M/S Tudor International vs M/S Arree Clothing Inc.
2014 Latest Caselaw 1980 Del

*      IN THE HIGH COURT OF DELHI AT NEW DELHI

%                                          Date of decision: 21st April, 2014.

+                                 CS(OS) 560/2008

       M/S TUDOR INTERNATIONAL                      ..... Plaintiff
                    Through: Mr. Neeraj Grover, Mr. Manoj Arora
                             and Ms. Megha Chandra, Advs.

                                  Versus

    M/S ARREE CLOTHING INC.                                    ..... Defendant
                  Through: None.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW

1.

This suit has been instituted for restraining the defendant from

passing off and infringing the trademark and copyright of the plaintiff in the

label/logo ARRAY in relation to hosiery and readymade garments, by use

of label/logo ARREE with respect to the same goods, as well as for

ancillary reliefs of delivery up of the infringing material, rendition of

accounts and damages, pleading:

(I) that the plaintiff is a partnership firm having its business office

in Ludhiana, Punjab and engaged in the business of manufacturing

hosiery and readymade garments under the trademark/label/logo

ARRAY;

(II) that the aforesaid trademark is being continuously used since

1991 and is registered under the Trade Marks Act, 1999 in respect of

hosiery and readymade garments (Class 25);

(III) that the plaintiff is also the owner of the artistic features/work

involved in the trademark/label/logo ARRAY and its copyright

therein is registered under the Indian Copyright Act, 1957;

(IV) that the plaintiff has built up enormous goodwill/reputation on

account of continuous commercial use of the aforesaid trademark and

which has become the indicium of the plaintiff‟s goods and business;

(V) that the plaintiff in the last week of January 2008, discovered

the adoption of identical/deceptively similar trademark/label ARREE

and trade name M/s Aree Clothing Inc. by the defendant in relation to

the same goods i.e. hosiery and readymade garments;

(VI) that the impugned trademark/label adopted by the defendant is

identical/deceptively similar in each and every respect including

phonetically/visually/structurally, in its basic idea, and other essential

features;

(VII) that a comparison of the stickers/tags of the plaintiff and the

defendant reveals both to be in black, with ARRAY and ARREE

respectively written in white, and similar devices in orange displayed

on the upper left corner;

(VIII) that the impugned adoption and user by the defendant is

dishonest and with a view to take advantage of the

goodwill/reputation of the plaintiff, by causing deception and

confusion in the market and to pass off the goods of the defendant as

those of the plaintiff.

2. Summons in the suit were issued on 28.03.2008 and an ex-parte ad-

interim injunction restraining the defendant from using label similar to the

plaintiff‟s label and/or using the same manner of representing its products

and logo was granted in favor of the plaintiff.

3. The defendant thereafter filed its written statement whereunder it has

traversed each and every averment in the plaint and in particular objected to

the territorial jurisdiction of this Court in view of the fact that neither of the

parties carry on any business or trade in Delhi. The defendant has further

alleged that the plaintiff‟s own use of the trademark ARRAY is an imitation

of the famous trade mark ARROW whereas the defendant‟s adoption

(admitted to be in 2007) of the trademark ARREE is honest and stems from

the name of the locality in which the grandfather of one of the partners of

the defendant firm resided as well as the nickname of the son of the said

partner.

4. Though a replication to the written statement of the defendant has

also been filed by the plaintiff, but the same merely denies the averments in

the written statement and reiterates those made in the plaint, and is thus not

being adverted to in detail.

5. Vide order dated 25.07.2013, this Court, on account of there being no

appearance on behalf of the defendant despite the matter having been passed

over, directed the defendant to be proceeded ex-parte and confirmed the ex-

parte ad-interim order of injunction granted in favor of the plaintiff on

28.03.2008. This Court, in light of the aforesaid pleadings of the parties,

also framed the following issues:

"1. Whether the defendant has infringed or threatened to infringe the plaintiff's registered trade mark "ARRAY" registered under no.650819 in class 25 by the adoption and/or use of the mark "ARREE" as its trade mark/trade name in relation to Readymade Garments? If so, its effect? (OPP)

2 Whether the defendant has infringed the plaintiff's copyright in the "ARRAY" label registered under no.59116/01? If so, its effect? (OPP)

3. Whether the defendant has passed off or threatened to pass off its goods & business as those of the plaintiff? If so, its effect? (OPP)

4. Whether this Court does not have territorial jurisdiction to entertain & decide the present suit? (OPD)

5. Whether the defendant is protected under the provisions of Section 35 of the Trade Marks Act, 1999? (OPD)

6. Whether the plaintiff is entitled to an order of Delivery up of goods of the defendant under the mark "ARREE"?

(OPP)

7. Whether the plaintiff is entitled to an order of Rendition of Accounts of profits against the defendant and a decree of amount so found due? (OPP)

8. Relief."

6. The plaintiff has tendered his ex-parte evidence and examined Sh.

Munish Jain (one of the partners of the plaintiff firm) as the sole witness.

