending till the time the plaintiff is able to

file the copies of the registration certificates, if any, granted by the

Registrar of Trade Marks.

18. As far as the other application being IA No.8568/2008 under

Order VII Rule 10 CPC filed by the defendant No.1 is concerned, it is

stated by the defendant No.1 that the parties to the suit are carrying on

business and residing outside the jurisdiction of this Court i.e. at Panipat,

therefore this Court has no territorial jurisdiction to entertain and try the

present suit at least as regards a suit for passing off which is a separate

cause of action and the plaintiff has to satisfy the Court about its

jurisdiction to invoke the same.

19. It appears from the record that issue No.1 has been framed by

this Court in respect of territorial jurisdiction. The present suit has been

filed by the plaintiff for infringement of copyright, passing off etc. The

plaintiff has also mentioned in the application for amendment that the

trademark has now become registered although the registration

certificates have not been filed. The plaintiff has invoked the territorial

jurisdiction of this Court on various grounds i.e. (i) the defendants are

committing the infringing of passing off within the jurisdiction of this

Court; (ii) the plaintiff is also carrying on and managing its goods and

business under the said trademark in Delhi and adjoining areas; (iii) the

plaintiff has its registered office at Nanak Enclave, Kingsway Camp,

Delhi; (iv) the plaintiff also has dealers in Delhi namely M/s. Amit

Enterprises at C-164, Sector-7, Rohini, Delhi.

20. The issue of jurisdiction has been dealt with in the case of

Tata Iron & Steel Co. Ltd. v. Mahavir Steels & Ors.; 47(1992) DLT 412

wherein this court has dealt with a similar objection and has held in para

11 of the judgment which reads as under :

"11. The question regarding jurisdiction can only be gone into after the evidence of the parties is recorded in the case. Even in the Punjab case the suit was not thrown out at the threshold under Order 7 Rule 11 the Code but only after the parties were given an opportunity to lead evidence. The plaint in the present suit categorically states that the defendant no. 1 No. 1 was selling the channels of defendant no. 1 No. 2 under the offending trade mark which is deceptively similar to that of the plaintiff. On these averments the Court must assume jurisdiction and proceed with the suit to determine the question relating to the confirmation/vacation of the stay order at this stage."

In the case of LG Corporation & Anr. v. Intermarket

Electroplasters(P) Ltd. and Anr.; 2006 (32) PTC 429, para 7 reads as

under :

"7. ...The question as to whether the Court has territorial jurisdiction to entertain a suit or not has to be arrived at on the basis of averments made in the plaint, that truth or otherwise thereof being immaterial as it cannot be gone into at this stage..."

In view of settled law, prima facie, it appears that this Court

has the territorial jurisdiction to entertain and try the said suit. However,

the issue in this regard has already been framed. The plaintiff ultimately

has to satisfy the Court as regards the question of territorial jurisdiction

at the time of the final hearing of the suit. This application has no force

and the same is false and frivolous and is dismissed with cost of

Rs.10,000/- to be paid by defendant no. 2 in each application by the next

date of hearing.

21. Now coming to the merit of the case, as already stated the

issues in the above said matter were framed on 31.8.2007. The plaintiff

has also produced evidence by way of affidavit on 13.11.2007.

However, the cross-examination has not been carried out by the

defendants perhaps in view of the pendency of the applications.

22. At the time of hearing of interim application, learned counsel

for defendant No.1 has referred the judgment passed by Sh.S.C. Goyal,

ADJ, Panipat, dated 4.8.2004 wherein the suit filed by the firm

„Pachranga International‟ has been dismissed on merit and no relief with

respect to the trademark Pachranga has been granted. He submits that no

appeal or review against the said judgment has been preferred by the

plaintiff. He submits that one of the Directors was a partner of

Pachranga International when the suit was filed in the year 2000. It is

argued that the same order be passed in the present case also.

23. Mr. Bansal on the other hand has argued that the defendant

No.1 in the present case was not a party in those proceedings, therefore,

the present application for injunction is to be decided as per its own

merit. Mr. Bansal has also argued that said judgment does not operate as

res judicata in the present case as it is not binding upon the higher court.

24. Mr. Bansal further argued that since now the trademark

Pachranga has been registered in the name of the present plaintiff, a

fresh cause of action has arisen even against M/s. Panipat Pachranga

Industries, who was the defendant No.1 in the suit No.1/2000 filed by

„Pachranga International‟ before the ADJ, Panipat. As regards the

question of delay, Mr. Bansal submits that no evidence of user has been

placed by defendant No.1 about the user claimed, thus, the plaintiff is

entitled to the injunction claimed.

25. After having gone through the pleadings and document filed

by the parties, no doubt it is true that defendant No.1 was not a party to

the suit filed by „Pachranga International‟ in Panipat, nor is this

judgment binding on this Court while considering the injunction

application in the present case, however, the fact cannot be ignored that

in one matter the suit has been dismissed on merit and the facts in the

two cases are admittedly common. Further, even if the submission of

Mr. Bansal is accepted as regards the fresh cause of action on the basis

of registration granted, no registration certificates have been produced

nor has any proof been given by the plaintiff that these two trademarks

have been entered in the register of Trade Marks and in the absence of

proof, the submission of the plaintiff cannot be considered or accepted.

26. After having considered the entire gamut of the matter, I feel

that it is not appropriate to pass the interim order as prayed particularly

at this stage, when the matter is ripe for evidence, rather I shall dispose

of the interim application without expressing any opinion on merit with

the following directions:

a) The suit proceedings be expedited.

b) The defendant No.1 shall maintain separate accounts

pertaining to the use and sale of Pachranga products and file the

same before this Court every quarterly. The first statement be

filed on or before 15.2.2010 wherein the defendant No.1 shall

give the sale figure of Pachranga products from the date of user

till date, thereafter, the defendant No.1 shall keep on filing the

statement of sale every quarterly.

c) The defendant shall be entitled to use the colour scheme and

get-up as it appears in the amended label filed on 28.1.2004 or

such other colour scheme and get-up which would not be

similar to the plaintiff.

d) The defendant No.1 by 15.02.2010 shall also file an

undertaking in the form of affidavit that in case the suit of the

plaintiff is decreed after trial, the defendant No.1 shall pay the

profits and damages if any suffered by the plaintiff.

e) The defendant would be entitled to use the mark

CHAMPION PACHRANGA in capital letters in similarly sized

font during the pendency of the suit in order to avoid confusion

in the market. The defendant No.1 shall make the necessary

amendments in the packaging by 15.02.2010.

For the above said reasons, IA No.11081/2003 is disposed of.

Needless to say, these findings have been made without prejudice to the

contentions on merit of either party and shall have no bearing on the

final outcome of the case.

27. IA No.2977/2009 filed by the plaintiff is for adjournment of

the hearing. In view of the disposal of the pending applications, no

further orders are required in this application.

CS (OS) No. 2029/2003

List the matter before the Joint Registrar on 24th February,

2010 for direction of evidence.

MANMOHAN SINGH, J.

JANUARY 25, 2010 jk