The judgment emphasizes the importance of substantiating territorial jurisdiction based on the cause of action and the need for evidence to support jurisdictional claims.

KAILASH GAMBHIR, J.

1. The present suit has been filed by the plaintiff for permanent injunction and rendition of accounts against the defendant alleging infringement of its trademark “Shyam Surti”.

2. Briefly stated the case of the plaintiff is that it is in the business of manufacturing, processing, marketing and distribution of chewing tobacco, khaini and surti under the trademark “Shyam Surti” since 1969 which is duly registered vide registration no. 312720 in class 34. It is the case of the plaintiff that in the month of May 2006 the plaintiff came to know that the defendants are manufacturing and marketing same goods as that of the plaintiff under the name “Om Shyam Surti” and even the packing is identical and deceptively similar to that of the plaintiff. According to the plaintiff the defendants are using the impugned mark out of greed with a view to take advantage of the reputation and goodwill of the plaintiff. The defendant no.1 and 3 however filed a suit for declaration, injunction and damages under section 134(c) and 142 of the Trademarks Act against the plaintiff at Chitrakoot, U.P which is being contested by the plaintiff herein.

3. It is important here to give the sequence of events which has led the court to decide the matter at this stage. Vide orders dated 17th March, 2008 this Court framed issues arising out of the pleadings of the parties. Issue No. 1 which deals with the territorial jurisdiction of this Court was treated as a preliminary issue and counsel representing the parties had agreed that issue No.1 should be taken up first. Issue No. 1 is reproduced as under:-

1. “

Whether this court does not have territorial jurisdiction in respect of the present

? O

Ptisu

”

D.

On 31st October, 2008 learned counsel representing the plaintiff conceded that Section 134 of the Trade Marks Act, 1999 may not be applicable to determine the jurisdiction of this Court but yet stated that this Court has territorial jurisdiction to entertain the present suit so far as passing off the trademark SHYAM SURTI is concerned. Counsel also submitted that the suit for passing off against the defendant before this Court will be maintainable, even though the defendant is not working or residing for gain in Delhi, because it had made an application for registration in the trademark Registry at Delhi. This Court on the said submission of the counsel for the plaintiff observed that prima facie the contention of learned counsel for the plaintiff does not appear to be correct for in a suit for passing off, place of registration of the trademark is irrelevant and is not a part of cause of action. The Court further observed that the suit or the plaint can be filed in the Court where cause of action or part of cause of action has arisen. On the said observation of the Court, the learned counsel representing the plaintiff took time to examine the decisions of this Court and of the Supreme Court on the said aspect. It would

be relevant to reproduce the order dated 31st October, 2008 as under:-

“Learned counsel for the plaintiff concedes that Section 134 of the Trade Marks Act, 1999 may not be applicable but insists that this Court has territorial jurisdiction to entertain the present suit for passing off as the defendant, who is not working or residing for gain in Delhi, had made an application for registration in the trademark Registry at Delhi.

Prima facie, the contention of the learned counsel for the plaintiff does not appear to be correct for in a suit for passing off, place of registration of the trademark is irrelevant and is not a part of cause of action. Suit or plaint can be filed in the Court where cause of action or part of cause of action has arisen.

At this stage learned counsel for the parties pray for some time to examine decisions of this Court and the Supreme Court dealing with this aspect.

Relist on 13th January, 2009.”

The matter was thereafter listed on various dates and vide order dated 3rd February, 2011 and 11th July, 2