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Judgment
Shiv Narayan Dhingra, J.
IA No. 7543/2005
By this application under Order 7 Rule 11(a) & (d) read with Section 9 and Section 151 CPC the defendant has contented that the plaint filed by the plaintiff was liable to be rejected.
First ground taken by the applicant is that the 2nd plaintiff was only a permitted/licensed user of the trade mark. In view of the Section 53 of Trade Mark Act read with Section 2(1)(r)(ii) of the Act, the suit filed by the 2nd plaintiff for infringement of trade mark does not lie since Section 53 of Trade Mark Act specifically provides that a permitted user shall have no right to initiate proceedings for infringement. It is stated that in view of the Section 9 of CPC, the suit was not maintainable since it was specifically barred u/s 53 of Trade Mark Act. It is further urged that neither 1st plaintiff nor the 2nd plaintiff were registered proprietor or registered user of the trade mark ''Glucon-D'' and the certificate filed by the plaintiffs in this respect would show that ''M/s. Glaxo India Limited'' was the registered proprietor of the trade mark. The suit was therefore not maintainable on behalf of either of the plaintiffs.
The counsel during arguments also pointed out that in the plaint, self-contradictory averments have been made by the plaintiff. In para 3 of the plaint, it is stated that plaintiff was registered proprietor in India of the trade mark ''Glucon-D'' whereas in para 4, it is stated that trade mark Glucon-D was assigned to the 1st plaintiff by Glaxo India Limited by a deed of assignment dated 30th September, 1994. Defendant''s counsel contended that the two averments cannot go side by side. The plaintiff cannot, simultaneously, claim to be assignee of a trade mark as well as registered proprietor of the trade mark. An assignee or licensee had no right to file a case for infringement in view of Section 53 of Trade Mark Act.
The next contention of the applicant is that there was no averment in the plaint whether the plaintiff No. 1 or 2 were either registered proprietor or registered user of the trade mark. Trade Mark Act 1999 recognizes only two categories of persons, namely, registered proprietor or registered user who can enforce the rights for the infringement in a registered trade mark. The suit was therefore bad in law. It is further pleaded that suit was also barred u/s 134(1)(a) & (b) since this Court has no territorial jurisdiction to try this suit. It is submitted that under the above provisions of law suit can be instituted in the District Court having jurisdiction within whose jurisdiction, at the time of the institution of the suit, the person instituting the suit actually and voluntarily resides or carries on business or personally works for gain. The 1st plaintiff neither resides nor carries on business within the territory of India nor there was any averment to this effect. Rather the plaintiff No. 1 was located in Milano, Italy. plaintiff No. 1 therefore has no locus standi to file the present suit. Where there are more than one person instituting the suit, any of them should actually and voluntarily reside or carry on trade or personally work for gain within the local limits of the District Court concerned. Since the 2nd plaintiff was neither the registered proprietor nor the registered user and had no right to bring an action for infringement and the 1st plaintiff of its own showing had no place of business within the local limits of this Court, therefore this suit was barred u/s 134 of the Act.
It is also argued that as far as the passing of action against the defendant was concerned there is not even a whisper in the plaint that defendant had at any point of time carried on any commercial operation within territorial jurisdiction of this Court. It is also averred that defendant has neither directly or indirectly marketed or sold any of its products within the Delhi. Regarding copyright action, it is argued by counsel for the defendant that the packaging design has also been claimed by the plaintiff to be registered under the trade mark and not as a copyright. The plaintiff has claimed that a deed of assignment dated 30th September, 1994 was granted to it assigning rights in the artistic work used on the packaging of ''Glucon-D'' but the said deed of assignment has not been annexed to the plaint. The plaintiff has not placed on record any document of ownership of the artistic work. Neither the packaging was covered under the artistic work to enable the plaintiff to claim the copyright. It is submitted that the plaint does not disclose any cause of action and therefore was liable to be dismissed.
