.* THE HIGH COURT OF DELHI AT NEW DELHI % Order delivered on: 08.02.2012 I.A. Nos.7028/2010 and 11464/2010 in C.S. (OS) No.1042/2010 DCM Shriram Consolidated .......Plaintiff Through Mr. Naveen Kumar, Adv. Versus Sree Ram Agro Ltd and Ors. .....Defendants Through Mr. Ajay Sahni, Adv. with Mr. Kamal Garg, Adv. CORAM: HON'BLE MR JUSTICE MANMOHAN SINGH MANMOHAN SINGH, J..
1. The plaintiff has filed the above-mentioned suit for permanent injunction against infringement of its trade mark "SHRIRAM" by the defendants along with an application under Order XXXIX, Rules 1 and 2 read with Section 151 CPC, bearing I.A. No.7028/2010..
2. The suit as well as the interim application was listed before the Court on 21.05.2010 and an ex parte ad-interim order was passed against the defendants restraining them, their agents, employees, associates, assigns etc. from manufacturing, storing, distributing, selling any produce by name of "SHRIRAM CARTAP" which is deceptively similar to the trademark of the plaintiff. By this order I propose to decide the abovementioned pending application after hearing of the parties. C.S. (OS) No
104. 2/2010 Page 1 of 15.
3. Case of the Plaintiff (a) The brief facts of the case are that the plaintiff is the registered trade mark owner of the expression "SHRIRAM" for the vast range of products since 1960. The plaintiff-company is one of the leading manufacturers of fertilizers, insecticides, pesticides, plastics, sugar, cement, plaster of paris etc. (b) It is submitted that the mark "SHRIRAM" has been adopted by the plaintiff out of respect and reverence of their predecessor Sir Lala Shriram, who was an eminent industrialist, educationist and philanthropist and had set up the predecessor company of the plaintiff. (c) It is further submitted that the "SHRIRAM" trade mark is registered in Class-5 of the goods mentioned in the schedule 4 of the Trade Marks Act, 1999 for "SHRIRAM CARTAP", "SHRIRAM GOLD", "SHRIRAM ACE 75", "SHRIRAM" (Logo) , "SHRIRAM RAKSHAK" , "SHRIRAM ATTACK" , "SHRIRAM BADSHAH", "SHRIRAM BUTA 50" , "SHRIRAM CarZeb", "SHRIRAM DART", "SHRIRAM DOUBLE M", "SHRIRAM MATRIZIM 70", "SHRIRAM EDGE", "SHRIRAM MONO 36", "SHRIRAM PROFEN 40", "SHRIRAM SHERA", "SHRIRAM TRIDELTA", "SHRIRAM TriMax", "SHRIRAM TRIPHOS 40", "SHRIRAM WOOSAVER TC", "SHRIRAM ENDO" etc. for pesticides, insecticides and herbicides etc. In addition to this, it is stated that they are also using the same trade mark for "SHRIRAM PVC RESIN" (since 1967), "SHRIRAM UREA" (since 1977) and "SHRIRAM CEMENT" (since 1986). C.S. (OS) No
104. 2/2010 Page 2 of 15 (d) Thus, on account of constant user over a period of almost four decades, every product for fertilizers, pesticides or insecticides goods bearing the trade mark of "SHRIRAM" is identified with their product and their company. (e) Plaintiff is proprietor of several "Shriram" trademarks in class 5 group. Shriram Cartap 4G, Shriram Gold, Shriram Ace and many others. The plaintiff is the user of the said trademark since 1960s for e.g Shriram PVC Resin, Shriram Urea (since 1977). With efforts and hard work, Shriram has generated a good reputation and goodwill. Cores of money has been spent on the brand promotion and other brand related things. (f) The expression "Shriram" has become synonymous with the high quality and premium standard of plaintiffs products. The defendants, small time traders, on the other hand have adopted the name and style of the plaintiffs product "Shriram" with the sole intention of obtaining illegal benefits from the plaintiffs brand name and use for their own benefit..
4. It is further submitted that the plaintiff and its promoters belong to the lineage of late Sir Lala Shriram. The expression "SHRIRAM" is the integral part of the name of the promoters of the plaintiff and their predecessors. The international reputation of the plaintiffs "SHRIRAM" brand is also apparent from its independent branding association with various global entities and today the annual turnover is more than Rs.3500/- crores. C.S. (OS) No
104. 2/2010 Page 3 of 15.
