Judgment :- 1. This is a plaintiff’s appeal questioning the correctness and legality of the order passed by the 18th Addl. City Civil Judge, Bangalore in O.S. 6487/2010 dated 04.10.2010 where under the applications filed by plaintiff I.A.No.I and II under Order 39 Rule 1 and 2 C.P.C. came to be dismissed. 2. It is contended that plaintiff is a Corporation organized under the laws of Switzerland having its office at Switzerland and is represented in India by its constituted attorney Mr.Rahul Sethi. It was contended that plaintiff has been carrying on the business under the name “DAVIDOFF” with its trade mark “DAVIDOFF” dating back to 1900. It was contended that said trade mark was first introduce in 1911 and it is the family name of a family that at the beginning of the last century emigrated from Kiev (Russia) to Geneva (Switzerland) and at Geneva Hilo (Henry) “DAVIDOFF”, Zino DAVIDOFF’s father opened a Tobacco Nist’s Store and Zino DAVIDOFF was born in 1906 and having spent time in Argentina. Brazil and Cuba to perfect his knowledge and expertise in Tobacco manufacturing started creating range of DAVIDOFF branded products. 3. It was contended that plaintiff is carrying on trading activities in connection with luxury products under the trade mark “DAVIDOFF” for goods other than tobacco products and smokers articles particularly perfumery, eye wear, watches, writing instruments, leather goods, ties, coffee, cognac of the highest quality. It was contended that plaintiff is the owner of the trade mark “DAVIDOFF” which is registered in various countries around the world and has been used since 1986 shirts and ties, since 1984 for perfumery and cosmetics, since 1987 for leather goods, since 1985 for watches, since 1986 for cognac, since 1988 for eye-wear and since 1998 for writing instruments and coffee. It was contended that it had accumulated immense world wide reputation and goodwill on account of its hard work and constant efforts at innovation and trade mark “DAVIDOFF” has earned substantial goodwill and reputation in the mind of public all over the world who recognize this brand for its excellence in quality and fashion and plaintiffs name and trade mark are associated with upmarket luxury image by customers everywhere. It was contended that reputation of the trade mark “DAVIDOFF” spilled over into India on account of advertising in international publications which are freely available in India and these goods are available in duty free shops, well known departmental stores. It was contended that the trade mark “DAVIDOFF” is registered in India under No. 454875 in Class 25 in respect of clothing, including boots, shoes and slippers and the said registration was renewed from time to time and its registration is valid and subsisting. Thus, it was contended that plaintiff has exclusive right to use the trade mark “DAVIDOFF” and sought to restrain third parties from infringing upon its rights of the trade mark “DAVIDOFF”. On these grounds suit came to be filled before the High Court of Judicature at Delhi in C.S. (O.S.) 548/2008). On registering the suit, summons came to be issued by the Honorable High Court of Delhi and in I.A. 3656/2008 an order of exparte injunction was passed against the defendant vide order dated 26.03.2008 and thereafter on 20.07.2010 plaint came to be returned by the Honorable High Court of Delhi for want of territorial jurisdiction. 4. On return, plaintiff filed the present suit by presenting the plaint before the City Civil Court, Bangalore, reiterating the contentions raised in the suit filed before the Delhi High Court and said plaint presented at Bangalore came to be registered as O.S. 6487/2010. 5. Along with the suit, two applications namely I.A. No.I and I.A.No. II came to be filed by the plaintiff seeking an order of temporary injunction to restrain the defendants, their agents, servants, associates, etc., offering for sale or supply, selling, advertising, manufacturing, exporting, marketing, trading in the name of “DAVIDOFF” deceptively/confusingly similar thereto and from directly or indirectly running the website www.davidoffindia.com amounting to infringement of plaintiff’s trade mark registration No. 454875 in class 25 and to issue an temporary injunction restraining the defendants whether acting by itself or through their partners, officers servants, agents and representatives in any manner holding out an association of its products or business with that of the plaintiff by use of the name “DAVIDOFF” or any deceptively similar name or from doing other things as may be likely to lead to passing off the defendants goods or business as and for those of the plaintiff. 6. 