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2023 Supreme(Online)(Del) 25799
DELHI HIGH COURT
MAHESH NAMKEEN PVT. LTD. – Appellant
Versus
PATOLA INDUSTRIES AND ANR – Respondent
CS(COMM)-849_2023
A suit for infringement of trademark and passing off can be filed in any court where the defendant carries on business or where the cause of action arises.
Headnote:
TRADEMARK - INFRINGEMENT - PASSING OFF - SUIT FOR INJUNCTION - JURISDICTION - TERRITORIAL JURISDICTION - SALE OF GOODS IN DELHI - SUIT MAINTAINABLE IN DELHI
Fact of the Case:
The Plaintiff, Mahesh Namkeen Pvt. Ltd., filed a suit against the Defendants, Patola Industries and M/s Anil Confectionery, seeking injunction against the use of the mark ‘MAHESH’ for namkeen and other food items. The Plaintiff alleged that it had adopted the word and label mark ‘MAHESH’ in the year 1983 and had been using it continuously since then. The Defendants claimed that they had adopted the mark ‘MAHESH’ in the year 2000 and had applied for registration in the year 2008. The District Judge, Patiala House Court, initially granted an ex parte injunction in favor of the Plaintiff, but later vacated the injunction on the ground that both parties had obtained trademark registrations. The Plaintiff then approached the IPAB, which cancelled the registration certificate of the Defendants. The Defendants then filed a revision petition challenging the maintainability of the suit in Delhi on the ground of territorial jurisdiction. The High Court dismissed the revision petition and consolidated the suit with two cancellation petitions filed by the Defendants.
Finding of the Court:
The High Court held that the suit was maintainable in Delhi as the Plaintiff was carrying on its business physically as also through its dealers and distributors in Delhi. The Court also held that the Defendants had infringed the Plaintiff’s trademark and had passed off their goods as those of the Plaintiff. The Court granted a permanent injunction in favor of the Plaintiff and directed the Defendants to withdraw all their trademark applications and cancellation petitions.
Issues: 1. Whether the suit was maintainable in Delhi on the ground of territorial jurisdiction?2. Whether the Defendants had infringed the Plaintiff’s trademark and had passed off their goods as those of the Plaintiff?
Ratio Decidendi: 1. The Court held that the suit was maintainable in Delhi as the Plaintiff was carrying on its business physically as also through its dealers and distributors in Delhi. The Court relied on the Supreme Court decision in Tata Sons Ltd. v. Greenpeace India Society, (2011) 8 SCC 643, which held that a suit for infringement of trademark and passing off can be filed in any court where the defendant carries on business or where the cause of action arises.2. The Court held that the Defendants had infringed the Plaintiff’s trademark and had passed off their goods as those of the Plaintiff. The Court relied on the following factors:(a) The Plaintiff was the prior user of the mark ‘MAHESH’ since 1983 and had a registered trademark for the same.(b) The Defendants had adopted the mark ‘MAHESH’ through misrepresentation and had used it for a long period of time.(c) The goods sold by the Defendants under the mark ‘MAHESH’ were similar to the goods sold by the Plaintiff under the same mark.
Final Decision: The High Court decreed the suit in favor of the Plaintiff and granted a permanent injunction against the Defendants. The Court also directed the Defendants to withdraw all their trademark applications and cancellation petitions.
$~46, 11 to 13
*
IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 29th November, 2023
+
CS(COMM) 849/2023
MAHESH NAMKEEN PVT. LTD.
..... Plaintiff
Through:
Mr. Shravan Kumar Bansal & Mr.
Ajay Amitabh Suman, Advs. (M.