5. Case of the Plaintiff against the Defendants (i) Defendant No.1 is storing, selling and dealing through its partners, defendants No.2 and 3 as well as stockiest defendants No.4 and 5 of insecticides which is manufactured by defendant No.6 at its factory at Panchkula which is not only bearing the same trade mark of "SHRIRAM" but is also using practically the same dress code, colour scheme and thereby dishonestly infringing the trade mark of the plaintiff and passing off to the public, its own goods as the one which are being manufactured by the plaintiff. (ii) Some of the products of the plaintiffs are Shriram Urea, Shriram Cartap 4G, Shriram Gold, Shriram SSP and many more. The plaintiffs products are widely available in Northern India eg. Delhi, Rajasthan, Uttar Pradesh, Punjab. Apart from these products, plaintiff has also founded many educational institutions like Lady Shriram, Shriram College of Commerce, Delhi School of Economics. Hence, it is evident from this fact that plaintiff is the prior user of the trade name "Shriram" than the defendants. (iii) The plaintiff states that they are using a mark "Shriram Cartap 4G (pesticide) vide registered trademark No. 1092754. The defendants have adopted the same trademark and also have intimated plaintiffs packaging style, get up with an dishonest intention and hence, the reputation of the plaintiff is hampered and the goods of the defendants are getting passed off as plaintiffs goods and as a result, a huge amount of loss is being suffered by the plaintiff. The general public is also being deceived by this act of the defendants. C.S. (OS) No
104. 2/2010 Page 4 of 15 (iv) The plaintiff states that the defendants have adopted the similar trademark as that of the plaintiff (in class 1 and class 5). The plaintiff also states that the dishonest intention of the defendants is very clear as they have adopted the similar trademark and has the intention of passing off their goods as that of the plaintiffs. The intention of the defendants is also clear from the fact that the defendants have used similar packaging, lay out, colour combination printing fonts, stylization and the over all appearance is very similar with that of the plaintiffs goods and hence, it is very confusing for the general public. (v) The plaintiff states that the defendants have knowingly adopted the trademark of the plaintiff and has the intention of harming the goodwill of the plaintiff. Due to the wrong intention of the defendants, the plaintiffs reputation is at stake and hence it is causing a huge loss..
6. The plaintiff states that they have joint ventures with M/s Bioseeds Inc of Panama known as M/s Shriram Bioseeds Genetic (India). Another JV is with M/s Yara Inc of Norway with "Shriram Energy" and together they have their reputed brand "Yara Liva"..
7. As per plaintiff the defendant No.
1. is the partnership firm and defendants 2 and 3 are the partners of that firm. Defendants 4 and 5 are the dealers of the products of defendant No..
1. On 17.5.2010 the plaintiffs marketing representative came across defendants products and in view of that, the plaintiff has filed the present suit..
8. It is also stated that earlier, in order to protect the mark SHRIRAM, the plaintiff filed the said civil suits bearing Suit No. C.S. (OS) No
104. 2/2010 Page 5 of 15 910/2009 and Suit No.1035/2009 before this Court and this Court vide its order dated 23.10.2009 granted ad-interim injunction against other defendants who were selling their product (POP) under the trademark similar to "SHIRIRM". The said order dated 23.10.2009 was also upheld by the Division Bench of this Court vide their order dated 25.03.2010 and in the suit bearing Suit No. 884/ 2010 also this Court has passed an ex-parte injunction in favor of the plaintiff vide order dated 7.5.2010. Case of the Defendants.
9. The defendants in their written statement have denied all the averments made in the plaint and have also raised various objections, inter alia, that the suit is not maintainable as the plaintiff has no locus to file the same. The trade mark of defendant 1-3 is different from that of the plaintiff in the set up style, the colour and the packaging, thus, no question of infringement of copyright and passing off arises..
10. In the written statement, it is stated that the trade name "SHRIRAM" is common to trade name and hence, publici juris and the defendant following the Hindu religion adopted the said trade name honestly and bonafidely. The defendant denies that they are using the name and trade mark as that the plaintiffs..
11. In reply, it is stated by the plaintiff that plaintiff is one of the leading manufacturer of fertilizers, insecticides, pesticides, plastics, sugar, cement, plaster of Paris etc. the plaintiff is the successor of M/s DCM Ltd and it belongs to the lineage of Lala Shriram. Plaintiff has been using expression "Shriram" as trademark for its vast number of products since 1960s and with the passage of time, Shriram has C.S. (OS) No
104. 2/2010 Page 6 of 15 acquired secondary meaning and has become exclusively associated with the products of the plaintiff..
