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2013 Supreme(Del) 1534
High Court of Delhi
S. MURALIDHAR, J.
LT Foods Limited
Versus
Hertiage Foods (India) Limited
CS (OS) No. 1188 of 2011 & IAs Nos. 7950 of 2011 & 3388 of 2013 & 18427 of 2013
Decided On : 20-11-2013
For the Plaintiff:J. Sai Deepak with Julien George, Advocates.
For the Defendant:Ms. Pratibha M. Singh with Arjun Mukherjee, Advocates.
The court's decision was influenced by the failure of the Plaintiff to establish territorial jurisdiction for the cause of action, as required under the Trade Marks Act, 1999.
Headnote:
Trademark Infringement - Jurisdiction - Trade Marks Act, 1999 - Section 28(3)
Fact of the Case:
LT Foods Limited filed a suit seeking to restrain Heritage Foods (India) Limited from infringing its trademark HERITAGE and from selling rice under the same trademark, alleging that it would cause confusion among consumers.
Finding of the Court:
The court found that LTFL failed to establish that any part of the cause of action for the grant of relief had arisen within the territorial jurisdiction of the court. As a result, the application by HFIL seeking rejection of the plaint was allowed, and the plaint was returned to the Plaintiff for presentation in the court of appropriate jurisdiction.
Issues: Jurisdiction to entertain the suit for passing off and consequential incidental reliefs.
Ratio Decidendi: LTFL did not establish that any part of the cause of action for the grant of relief had arisen within the territorial jurisdiction of the court.
Final Decision: The application seeking rejection of the plaint was allowed, and the plaint was returned to the Plaintiff for presentation in the court of appropriate jurisdiction.
IA No. 10244 of 2011 (by Defendant u/O VII R. 10 & 11 CPC)
1. This is an application by the Defendant, Heritage Foods (India) Limited (‘HFIL’) under Order VII Rule 10 and 11 of the Code of Civil Procedure, 1908 (‘CPC’) seeking rejection of the plaint.
2. LT Foods Limited (LTFL) has filed the above suit seeking a permanent injunction to restrain HFIL from infringing LTFL’s trademark HERITAGE under Class 30 and also restraining HFIL from processing, selling, exporting, marketing, advertising or offering for sale of rice or any other cereals under the trade mark HERITAGE which may amount to passing off of HFIL’s goods for those of LTFL.
3. The case of LTFL is that it sells rice under various well-known and internationally famous brands, i.e., DAAWAT, DAWAT, HERITAGE, ORANGE, DEVAAYA, CHEF’S SECRET, SONA etc. LTFL states that it adopted the trade mark HERITAGE in 1997 and has since put in extensive commercial use in India and internationally. LTFL has been granted registration of the label mark HERITAGE in Class 30 for rice on 20th April 2018 and the said registration is stated to be subsisting. The annual sales figures of LTFL’s rice from the year 1997-98 till 2008-09 have been set out in para 9.
4. HFIL is a company in Hyderabad and also in the business of manufacturing and marketing goods under the trademark HERITAGE. HFIL’s website, www.heritagefoods.co.in reveals that it is in the business of dairy, retail, agriculture etc. Its retail outlet/stores are named as @ Fresh and also known as ‘Heritage Fresh’. LTFL states that on 4th March 2011 it received a legal notice from HFIL’s attorneys asking LTFL to seize and desist from using the trade mark HERITAGE in different classes. In the said legal notice, HFIL stated that it held registrations for the trade mark HERITAGE Label under Registration No. 597154 dated 14th May 1993 for variety of goods including rice. The case of LTFL is that HFIL’s trade mark registration is liable to be rectified as it will cause confusion and deception in the public and would lead to passing off of HFIL’s Defendant’s goods as those of LTFL.
5. On 2nd May 2011, LTFL filed a petition before the Intellectual Property Appellate Board (IPAB) against HFIL’s trade mark registration. LTFL states that HFIL has been purchasing HERITAGE branded rice in 1 Kg pack from LTFL’s distributor, M/s Newandram Manghanmal Agencies, Hyderabad since 2006. According to LTFL, after receiving HFIL’s legal notice dated 4th March 2011, it found that HFIL had started selling rice under the trade mark HERITAGE. Claiming that this is bound to cause confusion among the consumers as to trade and origin of the product, the above suit was filed by LTFL.
6. As regards the justification for LTFL approaching this Court, it is stated in para 27 of the plaint as under:
“This Hon’ble Court has jurisdiction to entertain and try the present suit as the Defendant in its legal notice dated 04th March 2011 addressed to the Plaintiff has admittedly stated that the goods of the Defendant under the trade mark HERITAGE is sold or supplied directly or indirectly throughout the length and breadth of the country, which will include Delhi as well. Hence, the cause of action has arisen within the territorial jurisdiction of this Hon’ble Court. This Hon’ble Court has also jurisdiction under Section 134 of the Trade Marks Act, 1999.”
7. Summons in the suit was directed to be issued on 13th May 2011. There was no interim order passed at that stage. After receipt of summons, HFIL filed the present application seeking rejection of the plaint. Inter alia, it is contended by HFIL that the present suit is only a counterblast to the legal notice dated 4th March 2011 issued by it. It is stated that HFIL is the prior user, common law owner and registered proprietor of the word/logo/name HERITAGE especially with respect to food products since 1992. HFIL is a registered proprietor of the mark HERITAGE for various products, including rice, and therefore,