6. The defendants who had entered caveat filed their detailed statement of objections to I.A.No.I and II filed by plaintiff and sought for dismissal of the applications. It was contended interalia that Bangalore Court did not have territorial jurisdiction since plaintiff nor plaintiff’s representative are residents of Bangalore nor plaintiff has its office at Bangalore as such suit was barred under Section 134 of the Trade Mark Act, 1999. It was also contended that suit was not maintainable since the same plaint which was returned by Delhi High Court was not presented before the Court at Bangalore since fresh suit has been filed by adding defendant No.2 as party without obtaining leave for the Court. It was also contended that people belonging to Christian community largely use the name “David”/DAVIDOFF” as their personal name and as such it cannot be assigned to any one particular individual and thus it was barred under Section 9 of the Trade and Merchandise Marks Act, 1958 and the registration done by the office of the trade mark register is illegal and as such suit is not maintainable. 7. It was contended that defendant is using the trade mark “DAVIDOFF” since 1997 and is selling its product in the market since last 12 years. It was contended that under Section 9 of the Trade Marks Act, 1999 trade mark of the plaintiff had been registered illegally. It was contended that trade mark of the plaintiff was valid only for a period of seven years i.e., upto 1993 and it was not registered for a long period and thus it had expired in 1993. It was also contended that defendant is also filing an appeal before Intellectual Property Board for cancellation / removal of the mark of the plaintiff which is illegally registered and it will be shortly removed from the Register of Trade Marks and as such plaintiff cannot claim monopoly of the trade mark. It was further contended that number of persons are using the word “DAVIDOFF” as their trade mark and said name is used commonly in India by people belonging to Christian Community and said trade mark which has been got registered illegally is liable to be cancelled/struck off by this Court. All other averments made in the plaint came to be denied by defendants. On these grounds, defendants sought for rejection of applications I.A.No. I and II. 8. All other averments made in the plaint came to be denied by defendants. On these grounds, defendants sought for rejection of applications I.A.No. I and II. 8. On perusal of pleadings and after hearing the arguments advanced by learned Advocates trial Court has rejected I.A.No. I and II broadly on six grounds which are as under: (i) Original plaint presented before the Delhi High Court should have been filed before the Bangalore City Civil Court as it is. (ii) Power of Attorney of the plaintiff’s representative not produced. (iii) Lack of territorial jurisdiction. (iv) Registration Certificate of plaintiff’s trade mark in original is not produced by the plaintiff. (v) Use of the trade mark of the plaintiff is contrary to the provisions of Trade Marks Act, 1958. (vi) Present proceedings are required to be stayed on account of pendency of proceedings initiated by defendant before Intellectual Property Board seeking cancellation of appellant’s trade mark. 9. Heard the learned Advocates appearing for the parties namely Sri. Kamalcharan, appearing on behalf of the appellant and Sri. Rai, appearing with the leave of Court on behalf of Sri.C. Raghavendra, Advocate for respondents. 10. Sri. Kamalcharan would submit that he would address the arguments on the grounds on which trial Court has rejected the prayer made by the plaintiffs and as such he seeks leave of the Court. Sri. Rai, learned counsel appearing for respondents would submit that grounds canvassed or urged by the appellants would be replied on each of these grounds. Submission made by the learned Advocates are placed on record and each of the grounds urged and canvassed by the respective advocates and the findings thereon recorded on each of the ground are enumerated in the succeeding paragraphs. 11. It was contended by Mr.Kamalcharan, learned counsel appearing for plaintiff as under: I RE: Original plaint ought to have been filed. He would contend that trial court has held erroneously that suit filed by the plaintiff at Bangalore Court is a fresh suit with major deviations and suit filed before Delhi High Court and suit filed before trial Court cannot be said to be same and rejection of the plaint on the said ground is erroneous. He would contend that trial court has held erroneously that suit filed by the plaintiff at Bangalore Court is a fresh suit with major deviations and suit filed before Delhi High Court and suit filed before trial Court cannot be said to be same and rejection of the plaint on the said ground is erroneous. He would contend that original plaint returned by High Court of Delhi has been filed in the instant suit as Document No. 3 and on perusal of the same trial court could not have held that it is not the same plaint presented to uphold the contention of defendant. He would submit that under Order 7 Rule 10 and 10-A when the plaint is ordered to be returned, plaintiff would be entitled to present either the same plaint or a fresh plaint with such additions and modifications and no leave of Court would be required in this regard. In support of his submission, he relies on the Judgment of Honorable Supreme Court in the case of Hanamanthappa Vs Chadrashekarappa reported in AIR 1997 SC 1307 . 