12. The defendants also adopted the same dress code of that of the plaintiffs company and using it with ulterior bad motive. The defendants have adopted similar style of "Shriram Cartap 4G" of that of the plaintiff. The defendants have slightly altered the style of writing the name "Shriram". The plaintiff alleges that this amounts to infringement..
13. The plaintiff has also invoked the territorial jurisdiction on the ground that since the plaintiff is a public limited company having its registered office at 6th Kanchanjunga Building, 18 Barakhamba Road, Connaught Place, New Delhi- 110001, therefore, this Court has also the jurisdiction under Section 134 of the Trade Marks Act, 1999 (hereinafter called the "Act")..
14. During the course of hearing of interim application, it was informed by Mr. Ajay Sahni, learned counsel appearing on behalf of the defendants that they have got the registration of the trade mark No.1867816 from the Registry. Photocopy of registration certification is also produced..
15. He further argued that under Section 23 of the Trade Marks Act, 1999 the date of registration relates back to the date of application i.e. 29.09.2009. He submits that in view of registration the defendants have got the rights under Section 28 of the Act irrespective of the fact that whether the registration is, rightly or wrongly, granted and even despite of interim order passed by the court..
16. However, he agrees that the plaintiff is entitled to continue C.S. (OS) No
104. 2/2010 Page 7 of 15 with the suit for passing off which is still maintainable. But, the defendants are residing and carrying on their business outside the jurisdiction of this Court, the plaintiff, under the action of passing off cannot take the advantage of Section 134 (2) of the Act in order to invoke the territorial jurisdiction..
17. As the two packing materials used by the parties are different, even the plaintiff cannot take the benefit of Section 62(2) of the Copyrights Act, 1957. Therefore, the plaint is liable to be returned under Order VII, Rule 10 CPC because of lack of jurisdiction..
18. Mr. Sahni did not challenge the registration granted in favour of the plaintiff pertaining to the trade mark SHRIRAM..
19. It is the admitted position that the defendants did not amend the written statement after obtaining the registration nor the defendants have filed any application for return of plaint under the provisions of Order VII Rule 10 CPC. It is also pertinent to mention that the defendants in their written statement have not denied the existence of territorial jurisdiction of this Court..
20. Section 134(2) of the Act provides an additional form of jurisdiction. If, at the time of institution of the suit or other proceedings, the plaintiff is actually or voluntarily resides or carrying on business or personally works for gain, the suit for infringement of trade mark etc. can be instituted in any Court inferior to a District Court having jurisdiction to try the suit. In the present case, the specific statement has been made by the plaintiff that the plaintiff has its office in New Delhi and the jurisdiction is invoked under Section 134 of the Act by the plaintiff. C.S. (OS) No
104. 2/2010 Page 8 of 15.
21. It is trite law that in the cases wherein objection has been raised on the counts of Order VII Rule 10 and 11 CPC without the application or specific plea on jurisdiction, then the same has to be dealt with by applying the principles that the plaint has to be assumed as correct. In case of objection on jurisdiction on demurer, if a formal and meaningful reading of the plaint discloses a cause of action qua jurisdiction, then the court can conveniently entertain the jurisdiction on the subject suit..
22. The reference is invited to the judgment of Apex court in the case of Exphar SA and Anr. Vs. Eupharma Laboratories Ltd. and Anr.; 2004(28)PTC251(SC) wherein Ruma Pal, J. speaking for the Apex court has observed as under : "Besides when an objection to jurisdiction is raised by way of demurrer and not at the trial, the objection must proceed on the basis that the facts as pleaded by the initiator of the impugned proceedings are true. The submission in order to succeed must show that granted those facts the Court does not have jurisdiction as a matter of law. In rejecting a plaint on the ground of jurisdiction, the Division Bench should have taken the allegations contained in the plaint to be correct. However, the Division Bench examined the written statement filed by the respondents in which it was claimed that the goods were not at all sold within the territorial jurisdiction of the Delhi High Court and also that the respondent No.
2. did not carry on business within the jurisdiction of the Delhi High Court".
