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High Court of Delhi
BADAR DURREZ AHMED & SIDDHARTH MRIDUL, JJ.
Lt Foods Limited
Versus
Heritage Foods (India) Limited
FAO (OS) No. 3 of 2014
Decided On: 07-05-2014
Trade Mark - Jurisdiction - Section 28(3) TM Act - Section 124 of the TM Act, 1999 - Section 134 of the Trade Marks Act, 1999
Fact of the Case:
The appellant brought a Suit for infringement with regard to the Trade Mark 'HERITAGE'. The learned Single Judge directed return of the plaint for presentation in a Court of appropriate jurisdiction. The appellant filed an appeal which was decided in favor of the appellant, restoring the suit for decision before the learned Single Judge.
Finding of the Court:
The Court found that the infringement action may lie against another registered proprietor if the conditions as stipulated in Section 124 of the TM Act, 1999 are satisfied. The Court also held that the appellant had made averments with regard to cause of action and territorial jurisdiction, and that the Court had territorial jurisdiction in respect of the passing off action.
Issues: The issues included the rejection of the Suit for infringement, the jurisdiction of the Court to entertain the passing off action, and the return of the plaint for presentation in a Court of appropriate jurisdiction.
Ratio Decidendi: The Court's decision was influenced by the interpretation of Section 28(3) TM Act, Section 124 of the TM Act, 1999, and Section 134 of the Trade Marks Act, 1999, as well as the principles for rejecting a plaint under Order 7 Rule 11 or returning a plaint under Order 7 Rule 10 CPC.
Final Decision: The impugned order insofar as it relates to the return of the plaint under Order VII Rule 10 CPC was set aside, and the plaint, even in respect of the passing off action, was restored for further steps before the learned single Judge.
Badar Durrez Ahmed, J.
1. This appeal is directed against the order dated 20.11.2013 passed by a learned Single Judge of this Court in I.A.No.10244/2011 whereby the learned Single Judge has directed return of the plaint. I.A. No. 10244/2011 was a composite application by the respondent/defendant under Order 7 Rule 10 and Order 7 Rule 11 CPC. Insofar as the plea under Order 7 Rule 11 CPC is concerned, that was targeted against the infringement action which the appellant/plaintiff had brought in the said Suit CS (OS) 1188/2011 with regard to the Trade Mark “HERITAGE”. By virtue of paragraph 13 of the said order dated 20.11.2013 the learned Single Judge had come to a conclusion that no Suit for infringement could lie. The exact words used by the learned Single Judge were as under:-
“13. It must further be noted that admittedly HFIL holds registration for the identical mark HERITAGE for the same goods and therefore in terms of Section 28(3) TM Act no suit for infringement would lie against HFIL.”
2. The said portion of the order dated 20.11.2013 constituted a decree inasmuch as it amounted to a rejection of the Suit for infringement which had been brought by the appellant/plaintiff. Consequently, the appellant filed an appeal [RFA (OS) 77/14], being aggrieved thereby. That Appeal [RFA (OS) 77/14] was decided by a Division Bench of this Court on 29.04.14 whereby the observation of the learned Single Judge in paragraph 13 quoted above was set aside. The operative portion of the Division Bench decision dated 29.04.2014 reads as under:-
“2. In view of the position of law settled in the judgements noted in the sub paras of the present paragraph, the observation of the learned Single Judge in paragraph 13 is set aside:-
(i) IA No.23086/2012 in CS (OS) No.3534/2012 decided on April 25, 2012 in Abbot Healthcare Pv. Ltd. Vs. Raj Kumar Prasad and Other.
(ii) IA Nos.15425/2008, 217/2009 and 2769/2009 in CS (OS) No.207/2008 decided on April 09, 2009 in Clinique Laboratories LLC and Another Vs. Gufic Ltd. and Another.
3. An infringement action may lie against another registered proprietor if the conditions as stipulated in Section 124 of the TM Act, 1999 are satisfied or not in the present case is left to be decided by the learned Single Judge.
4. The impugned order is set aside to the said extent and the suit is restored to the said extent for decision before the learned Single Judge.
5. The suit be listed before the learned Single Judge for directions on July 04, 2014.”
3. From the above it is evident that insofar as the infringement action is concerned, the suit has been restored and is now before the learned Single Judge for examination as to whether the conditions of Section 124 of the Trade Marks Act, 1999 are satisfied.
4. Apart from the said issue of infringement, the impugned order dated 20.11.2013, as pointed out above, also decided that insofar as the passing off action was concerned, the courts in Delhi would not have jurisdiction to entertain the same and consequently the learned Single Judge directed the return of the plaint for presentation in a Court of appropriate jurisdiction. The learned Single Judge held that the appellant/plaintiff had not been able to make out a case for entertaining the suit for passing off or for any of the consequential incidental reliefs and had not been able to show that any part of the cause of action had arisen within the territorial jurisdiction of this Court.
5. We have heard the learned counsel for the parties at length on the issue of the return of the plaint. We find that the plaintiff in paragraphs 26 and 27 of the plaint had made averments with regard to cause of action and territorial jurisdiction. The said paragraphs are as under:-
“26. The cause of action for institution of the present suit arose on 4th March 2011 when the Plaintiff received a cease and desist notice wherein the Defendant alleged infringement and passing off its trade mark HERITAGE. The Plaintiff through c
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