12. Per contra Mr.Rai would contend once Delhi High Court returned the plaint for being represented before Bangalore Court same plaint without any addition or deletion ought to have been presented and if any addition or deletion is to be made plaintiff had to seek leave of the court and contends that prayer for damages claimed before the Delhi High Court has been deleted in the present suit and second plaintiffs name has been included and valuation has been changed and as such he contends that plaint presented before Delhi High Court was not represented before Bangalore Court and as such he contends that it has been rightly held by trial Court that present suit is not the continuation of the suit filed before the High Court of Delhi and it would be contrary to provisions of Order 7 , Rule 10-A. He would also contend that court alone is empowered to strike out pleadings and there being no such order passed by High Court of Delhi either deleting the prayer for damages or adding 2nd defendant as a party to the suit, plaintiff could not have amended the plaint and presented it before Bangalore Civil Court. In support of his submission he has relied upon the following Judgments: (i) AIR 1999 BOMBAY 280 – St.George Shipping Co., Ltd., Vs. Irene Foreign Flag Vessel and others. (ii) AIR 1979 DELHI 114 – M/s. Vicco Laboratories Bombay, Vs. M/s. Hindustan Rimmer, Delhi. (iii) AIR 1959 PUNJAB 629 – Bhura Mal Dan Dayal Vs Imperial Flour Mills Ltd., and others (iv) 2010 (2) SCC 432 – Abdul Razak dead through LRs and others Vs Mangesh Rajaram Wagle and others (v) (2005) 13 SCC 754 – Iqbal and others Vs Hakimuddin and others FINDINGS:- 13. In the instant case a suit came to be filed by plaintiff before High Court of Delhi in C.S. (O.S. 548/2008) and by order dated 20.07.2010. the plaint was ordered to be returned. The said order came to be passed by virtue of its Judgment in Baniyan Tree Holding Pvt. Ltd., Vs. A. Murali Krishna Reddy and another reported in 2010 (42) PTC 361 Delhi whereunder it was held that mere availability of a website would not be sufficient ground to give rise for a cause of action to file a suit and plaintiff has to plead and produce material to prima facie show that some commercial transaction using the website was entered into by defendant and on account of this fact being conspicuously absent in the plaintiffs case, High court of Delhi ordered for the plaint being returned. A reading of order 7 , Rule 10 and 10-A would clearly go to show that at any stage of the suit, plaint can be returned to be presented to the Court in which the suit should have been initiated and Court while ordering return of plaint is also empowered to fix the date of appearance of parties in the Court to which plaint is to be presented after its return. Thus, a combined reading of Rule 10 and 10-A it would emerge that such procedure is adopted by the Courts for two purposes namely in the event of plaintiff seeks for set off for the court fee already paid and for the purposes of limitation. In fact subsection (3) of section 10-A mandates that a day has to be fixed for appearance of the parties before the Court where the plaint is to be presented by fixing the hearing date in order to avoid procedural delays for service of summons. In fact subsection (3) of section 10-A mandates that a day has to be fixed for appearance of the parties before the Court where the plaint is to be presented by fixing the hearing date in order to avoid procedural delays for service of summons. Thus, if a plaint is represented before such Court, as ordered after the return with either additional facts or with deletion of certain facts on the same cause of action, it cannot be held that plaintiff is precluded from filing the said amended plaint. Though Mr.Rai, learned counsel appearing for defendant would contend that plaintiff ought to have sought the leave of the Court and amended the plaint under Order 6, Rule 17. Said situation would not arise in the event of a fresh plaint being presented by the plaintiff. It is this precise point which came to be answered by Honorable Apex Court in Hanmanthappa’s case referred to supra wherein it is held as follows: “Admittedly, the respondents filed O.S. No. 158/94, in the Court of District Munsiff, Navalagund. On