23. Applying the same principles to the facts of the present case, I am of the view that if the plaint is read meaningfully, it is beyond the cavil of any doubt that plaint does discloses in the jurisdictional paragraph as to how this court has jurisdiction on the basis of clear applicability of section 134 of the Act of 1999. It follows from the above discussion that on the date of institution, this court had C.S. (OS) No
104. 2/2010 Page 9 of 15 jurisdiction to entertain and try the proceedings on basis of the provisions under the law..
24. It is also pertinent to mention here that originally the plaintiff filed the combined action i.e. infringement of trade mark and passing off action also. The defendants in para 38 of the written statement have admitted the jurisdiction of this court. One fails to understand even if the contentions of Mr. Sahni are accepted that the suit, as of today for infringement, is not maintainable in view of registration (though no amendment is made in the written statement) as to why the defendants are now challenging the jurisdiction on passing off also when in the written statement in combine cause of action, the defendants admitted the territorial jurisdiction..
25. It is, however, the contention of the learned counsel for the defendants that this court should examine the subsequent event of registration which is granted in favour of the defendants. Till date, the written statement has not been amended to this effect and no plea has been taken on the basis of the lack of jurisdiction. In the absence of such plea in written statement or application for return of plaint premised on the subsequent event..
26. Therefore, in the absence of any amendment the said question has now become a mixed question of fact and law..
27. Further, this court is called upon to examine the impact of subsequent events which has occurred the pursuant to the assuming the jurisdiction by this court under the law. The circumstances attending the factum of registration obtained by the defendant also needs to be considered and needs to be tested in an in-depth trial by framing of issue. At this stage, it is suffice to state that the registration has been C.S. (OS) No
104. 2/2010 Page 10 of 15 secured by the defendants bearing No. 1867816 which has been although applied prior but, was prosecuted and obtained pursuant to the interim orders passed by this court in the matter. The Registrar of Trade Marks has not cited the previously registered trade mark No.1092754 of the plaintiff as a matter of the conflicting the mark in the examination report and proceeded to grant the registration without citing the plaintiffs prior registered mark and also perhaps not been informed about the interim orders and seisen of the dispute by this court and granted the registration contrary to Rule 37 of the Trade Marks Rules, 2002. The same reads as under :.
37. Acknowledgement and Search - (1) Every application for the registration of a trade mark in respect of any goods or services shall on receipt, be acknowledged by the Registrar. The acknowledgement shall be by way of return of one of the additional representations of the trade mark filed by the applicant along with his application, with the official number of the application duly entered thereon. (2) Upon receipt of the application for registration of trade mark, the Registrar shall cause a search to be made amongst the registered trademarks and amongst the pending applications for the purpose of ascertaining whether there are on record in respect of the same goods or services or similar goods or services any mark identical with or deceptively similar to the mark sought to be registered and the Registrar may cause the search to be renewed at any time before the acceptance of the application but shall not be bound to do so. In these circumstances, this court is extremely doubtful as how this court should allow the factum of registration to be pressed into service which has been secured in complete ignorance of the orders passed by this court and flouting the clear provisions of the Act..
28. The Division Bench of this court in the case of State C.S. (OS) No
104. 2/2010 Page 11 of 15 Trading Corporation of India Limited v. Government of the Peoples Republic of Bangladesh (DB), 63 (1996) DLT 971, wherein Honble Justice R.C. Lahoti (as his lordship then was) observed about the cases involving the challenge of jurisdiction in variety of the circumstances in following terms: "A court seized of a suit and a prayer for the grant of ad interim relief may be faced with a doubt or challenge as to the availability of jurisdiction to try the suit in a variety of circumstances. The court has to act as under :- (a) In the case of inherent lack of jurisdiction apparent on the face of the record, court cannot exercise jurisdiction over the suit so as to pass any interlocutory order or grant interim relief; (b) If it appears from a bare reading of the plaint that the court does not have jurisdiction to try the suit, the plaint itself may be returned for presentation to a proper court under Order 7 Rule 10 CPC; (c) If the suit appears to be barred by any law, the plaint may be rejected under Order 7 Rule 11 Civil Procedure Code ; (d) It may be a disputed question of fact or law or both- whether court has jurisdiction over the suit or not. Such a question if it be a pure question of law it can be decided on hearing the parties on a preliminary issue. Such a challenge to the jurisdiction of the court to entertain the -suit being laid by the defendant as a pure question of law, it is incumbent upon the Judge to determine that question as a preliminary issue before making absolute the rule issued earlier; (e) If the determination of jurisdiction of the Court is a question of fact or mixed question of fact and law requiring evidence to be adduced before recording a finding, the determination of the question may in appropriate, cases be liable to be postponed till after the determination of all or several other issues if the evidence to be adduced by the parties may be common on the issue of jurisdiction and such other issues." (Emphasis Supplied).