9990389539)
versus
PATOLA INDUSTRIES AND ANR
..... Defendants
Through:
Ms. Aparna Jain & Mr. Ishan Berry
Advs. (M. 8800288998)
Mr. Dhruv Sharma, Adv., D-1&2,
(M. 9999099322)
13
WITH
+
CRP-IPD 6/2023 & CM APPL. 35188/2018
PATOLA INDURSTRIES
..... Decree Holder
Through:
Ms. Aparna Jain & Mr. Ishan Berry
Advs. (M. 8800288998)
versus
MAHESH NAMKEEN PVT LTD & ORS ..... Judgement Debtors
Through:
Mr. Shravan Kumar Bansal & Mr.
Ajay Amitabh Suman, Advs. (M.
9990389539) 11
WITH
+
C.O. (COMM.IPD-TM) 187/2021
PATOLA INDUSTRIES
..... Petitioner
Through:
Ms. Aparna Jain & Mr. Ishan Berry
Advs. (M. 8800288998)
versus
MAHESH NAMKEEN PVT LTD AND ANR
..... Respondents
Through:
Mr. Shravan Kumar Bansal & Mr.
Digitally Signed
By:DHIRENDER KUMAR
Signing Date:01.12.2023
16:54:52
Signature Not Verified
Ajay Amitabh Suman, Advs. (M.
9990389539)
12
WITH
+
C.O. (COMM.IPD-TM) 198/2021
PATOLA INDUSTRIES
..... Petitioner
Through:
Ms. Aparna Jain & Mr. Ishan Berry
Advs. (M. 8800288998)
versus
MAHESH NAMKEEN AND ANR
..... Respondents
Through:
Mr. Shravan Kumar Bansal & Mr.
Ajay Amitabh Suman, Advs. (M.
9990389539)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1.
This hearing has been done through hybrid mode.
2.
The Plaintiff - Mahesh Namkeen Pvt. Ltd. has filed the present suit
against Defendant No. 1- Patola Industries and Defendant No.2- M/s Anil
Confectionery, seeking injunction against the use of the mark ‘MAHESH’
for namkeen and other food items.
3.
The said suit was filed before the District Judge, Patiala House Court.
In the said suit, the allegation of the Plaintiff is that it has adopted the word
and label mark ‘MAHESH’ both in English and Hindi in the year 1983,
through its predecessor in interest M/s. Mahesh Dalmoth Bhandar.
4.
The Plaintiff has been engaged in the business of manufacturing and
selling sweets, namkeens and confectionery items in the state of Madhya
Pradesh under the mark ‘MAHESH’. The earliest registration for the trade
mark ‘MAHESH (in Hindi)’ bearing no. 945893 under class 30 dates back
to 8th August, 2000.
Digitally Signed
By:DHIRENDER KUMAR
Signing Date:01.12.2023
16:54:52
Signature Not Verified
5. The Plaintiff also operates its business through the domain name
www.maheshnamkeen.com as also sell its products through other online
websites like www.indiamart.com.
6. The allegation in the Plaint is that the Defendants are using the mark
and label ‘MAHESH’ for identical goods and business of namkeen, snacks,
confectionery and other allied/cognate goods. As per the Plaint it is averred
that Defendant No. 2 is the distributor of Defendant No.1.
7. The jurisdiction of Courts in Delhi was invoked on the ground that the
products of the Defendants are available for sale in various markets of Delhi.
Initially, an ex parte injunction was granted on 8th March, 2018 and Local
Commissioners were appointed. The relevant portion of the order is
extracted below:
“(f) Therefore, it is obvious that plaintiff has prima
Digitally Signed
By:DHIRENDER KUMAR
Signing Date:01.12.2023
16:54:52
Signature Not Verified
mode except cash.”
8. The said Local Commissioners had made seizure of more than 20,000
products bearing the mark MAHESH.
9. On 24th March, 2018, an application under Order XXXIX Rule 4
CPC, 1908 was filed by the Defendants claiming that the Defendants had
adopted the mark ‘MAHESH’ in the year 2000 and had applied for
registration in the year 2008. There were some defects in the said
registration and a correction was applied for, which was subsequently
granted. Since the Defendants also obtained a registration, the District Judge
vacated the injunction on 27th Marc