grounds of lack of territorial jurisdiction the plaint was returned for presentation to the proper court. Accordingly, after making necessary amendment to the plaint the respondents represented the suit, which came to be numbered as O.S. No. 10/91. In Civil court at Dharwad. The petitioners filed an application under Order VII, Rule 10 C.P.C. for dismissal of the petition on the ground that the plaint was materially altered. without seeking permission for amendment of the plaint as required under Order VI, Rule 17, C.P.C. The High Court dismissed the petition. It is contended by Shri. Kulkarni, learned counsel for the petitioners, that since the petition had been filed with amended averments in the plaint, necessarily it must be treated to be a fresh plaint and no one after representation to the proper court. We find no force in the contention. The object of Order VII, Rule 10-A is that the plaintiff, on return of the plaint, can either challenge in an appellate forum or represent to the Court having territorial jurisdiction to entertain the suit. In substance, it is a suit filed afresh subject to the limitation, pecuniary jurisdiction and payment of the Court fee as had rightly been pointed out by the High Court. In substance, it is a suit filed afresh subject to the limitation, pecuniary jurisdiction and payment of the Court fee as had rightly been pointed out by the High Court. Therefore, it cannot be dismissed on the ground that the plaintiff made averments which did not find place in the original plaint presented before the court of District Munsiff, Navalgund. It is not always necessary for the plaintiff to seek amendment of the plaint under Order VI, Rule 17 C.P.C. At best it can be treated to be a fresh plaint and the matter can be proceeded with according to law. Under those circumstances, we do not think that there is any error of law committed by the High Court in giving the above direction”. 14. In the instant case plaintiff has not suppressed the fact of filing of the suit at Delhi High court and the copy of the plaint in C.S. (O.S. 894/2008) has been filed along with the present suit in question as Document No.3 before the Civil Court, Bangalore and thus there is no suppression of facts. In fact plaintiff has categorically stated in paragraph 4 of the plaint presented at Bangalore about the order that came to be passed by High Court of Delhi in C.S. (O.S. 548/2008) on 20.07.2010. Whereas in the case of Saint George Shipping Co., referred to supra relied upon by the defendants there was suppression of fact and as such the said judgment is not applicable to the facts and circumstances of the case. In case of Baruhudan Dayal case referred to by Mr.Rai refers to payment of court fee and an amendment application was made and allowed by trial Court without notice to defendant. Hence same has no relevance to the facts and circumstances of the case. Even otherwise these two judgments recede to background in view of Hanmanthappa’s case rendered by Honorable supreme Court referred to supra. 15. In so far as contention with regard to striking of the pleadings without the leave of the court and judgments relied upon by learned counsel for defendant on this point stands answered by the dicta laid down by Honorable Apex Court in the case of Hanmanthappa’s case referred to supra and such decision relied upon by the learned counsel for defendant would not be of any assistance to them. 16. 16. It would also be of relevance to extract the Judgment of this Court in the case of Seenappa and others Vs Subbaiah and others reported in ILR 1999 Karnataka 1543-paragraphs 4,6 and 7 wherein it is held as under: “4. After hearing the arguments, advanced on both sides on the said application, the trial court dismissed the said application holding that, since the cause of action for filing the suit for partition is a recurring one, it is not necessary for the plaintiffs to obtain permission of the court below to withdraw the earlier suit filed by them and to seek permission to file a fresh suit and they could as well abandon their previous suit which was filed in the court which has no jurisdiction and to bring the second suit for the same relief. It is also observed by the trial court that Muniyamma the 3rd defendant in the earlier suit O.S. 6496/89 died on 23.08.1993 and since her husband who is the 1st defendant in the same suit is a party to the said suit, was an effective representative of the estate of Muniyamma and the earlier suit did not stand abated as contended by the defendants. The trial court therefore dismissed I.A.VI”. “6. In the Instant case, admittedly, the earlier suit O.S. 6496/89 was filed in the City Civil Court, Bangalore which has not territorial jurisdiction to entertain the suit. As the said Court has ordered for return of the plaint for