S.K. Mahajan, J.
(1) The plaintiff has filed this suit on the allegations that the plaintiff is a Corporation incorporated under the laws of the State of North Carolina in the United States of America and is primarily engaged in the manufacture and sale of high duality textiles throughout Unites States and also in other countries of the world. One of its division is Custom Fabrics Division which manufacture Awning, marine and furniture fabrics under its trade mark 'SUNBRELLA'. It is stated that the plaintiff is regarded as an innovative leader in the field of textiles throughout the world and its woven fabrics under the trade mark 'SUNBRELLA' are exceedingly durable and weather resistant and are used for numerous applications such as canopies, flags and banners, active outerware,sportwear, luggage, etc. 'SUNBRELLA' is staled to be an invented word newly and freshly corned by the plaintiff and extensively used and advertised throughout the world. The said trade mark is staled to have been used in various countries including India and the annual worldwide sale for each of the past five years is stated to be in excess of Us $ 20 million of which sales outside United States has been from 3 to 6 per cent of the total volume of its sales. The annual advertisement expenses of the plaintiff are stated to be in excess of Us $ 2 million and the trade mark 'SUNBRELLA' is stated to have acquired an outstanding reputation as denoting the goods of the plaintiff.
(2) Defendant No. 1 is engaged in manufacture of canopies, awnings and Aluminium casted furniture and is selling the same under the trade mark 'SUNBRELLA'. An order was placed on 3rd June, 1991 on the defendants by one Mr.Debjit Gupta, who had been engaged by the plaintiff for making investigations, for supply to him awnings under the trade mark 'SUNBRELLA'. On receipt of the said order, the defendants vide letter dated June 10, 1991 sent its quotations to the said Mr.Debjit Gupta. On June 26, 1991 the said Mr.Debjit Gupta placed an order for awnings upon the defendants and also sent advance payment. On 18th July, 1991 the defendant dispatched awnings to the said Mr.Debjit Gupta from Bangalore and the same were delivered in Delhi on 31st July, 1991. It is admitted that the product of the defendant is not available in the market. It is stated that as the defendants were malafidely using the plaintiffs trade mark 'SUNBRELLA' for its products with a view to earn illegal profits by banking upon the goodwill and reputation of the plaintiff, the plaintiff was entitled to an injunction restraining the defendants from using the said trade mark. It was stated that though the products of the defendants were not available in the market, however, the suit was being filed with a view to nip the infringement in the bud. The plaintiff has, thereforee, claimed a decree for injunction restraining the defendants from manufacturing or selling or offering for sale directly or indirectly awnings, canopies or any other goods or fabric or textiles under the trade mark 'SUNBRELLA'.
(3) EX-PARTE injunction was not granted, however on 18th Augusta 1992 the statement was made by learned counsel for the defendant that till the next date of hearing the defendants shall not use the trade mark 'SUNBRELLA'.
(4) In the written statement, the defendant has challenged the jurisdiction of this Court and it is stated that no cause of action has arisen for a suit for passing off in Delhi; even the sale of goods to Mr.Debjit Gupta who had acted on behalf of the plaintiff was made in Bangalore and not in Delhi. Assuming this to be a sale in Delhi this solitary instance of sending of goods to Mr.Debjit Gupta in Delhi will not give jurisdiction to this Court to try the suit. On merits, it was alleged that the plaintiff themselves were manufacturing awnings and were marketing the same under the trade mark 'SOMFY. It was, thereforee, stated that the plaintiff was guilty of willful suppression of facts. It was, however, stated that the plaintiff is not manufacturing canopies/awnings under the trade mark 'SUNBRELLA' and it is the defendant who since 1st September. 1990 is manufacturing awnings/ canopies after adopting the trade mark 'SUNBRELLA'. It is stated that 'SUNBRELLA' is not an invented name but is the description of an 'umbrella' being used against 'sun' rays and has, thereforee, been so named as 'SUNBRELLA'. It is stated that the plaintiff in any case does not have any business activity in India nor there is any goodwill in respect of such goods in India, It was also stated that as the plaintiffs were marketing their awnings under the name of 'SOMFY, they cannot have any right in the trade mark 'SUNBRELLA'. It was, thereforee, stated that the suit filed by the plaintiff is liable to be dismissed.
(5) I have heard learned counsel for the parties both on the question of grant of an interim injunction as well as on the question as to whether this Court, has the territorial jurisdiction to try the suil.
(6) Under Section 20 of the Code of Civil Procedure, a suit can be filed against the defendants at a place where he either resides or is carrying on business or personally works for gain. A suit can also be filed in the Court which has the jurisdiction over the place where the cause of action wholly or in part arises. The case of the plaintiff is that as the goods have been supplied by the defendant to Mr.Debjit Gupta in Delhi, thereforee, Delhi Courts have the jurisdiction to try the suit. To appreciate the contention of the plaintiff as to how the cause of action has arisen, it will be useful to quote paragraph 12 of the plaint.