29. It is established law that in an action before the civil court relating to infringement proceedings, the validity of the trade mark cannot be questioned more so at the prima facie stage. But, it cannot C.S. (OS) No
104. 2/2010 Page 12 of 15 also be lost sight of that the registration is merely a prima facie proof of validity by virtue of section 31 of the Act. There is always a rebuttable presumption available under the law in such cases where the circumstances attending the same speaks to the contrary, the court can at any stage draw inference to the contrary even in cases wherein there shall be prima facie presumption as to validity. (Kindly see the judgment of Division bench of this court in the case of Marico Ltd. Vs. Agro Tech Foods Limited; 2010 (44) PTC 736 (Del.) wherein this court observed in the context of lack of distinctiveness in the following terms: "A trademark is ordinarily used in relation to goods of a manufacturer. A trademark can be registered but ordinarily registration is not granted if the mark falls under sub-sections 1(a) to 1(c) of Section.
9. The proviso however, provides for entitlement to registration although ordinarily not permissible under Sections 9 (1) (a) to (c), provided that the mark has acquired a distinctive character as a result of its use prior to registration or is otherwise a well known trademark. Registration is only prima facie evidence of its validity and the presumption of prima facie validity of registration is only a rebuttable presumption." (emphasis Supplied)).
30. In the present case too, the situation like the one discussed above has occurred wherein the registration obtained by the defendant under some suspicious circumstances wherein the present suit was filed on 19.05.2010 and interim orders were passed on 21.05.2010 and the registration of the same very mark was granted on 16.03.2011. It is not disputed by the defendants that they prosecuted during the currency of the interim order when this court was in seisen of the dispute and it was not informed by the defendants to the Trade Mark Office about the interim orders passed by the Court. In a way, this C.S. (OS) No
104. 2/2010 Page 13 of 15 Court has passed the order by comparing the two trade marks of the parties and the defendants have obtained the registration of the same very trade mark in order to frustrate the orders of this Court. Hence, there is clear violation of the provisions including Section 11 as the identical prior registered trade mark of the plaintiff was not cited as a conflicting mark as per the examination report handed over by the defendants counsel and also the same is contrary to rule Rule-37 of the Trade Mark Rules, 2002 which provides as a duty of the registrar to examine the application by causing search of the previously pending and registered marks and perhaps the registrar was also not informed about this court being in seisen of the dispute and interim orders passed by this court. Thus, considerable doubts can be expressed upon the validity of such registration..
31. By ignoring the mandatory provisions of the Act and granting registration to the defendants, it is clear that it is done with the malafide intention, in order to defeat the orders passed by the Court. The present case is not the only one, but in other cases also the similar situation has happened. Therefore, this Court is of the considered view that if the party will act in such a manner in the Trade Marks Office and get the registration without informing the interim orders passed by the Courts, the Court would be entitled to examine the conduct of the party..
32. All these facts needs more consideration in detail in trial and cannot be adjudicated on the basis of mere oral plea of the defendants that there is a registration in favour of the defendants and then what follows is a return of plaint simplicitor by mere operation of law. C.S. (OS) No
104. 2/2010 Page 14 of 15.
33. The mute question is rather as to whether this court can be divested with the jurisdiction which it initially had by way of some subsequent events which have not even been pleaded and no objection on jurisdiction is taken at this stage in the written statement. In my opinion, the answer at this stage of the proceedings is negative and the jurisdiction if examined at this stage becomes a mixed question of fact and law as there are factual pleas which are required to be taken, the traversals of the same shall be taken soon after. Then, it becomes a triable question whether the registration of the defendants is actually a valid one or is it just an entry wrongly remaining on the register depending upon the inference which the court is going to draw by way of impact of subsequent events..
34. Resultantly, the objection qua the jurisdiction at this stage cannot be sustained and the same is dismissed. C.S. (OS) No.1042/2010 List the matter before Joint Registrar on 02.03.2012 for completion of plaintiffs evidence. MANMOHAN SINGH, J. FEBRUARY 08, 2012 C.S. (OS) No
104. 2/2010 Page 15 of 15