The suit filed by the plaintiff is for injunction and damages for passing off and unfair competition. The plaintiff in their plaint relies on two factors for want of jurisdiction of the court to try and entertain the suit. The first being that the defendants have applied for registration of their trademark GEODON and ZOLOFT in Delhi in the Trade Mark Registration which is in the jurisdiction of this court. The second factor stated by plaintiff to give this court jurisdiction to entertain the present suit is that the defendant intended to sell and offer for sale the offending goods in Delhi.
The defendants in the suit who are also the applicants of the interlocutory application seeking return of the plaint for want of territorial jurisdiction submitted that the court does not have the territorial jurisdiction to entertain the suit. Further that in an action for passing off no cause of action would arise in Delhi as they have not sold any goods in Delhi, therefore this court would have no jurisdiction to entertain this suit for the threatened or intended sale of the offending goods in Delhi.
The arguments advanced by the counsel of the parties crystallizes into two issues that whether mere filing of an application for registration of the trademark would grant territorial jurisdiction to the court to hear the matter and that whether an injunction can be granted if only there is a threat of the goods being sold in that particular jurisdiction and there is no actual sale of goods.
Strong reliance was made on the Supreme Court decision in Dodha House & Patel Field Marshal Industries v S.K. Maingi & P.M. Diesel Ltd : 2006 (32) PTC 1 and division bench decision of Delhi High Court in the case of M/s Jawahar Engineering Company & Others, Ghaziabad v M/s Jawahar Engineers Pvt Ltd, Sri Rampur Distt. Ahmednagar: 1983 PTC 207. The learned Judge after considering the arguments settled on, that the point which requires resolution in this matter is what is the ratio of Dodha House case and whether Dodha House case in any way unsettles what has been laid down in Jawahar Engineering case.
The ratio of the Supreme Court decision in Dodha House case was found to be that an advertisement by itself in a Trademark journal would not confer jurisdiction upon a court within whose territorial limits the advertisement is published or seen.
The ratio in Jawahar Engineering case is that a mere advertisement in the trademark journal would not give a court, jurisdiction. However, a threat that the offending goods could be sold at a particular place would definitely give jurisdiction to the court in such a place because an injunction being prohibitive in nature is intended to prevent something likely to happen and once the plaintiff come to know that the defendant has applied for registration of trademark in Delhi, they can claim an injunction to prevent any sale of the infringing products in Delhi. In other words, the filing of an application for registration of a trademark in Delhi would give rise to a threat perception in the minds of the people that the offending goods would be sold in Delhi and that would be sufficient to give the courts in Delhi, jurisdiction to entertain a suit for passing off.
It was held that the ratio of Dodha House case does not go against what has been held in Jawahar Engineering case and that the decision in the Jawahar Engineering case covers the present case.
A threat of selling the offending goods in Delhi would in itself confer jurisdiction in the courts in Delhi to entertain a suit claiming an injunction in respect thereof. Whether the threat perception is justified or not is considered under the application made for ad-interim injunction. As far as the application seeking return of plaint for want of jurisdiction is concerned, if the threat exists then the court would certainly have jurisdiction to entertain the present suit.
© Lex Orbis 2006
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