presentation before proper court and as the plaintiffs have not chosen proper court and as the plaintiffs have not chosen to take return of the plaint to present it in proper court, it cannot be said that the earlier suit is still pending in a court of competent jurisdiction. So, the question of taking the permission of the court, for withdrawing the earlier suit and for filing a fresh suit under the provisions of Order 23 Rule 1 (4) CPC did not arise. Under the provision of Order 7 Rule 10 of C.P.C when the suit is filed in a court which has no jurisdiction to entertain the suit, the plaint can be returned by the said court for presentation to proper court which has got jurisdiction, within the time prescribed by the said court. Under the provision of Order 7 Rule 10 of C.P.C when the suit is filed in a court which has no jurisdiction to entertain the suit, the plaint can be returned by the said court for presentation to proper court which has got jurisdiction, within the time prescribed by the said court. It is only a concession given to the parties to take return of the plaint to present the same in proper court, so that they need not pay fresh court fees and file a fresh suit for the same relief in a court of competent jurisdiction. If the plaintiff does not avail the said concession and does not present the same plaint on which he had paid the court fees in a court of competent jurisdiction, it does not bar him to file a fresh suit by again paying court fees in a court of competent jurisdiction. It is nowhere mentioned under the provisions of order 7 rule 10 CPC that a party is not entitled to file a fresh suit in a court of competent jurisdiction, if he does not choose to take return of the plaint filed in a wrong court for presentation in proper court, availing the concession given to him. As rightly pointed out by the learned counsel for the respondents, since a decree passed by a court which has no jurisdiction to entertain the suit will be nullity and will have no effect in law, there is no bar for the plaintiffs to file a fresh suit in a court of competent jurisdiction. It is also pointed out by the learned counsel for the respondents in City Civil Court disclosed that the records of O.S. 6496/89 are also missing and they are not traced. It is therefore, pointed out by him that, it will be a futile exercise to direct the plaintiffs to take return of the plaint in that suit and to represent it in a court of competent jurisdiction at this stage, particularly when the time given for taking return of the plaint and for presenting the plaint in proper court has expired long back. As it is now found that there is no bar for filing a fresh suit in a competent court which has got territorial jurisdiction to try the suit under the provisions of Order 7 Rule 10 CPC., I feel that it is no longer necessary to direct the plaintiffs to take return of the earlier plaint filed in O.S. 6496/89 and to represent it in a court to proper jurisdiction”. “7.Even the 2nd contention taken by the learned Counsel for the revision petitioners that the present suit O.S. 276/94 filed by the plaintiffs is barred under the provisions of Order 23 Rule 1 (4) of CPC since the plaintiffs have not withdrawn the earlier suit and have not taken leave of the court to file a fresh suit for the same relief of partition and separate possession of their share is without any merits, as the earlier suit was not filed in a court which has got territorial jurisdiction to entertain the suit and the City Civil Court in which the earlier suit was filed had no jurisdiction to grant any such permission to the plaintiffs to withdraw the suit and to grant leave to file a fresh suit. Since, the plaintiffs have not chosen to taken return of the plaint in the previous suit and have not represented it in a court of competent jurisdiction, it cannot also be said that the said suit is still pending in any competent court and it must be taken that the plaintiffs have abandoned the earlier suit by not pursuing the same, though they did not get it dismissed. So, there was no need for the plaintiffs to seek for permission to withdraw the earlier suit and to file a fresh suit and the provisions of Order 23 Rule 1 (4) CPC does not apply to such a suit. In the present case, since they have not pursued the earlier suit filed by them which has been filed in a court which has no jurisdiction, the said earlier suit cannot be deemed to be pending and when the plaintiffs have not chosen to take return of the plaint to present it in proper court within the time given by the court, it cannot be contended that the present suit filed by the plaintiffs is barred under the provisions of Order 23 Rule 1 (4) of CPC. Hence, trial court was in error in holding the present suit is not a continuation of suit filed before High Court