Back
IN THE HIGH COURT OF DELHI AT NEW DELHI
R.K.GAUBA, J.
MR. PIRUZ KHAMBATTA & ANR. – PLAINTIFFS
Versus
RAJMOHAN RUPAJI MODI AND ORS. – DEFENDANTS
CS (OS) 3694 of 2014 and IA No. 6876 of 2015
Decided On : 20-12-2016
Jurisdiction - Trade Marks Act - Copyrights Act - Section 134(2) of the Trade Marks Act, 1999 and Section 62 of the Copyrights Act, 1957 - The court held that the cause of action and jurisdiction for the suit were wrongly invoked in Delhi and should have been instituted in Ahmadabad, Gujarat. The provisions of Section 134 of the Trade Marks Act and Section 62 of the Copyright Act permit the plaintiff to bring an action at a place other than that of the defendant, but if the cause of action has arisen at the same place where the plaintiff resides or carries on business, it is incumbent that the plaintiff institutes the suit at that place and not at other places. The jurisdiction of the courts at other places stands ousted.
Fact of the Case:
The plaintiffs, a company incorporated under the Indian Companies Act, filed a civil suit seeking reliefs in the nature of permanent injunction, rendition of accounts, damages, etc., primarily arising out of infringement and passing off. The cause of action arose when the defendants were operating a restaurant in the name and style of RASNA TWO, which the plaintiffs alleged to be an infringement of their registered trademark 'RASNA'. The plaintiffs invoked the original civil jurisdiction of the court in Delhi, claiming territorial jurisdiction under Section 134(2) of the Trade Marks Act, 1999.
Finding of the Court:
The court found that the cause of action and jurisdiction for the suit were wrongly invoked in Delhi and should have been instituted in Ahmadabad, Gujarat. The plaintiffs' argument that the promotional campaign engaged by the defendants in Delhi was indicative of cause of action having arisen there was not accepted. The court held that the provisions of Section 134 of the Trade Marks Act and Section 62 of the Copyright Act permit the plaintiff to bring an action at a place other than that of the defendant, but if the cause of action has arisen at the same place where the plaintiff resides or carries on business, it is incumbent that the plaintiff institutes the suit at that place and not at other places. The jurisdiction of the courts at other places stands ousted.
Issues: The main issue was whether the court in Delhi had territorial jurisdiction to adjudicate the suit under the provisions of Section 134(2) of the Trade Marks Act, 1999, and whether the cause of action had arisen within the jurisdiction of the court in Delhi.
Ratio Decidendi: The court held that the provisions of Section 134 of the Trade Marks Act and Section 62 of the Copyright Act permit the plaintiff to bring an action at a place other than that of the defendant, but if the cause of action has arisen at the same place where the plaintiff resides or carries on business, it is incumbent that the plaintiff institutes the suit at that place and not at other places. The jurisdiction of the courts at other places stands ousted.
Final Decision: The court directed that the plaint be returned under Order VII Rule 10 CPC for being presented to the appropriate court of jurisdiction in Ahmadabad, Gujarat. Interim orders passed by the court earlier were vacated, and the proceedings in the suit and the applications filed therein in this court stood disposed of accordingly.
1. This civil suit was instituted in November 2014 invoking the original civil jurisdiction of this court seeking reliefs in the nature of permanent injunction, rendition of accounts, damages etc. it primarily being an action arising out of infringement and passing off.
2. The second plaintiff is a company incorporated under the Indian Companies Act with its registered office at 905, Atlanta Tower, Near Knowledge Academy, Gulbai Tekra, Ahmedabad-380015 and a registered branch office at 1203, 12th Floor, Vikrant Tower, Rajendra Place, New Delhi-110 008, plaintiff no.1 being its Chairman.
3. The second plaintiff (the company) claims to have pioneered the concept of soft drink concentrates in India having spearheaded this industry since 1972 introducing flavoured soft drinks which have been hugely popular amongst consumers on account of affordability. It statedly ventured into the business of restaurants under the brand name Rasna ‘Devil’s workshop”, its products having been sold under the trademark “RASNA”. It is stated that “RASNA” is a rare word having all the trappings of an invented/coined word in relation to edible products for human beings. It is the case of the plaintiffs that the said mark “RASNA” was adopted in 1972 when no similar mark was in existence in relation to such goods and services.
4. The plaintiffs got the trademark “RASNA” registered for the first time on 07.10.1985 vide registration numbers 443979 (in class 30) and 443978 (in class 32). Similar registrations of the said very trademark under other classes (1, 3, 4, 5, 6, 8, 9, 10, 11, 13, 14, 15, 16, 19, 20, 22, 23, 24, 26, 27, 28, 31, 33, 34, 35, 36, 37, 38, 39, 40, 41 and 42) were obtained in July 2001 followed by similar registrations under other classes, the word “RASNA” also having been joined by other descriptions for various other products of the plaintiffs, they also having been got registered under the Trademarks Act over the years. It is the case of the plaintiffs that all the said registrations of the trademark are valid and have been subsisting and continue to be in full legal force, having been renewed from time to time.
5. The plaintiffs also claims to have made forays into foreign markets and being the registered proprietor of the trade name/trademark “RASNA” in various countries including Vietnam, U.K., Indonesia, China, Saudi Arabia, Thailand, South Africa, Bangaldesh, Nigeria, Russa, Singapore, Qatar, Tanzania, Oman, Bahrain, Kenya, Jordan, Lebanon, Malaysia, Philippines and Myanmar, etc.
6. It is further the case of the plaintiffs that it is the proprietor of work bearing unique and fanciful style amounting to original artistic work within the meaning of Section 2(c) of the Copyrights Act, 1957 in respect of RASNA marks/labels.
7. The suit was presented alleging cause of action to have arisen in October 2014 when the plaintiffs came to know that the defendant no.3, having been incorporated in May 2012 under the name and style of “M/s. Rasna Hotels Pvt. Ltd.” with Mr. Rajmohan Rupaji Modi, (defendant no.1) and Ms. Lalita Rajmohan Modi (defendant no.2), both with common address - Rasna Restaurant, Maninagar Char Rasta, Maninagar, Ahmadabad-380008, Gujarat as its directors, were operating a restaurant in the name and style of RASNA TWO restaurant, so described in the array of parties with address at Shivalik-7, Rambaug, Maninagar, Ahmedabad-380008 (Defendant no.1).
8. It is stated that the registered office of the company M/s. Rasna Hotels Pvt. Ltd. is same as that of Rasna Restaurant, Mani Nagar, Char Rasta, Maninagar, Ahmedabad-380008, Gujarat in which respect the plaintiffs had earlier filed a civil suit, it being CS (OS) 1144/2010, titled Rasna Pvt. Ltd. and Anr. Vs. Dipak Modi and Ors., seeking similar reliefs of permanent injunction against infringement of trademark and passing off.
9. It is alleged that the prominent use of the mark “RASNA” in the name of the restaurant RASNA TWO, with insignificant suffix “Two” added to it, amounts to
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