'ON the 15th of March, 1991, the plaintiff discovered that the defendant No. 1 is selling in India, canopies and awnings of its manufacture under trade mark SUNBRELLA. Since it was not clear whether the goods were in fad available in the market place under the trade mark Sunbrella, the plaintiff instructed its attorneys to investigate the use of the said mark Sunbrella by the defendants. As a part of the investigation. one Mr.Debjil Gupta, 2700, Mukherjee Nagar, Delhi-110 009, placed an order for goods under the trade mark Sunbrella through his letter dated 3rd June. 1991. By letter dated 10th June, 1991. the defendants sent quotation to the said Mr.Debjit Gupta atl Delhi. On the 2oth of June 1991, Mr.Debjit Gupta placed an order for awnings under the trade mark Sunbrella and sent an advance payment. On the 18th of July 1991. the defendants, pursuant to the aforesaid order, dispatched awnings to the said Mr.Debjit Gupta through Transport Corporation of India Limited which arrived in Delhi and were delivered to Mr.Debjit Gupta on the 31st of July 1991. The plaintiff then sought legal advice from its attorneys and proceeded to collect information and documents necessary to bring these proceedings. Even while the preparatory steps were being taken, it was not clear whether the defendants were continuing the use of the impugned trade mark Sunbrella or had discontinued the same since the product was not available in the market place. In fact to this date. the position remains the same and the plaintiff is bringing this action with a view to nipping the infringement in the bud. Hence, having regard to the aforesaid facts and to the fact that the plaintiff is a foreign corporation, the action has been brought at the very first opportunity and without any delay whatsoever'.
(7) It will, thereforee, be seen that it is the case of the plaintiff itself that the product of the defendants is not available in market and plaintiff was not even sure whether the defendant was continuing the use of the trademark 'SUNBRELLA' or not. Awnings were supplied pursuant to an order placed by him on 26th June, 1991. Defendant on 18th July, 1991 dispatched awnings for delivery to the said Mr.Debjit Gupta in New Delhi and the same were duly delivered to him on 31st July, 1991. The letter dated 3rd June, 1991 by which an order was alleged to have been placed upon the defendant by Mr.Debjit Gupta has not been placed on record, however, its reply dated 10th June,' 1991 from the defendant to the said Mc.Debjit Gupta is marked as exhibit P-4. By this quotation/letter dated 10th June, 1991 the defendant agreed to supply awnings at the cost mentioned in the said letter. By letter exhibit P-5 dated 26th June, 1991 Mr.Debjit Gupta placed an order for 'SUNBRELLA' awnings of the size 8' X 6' and also enclosed a bank draft for Rs.3,400.00 Along with the letter. The defendant, accordingly, on 19th July, 1991 wrote to the bank at New Delhi that documents were being sent regarding supply of certain material to Mr.Debjit Gupta and documents should be delivered only after collecting the balance amount of Rs.4,630.00 . This amount included the packing and forwarding charges of Rs.500.00 as well as the central sales-tax amounting to Rs.730.00 . On receipt of the amount, the bank delivered the documents to Mr.Debjit Gupta who in turn took delivery from the transport company.
(8) The question is whether by this single transaction of sale any cause of action for filing the suit has arisen in Delhi or not? Under Section 39 of the Sale of Goods Act, a delivery of the goods to the carrier will be, prima facie, deemed to be the delivery of goods to the buyer. In this case, the order was placed by Mr.Debjit Gupta upon the defendant at Bangalore. Such order was accepted by the defendant at Bangalore and pursuant to the acceptance of the order, the goods were delivered to the carrier for onward delivery to .the said Mr.Debjit Gupta. As freight has been paid by the plaintiff, prima facie, carrier will be deemed to be the agent of the plaintiff and delivery to the carrier will be deemed to be delivery to the plaintiff at Bangalore. In my opinion, the contract for supply of goods was completed at Bangalore and no part of cause of action has arisen in Delhi.
(9) Assuming for the sake of arguments that the goods were supplied to Mr.Debjit Gupta in Delhi, can it be said that this Court has the jurisdiction to try this suit for infringement of the trade mark or for passing off only on the basis of one sale having been made by the defendant in Delhi? It is the case of the plaintiff that Mr.Debjit Gupta had acted for and on behalf of the plaintiff. It can, thereforee, be said to be a trap sale with a view to gather evidence that the defendant was trying to pass off its goods for that of the plaintiff. It was perfectly valid for the plaintiff to put up their own man to purchase certain material from the defendant and in case of purchase of the said material if it was found that the defendant was passing off its goods for that of the plaintiff, plaintiff will have a right to file the suit. However, the question is at which place such a suit can be filed? As to what is a trap order, has been explained in Kerly's Law of Trade Marks and Trade Norms, 12th edition, page 340 as under : -
'INgeneral, proof of a single act of infringement by the defendant is sufficient to justify the plaintiff in bringing his action, and the evidence relied on is frequently the sale by the defendant of the spurious goods to the plaintiff or his agent, who has bought them merely for the purpose of procuring evidence. Though orders of this sort, generally referred to as 'trap orders,' have not infrequently been the subject of unfavorable comment, they are often the only means by which evidence can be obtained, and, if they are fairly given, there is no impropriety in adopting the procedure. The object is to show what the defendant is doing or what is likely to be the result of some ambiguous advertisement or marking, and the orders must, thereforee, be fairly given, and of a character which is not unlikely to occur in ordinary practice. Orders in writing, where they are practicable, are to be preferred; but in a class of business where orders are nearly always oral, a written order may inevitably arouse suspicion and, thereforee, be of no practical use. In all cases the defendant should be promptly informed as to what is alleged to have occurred so that he may have the opportunity of investigating the incidents while the recollection of those concerned is fresh. All the circumstances surrounding trap orders have to be scrutinised with great care. The courts will not necessarily grant relief in respect of isolated instances which may not be sufficient to prove any apprehension that passing off is likely to occur, and the needs of the case may sometimes be met by a special order as to costs.'