of Delhi and consequential rejection of the prayer of plaintiffs for grant of temporary injunction on this ground suffers from serious infirmity which cannot be sustained. II Re: POWER OF ATTORNEY OF PLAINTIFFS REPRESENTATIVE NOT PRODUCED 17. It is contended that conclusion arrived at by the trial Judge that plaintiff who claims to be representative of Zeno “DAVIDOFF” SA has not produced any such attorney nor has produced any licence to show that he is licensed to market the goods of the plaintiff company is contrary to the plaint averments and documents filed along with the plaint. The plaintiff has stated at paragraph 15 of the plaint that trade mark /name “DAVIDOFF” (signature underlined) is registered in its favour in more than 130 countries including India. A copy of the list of countries where the trade mark “DAVIDOFF” is registered or pending registration has been filed as Document No. 9. In India, plaintiffs trade mark “DAVIDOFF” has been registered as per Document No. 10 with trademark No. 454875 dated 30.05.1986 which is valid for a period of seven years i.e., upto 1993 and thereafter as per Document No.11 continued for the subsequent period from 1993 to 2000 and again continued from 30.05.2000 to 17.05.2007 and renewed upto 30.05.2017 as per Document No.12A. 18. Mr.Rai, learned counsel for defendants would contend that plaintiff is neither carrying on business in India nor having its office in India and as such he submits that the Court has no jurisdiction. He would also elaborate his submission to contend that power of attorney produced by plaintiff as document No.4 has expired and attorney has no authority to file the present appeal. 19. As seen from the averments made in the plaint its products are available in local markets, shops, departmental stores as well as duty free shops at Indian Airports and with liberalization of consumer products it is claimed by the plaintiff that its products are readily available in India across the country. It is also stated by plaintiff at paragraph 22 of the plaint about the sales figures of its products in India. FINDINGS:- 20. It is also stated by plaintiff at paragraph 22 of the plaint about the sales figures of its products in India. FINDINGS:- 20. The Power of attorney produced at Document No.4 would clearly go to show plaint at Bangalore has been presented by an authorized signatory namely Mr.Rahul Sethi on behalf of the plaintiff and said power of attorney dated 31.01.2008 is valid for a period of three years and was in force and vogue not only as on the date of presenting of plaint at Bangalore on 15.09.2010 but also on the date of presentation of present appeal on 07.01.2011. Hence, contention of learned counsel for defendant that authorized attorney had no authority to present plaint or appeal cannot be accepted nor the finding of trial Court to reject the prayer of plaintiff for grant of temporary injunction. Hence, conclusion of the trial court is erroneous and same cannot be sustained. III Re: Territorial Jurisdiction – 21. Sri. Kamalcharan would contend that trial court erred in coming to a conclusion to hold that under section 134(2) of the Trade Marks Act, 1999 the issue of jurisdiction is to be examined after recording of evidence since prima facie it appears that plaintiff is not having an own office in India and as such it erred in coming to a conclusion that it is not possible for the plaintiff that even if it has no office of its own in India, has a right to file a suit for infringement action. He would contend that section 20 of Code of Civil Procedure and Section 134 of Trade Marks Act requires to be read harmoniously and Section 134 of Trade Marks Act, 1999 is in addition to Section 20 of Code of Civil Procedure and in support of this proposition he relies upon Judgment of Delhi High Court in case of Intas Pharmaceuticals Ltd., Vs Allergan Inc., reported in AIR 2007 Delhi Page 108. 22. Per contra Mr. Rai, learned counsel for defendants would vehemently defend the order of trial court and submits that plaintiff has to satisfy the ingredients of sub-section (2) of section 134 of the act and admittedly plaintiff is not having an office in India and it has to examine after trial whether trial court has territorial jurisdiction to try the suit. Rai, learned counsel for defendants would vehemently defend the order of trial court and submits that plaintiff has to satisfy the ingredients of sub-section (2) of section 134 of the act and admittedly plaintiff is not having an office in India and it has to examine after trial whether trial court has territorial jurisdiction to try the suit. In support of his submission he relies upon the judgment of Honorable Supreme Court in the matter of M/s. Dhodha House Vs. S.K.Maingi reported in 1006 AIR SCW 72. FINDINGS:- 23. It is noticed from the order