A perusal of trade mark registration certificate, relating to this trade mark, filed by the plaintiff would show that the trade mark Glucon-D was renewed in the name of Glaxo Laboratory India Ltd. on 21st May, 2003. The certificate also gives a history in respect of the trade mark and history shows that this trade mark was renewed for a period of 7 years from 21st May, 2003 and advertised in Journal No. 13101. Thereafter, a request was made on form No. TM 33 on 2nd June, 2004 and vide order dated 10th June, 2004, the registered proprietor''s name was changed to M/s. Glaxo Laboratory India Ltd. Another request in form No. TM 24 dated 16th March, 2004 was made and vide order dated 10th June, 2004 M/s. Heinz Italia S.r.l Via Cadolini 26, 20137, Milano, Italy was registered as a subsequent proprietor of this trade mark w.e.f. 30.9.1994 by virtue of an assignment deed dated 30.9.1994. Order was also made regarding change of name in certificates dated 2.2.1998 and 30.7.1999. Thus, it is apparent that as per the document filed by the plaintiff on record, plaintiff was assignee and registered user of trade mark ''Glucon-D'' and the name of the plaintiff was entered into trade mark register as a proprietor of the trade mark under an assignment agreement. The averment made by the plaintiff of being a registered proprietor is based on documentary proof. There is no contradiction between averments made in paras 3 and 4 of the plaint. The plea of the defendant that plaintiff No. 1 was not a registered user is, prima facie, belied from the documents filed by the plaintiff No. 1 plaintiff No. 1, therefore, could have brought an action for infringement against the defendant in respect of the trade mark ''Glucose D'' and the labels registered and assigned to the plaintiff No. 1.
It is averred in the plaint that plaintiff No. 2 was a subsidiary of plaintiff No. 1 and was a company incorporated in and affiliated to Heinz Italia. The 2nd plaintiff was permitted/licensed user of the trade mark ''Glucon-D'' and 2nd plaintiff was engaged in manufacturing and marketing of the product. Though, 2nd plaintiff, being not a registered user could not have independently brought an action for infringement, but when suit has been jointly filed by the plaintiff No. 1 and 2 for infringement of trade mark and plaintiff No. 1 is a registered user of the trade mark, the bar of Section 53 of Trade Mark Act is not applicable in this case.
The second contention of the applicant/defendant the suit being barred u/s 134, is also not tenable. The plaintiff No. 2 is a subsidiary of plaintiff No. 1. The plaintiff No. 2 after getting the proprietary rights in the trade mark and right to manufacture the product from Glaxo Laboratories India Ltd. constituted a subsidiary company and started manufacturing and marketing this product in India through plaintiff No. 2 For the purpose of jurisdiction of Court in terms of Section 134 of Trade Mark Act, the conditions precedent is that the plaintiff must actually and voluntarily reside or carry on business or personally work for gains within the territorial jurisdiction. The expression ''carries on business'' does not mean that the person has to be personally present within the jurisdiction of the Court. A business can be carried out at a place without even the presence of the company at that place. Such business may be carried out through an agent or subsidiary company or through a manager or through a servant. It is not necessary for the owner of a business to reside or have office within the jurisdiction of the Court and an owner may carry on business without his presence through his agent. In the present case, the plaintiff No. 1 is carrying on business within the territorial jurisdiction of this Court through plaintiff No. 2 who is a subsidiary of plaintiff No. 1 Though plaintiff No. 1 is not having his business address in Delhi but plaintiff No. 2 a subsidiary of plaintiff No. 1, is having its place of business and office in Delhi. I, therefore, consider that the suit for infringement action by plaintiff No. 1 is not barred u/s 134 of Trade Mark Act because of the fact that plaintiff No. 1 is carrying on business within the jurisdiction of this Court through its subsidiary.
The action brought against the defendant is in respect of the infringement of registered trade mark ''Glucon-D''. The defendant has started using trade mark ''Glucose-D'' which plaintiff alleges is deceptively similar to plaintiff''s trade mark. Since the action is a combined action for infringement and passing of the action, the jurisdiction of this Court can be invoked u/s 134 of Trade Mark Act by the plaintiff on the basis of the fact that plaintiff was carrying on business within the jurisdiction of this Court. The plea that the defendant was not carrying on any business within the territory of this Court, therefore passing of action would not lie within the territory of this Court, would have been tenable if the suit filed by the plaintiff was only for passing of action. In fact, the plaintiff in the suit has made prayer that the defendant be restrained from using in relation to its goods the trade the mark ''Glucose-D'' or any other trade mark deceptively similar to ''Glucon-D'' and also that the defendant be restrained from using in relation to its goods and its designs or labels a trade mark which is deceptively similar to the plaintiff''s label/mark. Similarly a prayer is made that defendant be restrained from using packaging deceptively similar to that of plaintiff''s packaging and that the defendant be asked to render accounts of profits made by use of trade mark Glucose-D. The suit is basically a suit for infringement of the trade mark.
I, therefore, find no force in the application. The application is hereby dismissed.