(10) In Himachal Pradesh Horticulture Produce Marketing and Processing Corporation Limited v. M/s. Mohan Meakin Breweries Limited, reported as Air 1981 P&H; 777, it has held as Under : -
'IN a suit for passing off or injunction Or account of infringement of trade mark, the cause of action partly or wholly can arise in a given jurisdiction only if it is the defendant who is proved to have directly made sale of goods under the impugned trade mark, within that jurisdiction, not loan individual customer but to a distributor, wholesaler or retailer and that such a sale is on a commercial scale. In the instance case there was no evidence to show any transaction of sale of goods under the impugned trade mark, made by the defendant at the place where the suit for passing off and in- junction was instituted and so the court at that place had no jurisdiction to entertain the suit.'
(11) In this judgment, reliance has been placed upon a judgment of the Lahore High Court in Firm Bhagwan Dass v. Walkins Mayor & Company reported as Air 1947 Lah 289. It has been held by Lahore High Court that:-
'IN order that the Court at a particular place should have jurisdiction to try a passing off action, it is necessary to show that the defendants were responsible for sending out to that district, goods which were liable to deceive intending purchasers into believing that they were goods manufactured by the plaintiffs. It would, of course, not be sufficient if such goods were supplied by the defendants to individual purchaser for use, as in such a case, the probability of any members of the public being deceived would be slight. It is necessary to show that the supply has been on a commercial scale to persons who are likely to offer the goods in question for sale.'
(12) With a view, thereforee, to give jurisdiction to the Court in a case of passing off, it is necessary to prove that the supply made by the defendant at a particular place was on a commercial scale. There should have been direct transaction of sale and purchase between the defendant and a distributor or a whole seller or a retailer and such transactions should be of commercial proportion.
(13) The plaintiff has relied upon a judgment reported as G.M. Plaff A.G. Nahmasehinenfabrik v. Praff Sewing Machine Company, IA.No.2026/77 in Suit No. 494/77 decided by R.N.Aggarwal,J. on 30th September, 1977 wherein it is held that an objection to the territorial jurisdiction of a Court does not stand on the same footing as an objection to the competency of a Court to try a suit and the question as to whether the Court has territorial jurisdiction to entertain a suit or not should be left to be determined in the suit itself. Reliance has also been placed by the plaintiff upon the judgment reported as Jawahar Engineering Company Vs . Jawahar Engineering Company Limited, : AIR1984Delhi166 . In that case, there had been an advertisement in the Trade Marks Journal published by the Registrar of Trademarks of Delhi. On the basis of the said advertisement, suit was filed against the defendant in that case for an injunction. The Court held that an injunction being prohibitive in nature was intended to prevent something that was likely to happen. Once the plaintiff had learnt that the defendant had applied for registration of trademark in Delhi, they could claim an injunction to prevent any sale of the infringing product in Delhi and in that sense Court at Delhi will have the jurisdiction, irrespective of any sale having taken place in Delhi or not.
(14) In my opinion, none of the two judgments, will be of any help to the plaintiff in as much as it is the case of the plaintiff itself that the product of the defendant was not available in the market. Nothing has been placed on record to indicate that defendant is threatening to sell their products in Delhi so as to pass them off as those of the plaintiff. One sale mentioned in the plaint was on the basis of a trap order placed by Mr.Debjit Gupta for and on behalf of the plaintiff. Even this order has been placed upon the defendant in Bangalore and the goods had been supplied from Bangalore. An my opinion, one single trap order placed upon the defendant and supply of goods on the basis of the said order to a person for use in Delhi cannot be said to form part of cause of action which would give jurisdiction to the Courts at Delhi., As already held above, to give jurisdiction to the Court, sale has to be on a commercial basis to the whole seller, retailer or a distributor. I am, thereforee, of the opinion that no part of cause of action has arisen in Delhi and consequenliy, this Court will have no jurisdiction to entertain this suit.
(15) I, thereforee, direct that the plaint be returned to the plaintiff for presentation in a proper Courl. In view of the fad that I have already held that this Court has no jurisdiction to entertain the suit, I need not go into the question of deciding the interim application for injunction.