Sh. Munish Jain has inter alia tendered the following documents in

evidence to support the case set up by the plaintiff:

I. Copy of the Registration Certificate of the Trade Mark ARRAY

under Class 25 of the Trade Marks Act, 1999 and the Legal

Proceeding/Renewal Certificate of the same, exhibited as

PW1/2 and PW1/3 respectively;

II. Copy of Registration of the Copyright in the Mark/Label

ARRAY, exhibited as PW1/9;

III. The Year-Wise Sales Figures of the plaintiff under the

trademark ARRAY from the year 1994-2007, exhibited as

PW1/13;

IV. The copies of Income Tax Returns and Balance Sheets of the

plaintiff firm, exhibited as PW1/14 and PW1/15 respectively;

V. Copies of Sale Invoices issued by the plaintiffs to its retailers in

Delhi, exhibited as PW1/47 to PW1/78; and,

VI. Copies of other Sale Invoices issued since the year 1994,

exhibited as PW1/79 to PW1/172.

7. It is pertinent to note that the defendant had, apart from taking an

objection with regard to the territorial jurisdiction of this Court in its written

statement, also filed an application (IA No.11026/2008) under Order 7

Rules 10 & 11 of the CPC seeking return/dismissal of the plaint on this

ground. Though the said application was dismissed in default vide the

aforesaid order dated 25.07.2013, but the issue of jurisdiction still remains

alive inasmuch it is incumbent upon this Court to satisfy itself with regard to

the same before it renders any finding on the merits of the case, and in any

case, a specific issue thereon, being Issue No. 4 already stands framed.

8. The plaintiff, as is evident from the memo of parties filed as well, has

admitted that both the parties are located in Ludhiana, Punjab. The plaintiff

has however in the plaint, while invoking the jurisdiction of this Court,

stated:

"28)....The plaintiff has been carrying out its trade and business

within the territories of Delhi through its dealers, distributors and

agents....The plaintiff has tremendous goodwill and reputation in its

said trademark which is being tarnished by defendant's impugned

activities in Delhi...The Hon‟ble Court has jurisidiction to try and

adjudicate the present suit within the meaning of Section 134 of the

Trade Marks Act, 1999 as well as Section 62(2) of the Copyright Act,

1957..." (emphasis supplied).

9. The plaintiff thus has asserted the jurisdiction of this Court on two

grounds:

(I) Invoking Section 134 of the Trade Marks Act, 1999 as well as

Section 62(2) of the Copyright Act, 1957 which permits a suit to be

filed where the plaintiff carries on business and thereafter asserting

that the plaintiff is indeed „carrying on business‟ in Delhi through its

various dealers, distributors and agents; and,

(II) Suggesting that a part of cause of action has arisen in Delhi

inasmuch as the defendant is also selling its goods in Delhi and

thereby infringing its trademark and copyright „by its impugned

activities in Delhi‟.

10. The defendant, on the other hand, in its written statement has

questioned territorial jurisdiction by traversing the assertions of the plaintiff

in the plaint. It has pointed out that both the parties are admittedly located in

Ludhiana, Punjab and categorically denied having ever sold its goods in

Delhi.

11. The witness of the plaintiff in ex-parte evidence, qua the aspect of

territorial jurisdiction has deposed that the goods of the defendant are being

sold in the markets across Delhi and has also proved as Ex.PW1/47 to

PW1/78 the invoices issued by the plaintiff to its Delhi Retailors.

12. Though the Supreme Court in Dhodha House Vs. S.K. Maingi

(2006) 9 SCC 41 has held the expression "carries on business" to be

meaning „having an interest in a business at that place, a voice in what is

done, a share in the gain or loss and some control thereover and that agent

must be a special agent who attends exclusively to the business of the

principal and carries it on in the name of the principal and not a general

agent who does business for any one that pays him and that mere

availability of goods in the market of a place by itself would not mean that

the plaintiff carries on any business at that place‟ and yet further, though the

Division Bench of this Court in Archie Comic Publications Inc. Vs. Purple

Creations Pvt. Ltd. 2010 (44) PTC 520 (Del.) also held that merely because

a particular bookstore sells the books/comics of the plaintiff in Delhi would

not confer the Court in Delhi with the jurisdiction but in view of the ex-

parte statement of the witness of the plaintiff, of the defendant carrying on

business at Delhi, I am inclined to entertain this suit in Delhi, even though

the plaintiff has not led any evidence to attract Section 134 of the Act.

13. Else, the plaintiff has made out a case for injunction. The action

aforesaid of the defendant are found to amount to infringement of the rights

of the plaintiff and the defendant passing off its goods as that of the

plaintiff.

14. Accordingly, a decree for permanent injunction is passed in favour of

the plaintiff and against the defendant restraining the defendant from using,

selling, exporting or offering for sale, advertising or displaying or dealing in

any manner in hosiery, readymade garments and allied/cognate goods under

the trademark/label ARREE and/or under the trade name M/s Arree

Clothing Inc. or any other identical or deceptively similar trademark/label or

trade name and further restraining the defendant from infringing the

trademark/label ARRAY and copyright of the plaintiff therein. As far as the

claim of the plaintiff for damages is concerned, in view of what has been

discussed hereinabove qua the territorial jurisdiction, I am not inclined to

grant the said relief to the plaintiff. The plaintiff is however given liberty to

file an appropriate proceeding against the defendant, if considers itself so

entitled for recovery of damages if any suffered by the plaintiff. For the

same reasons, no case for grant of any of the other ancillary reliefs is made

out.

15. The defendant having abandoned the defense to the suit, no costs.

Decree sheet be drawn up.

RAJIV SAHAI ENDLAW, J.

APRIL 21, 2014 „aa/bs‟..