Prior use of a trademark can establish a cause of action for passing off, allowing the suit to be maintainable despite pending registration, and jurisdiction issues must be evaluated considering where deception arises.

JUDGMENT :

HARKESH MANUJA, J.

1. By way of present petition, challenge has been laid to an order dated 28.04.2023 passed by the learned Additional District Judge, Panchkula, whereby an application filed at the instance of petitioners- defendants invoking Order VII Rule 11 CPC with a prayer for rejection of plaint i.e. Civil Suit No.09 of 2022, titled as “Harish Kumar (Proprietor) of M/s Trumac Healthcare vs. Intra Life Private Limited and others”, stands rejected.

2. Briefly stating, the respondent-plaintiff filed a suit for permanent injunction restraining the petitioners-defendants from infringement of trademark namely “Nefrotime”. Relevant paras No.4, 9 and 35 of the plaint are reproduced hereunder:-

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4. That the plaintiff has honestly and bonafidely adopted the Trademark “NEFROTIME’ which is the Plaintiff’s flagship preparation interalia other pharmaceutical products and has been used uninterruptedly since 20^th day of FEBRUARY 2021. The plaintiff is the genuine proprietor of the trademark “NEFROTIME” and had applied for said trademark having an Application No.5640979 in Class 5 in respect of pharmaceutical preparations. That the Plaintiff has been using it since 20^th day of FEBRUARY 2021 continuously, extensively and openly without any hindrance from any quarter. The plaintiff is selling above said goods all over India.

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9. That the plaintiff has made extensive sale of the said goods under the Trademark “NEFROTIME” since the year 2021 and year wise sales figures of the Plaintiff’s company as well as copy of GST Number has been annexed here with as Annexure P-8 (colly).

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35. It is, therefore, most respectfully prayed that this Hon'ble Court may be pleased to:-

i) Pass decree of perpetual injunction restraining the Defendants, their agents, servants, dealers, representatives and all other persons acting on their behalf from manufacturing, selling, offering for sale, advertising and/or dealing in any manner of pharmaceutical or any other goods under the impugned to mark "NEFROTIME" or any other mark deceptively similar the Plaintiff's registered trademark "NEFROTIME" amounting to infringement of the Plaintiff's trade mark "NEFROTIME".

ii) Pass decree of perpetual/ad interim/exparte injunction restraining the Defendants, their agents, servants, dealers, representatives and all other persons acting on their behalf from reproducing, publishing and/or visual representation in any manner of the trademark "NEFROTIME" or any other mark which is substantial reproduction of the Plaintiff's artwork in trademark "NEFROTIME" amounting to infringement of the Plaintiff's trademark in art work of the label "NEFROTIME".

iii) Pass decree for directing the Defendants to deliver the packaging, brochures, pamphlets, letter pads, signboards, blocks, dies, stamps, printing materials, advertisement material etc. under the impugned mark/"NEFROTIME" of the Plaintiff for the purpose of destruction/erasure.

iv) Pass order for costs of present suit proceedings.

v) Any further relief which this Hon'ble court may deem fit and proper in the facts and circumstances of the case be granted favour of the Plaintiff and against the Defendants.”

3. Upon appearance, in response, the petitioners being defendants preferred an application under Order VII Rule 11 CPC with a prayer for rejection of plaint primarily on the ground of jurisdiction. The said application was contested at the instance of respondent-plaintiff having filed reply to the same.

4. The Trial Court-cum-Additional District Judge, Panchkula vide its order dated 28.04