of trial Court that it has come to a conclusion that under sub-section (2) of Section 134 of the Act question of territorial jurisdiction to try the suit is to be dealt with after detailed enquiry and it has arrived at such a conclusion on the ground that it is not possible for the plaintiff to say that even when it has no office in India, it can be said it has a right to file the suit at Bangalore for infringement action. The Honorable Supreme Court in M/s. Dodha House case referred to supra has held as under: “43. A cause of action in a given case both under the 1957 Act as also under the 1958 Act may be overlapping to some extent. The territorial jurisdiction conferred upon the court in terms of provisions of the Code of the Civil Procedure indisputably shall apply to a suit or proceeding under the 1957 Act as also the 1958 Act. Sub-section (2) of section 62 of the 1957 Act provides for an additional forum. Such additional forum was provided so as to enable the author to file a suit who may not otherwise be in a position to file a suit at different places where his copyright was violated. The parliament while enacting the Trade and Merchandise Marks Act in the year 1958 was aware of the provisions of the 1957 Act. It still did not choose to make a similar provisions therein. Such an omission may be held to be conscious action on the part of the Parliament. The intention of the Parliament in not providing for an additional forum in relation to the violation of the 1958 Act is, therefore, clear and explicit. The parliament while enacting the Trade Marks Act. Such an omission may be held to be conscious action on the part of the Parliament. The intention of the Parliament in not providing for an additional forum in relation to the violation of the 1958 Act is, therefore, clear and explicit. The parliament while enacting the Trade Marks Act. 1999 provided for such an additional forum by enacting sub-section (2) of section 134 of the Trade Marks Act. The court shall not, it is well well-settled, readily presume the existence of jurisdiction of a court which was not conferred by the statute. For the purpose of attracting the jurisdiction of a court in terms of sub-section (2) of Section 62 of the 1957 Act, the conditions precedent specified therein must be fulfilled, the requisites wherefor are that the plaintiff must actually and voluntarily reside to carry on business or personally work for gain”. The very contention now raised in the instant case was the subject matter for consideration before the High Court of Delhi in the case of Intas Pharmaceuticals reported in AIR 2007 Delhi 108 whereunder it is held as follows:- “12. Now coming to section 20 of the Code of Civil Procedure, a perusal of the same make it manifest that it is possible to invoke the jurisdiction of a particular court if the defendants or any of the defendants resides or carries on business or personally works for gain within the jurisdiction of the said court. When the Trade Marks Act was enacted, the Legislature was fully conscious of the fact section 20 of the code of civil procedure provides for a forum and the place in which a suit is required to be instituted. Despite the said fact, section 134 of the Trade Marks Act, 1999 was enacted and while enacting the said provision. Which was in addition to the provisions of the Code of Civil Procedure, the Legislature specifically included the non obstante clause, which states “notwithstanding anything contained in the Code of Civil Procedure”. “13. Therefore, in our opinion, in view of the inclusion of the aforesaid expression in the statutory provision “notwithstanding” anything contained in the Code of Civil Procedure” the provisions of section 134 of the Trade Marks Act, 1999 shall have to be read in addition to the provisions of section 20 of the Code of Civil procedure. “13. Therefore, in our opinion, in view of the inclusion of the aforesaid expression in the statutory provision “notwithstanding” anything contained in the Code of Civil Procedure” the provisions of section 134 of the Trade Marks Act, 1999 shall have to be read in addition to the provisions of section 20 of the Code of Civil procedure. The aforesaid position is also made clear and reiterated by the Supreme court in the case of Dhodha House (AIR 2006 SC 730) (Supra). In paragraph 19 of the said judgment, the Supreme Court held thus: “19. Cause of action, as is well-settled, is a bundle of facts which are necessary to be proved in a given case. Cause of action, it is trite, if arises within the jurisdiction of the Court concerned empowers the court to entertain the matter. Determination of territorial jurisdiction of a civil court is governed by the provisions of the Code of Civil Procedure………. 20. The jurisdiction of the District Court to determine a lis under the 1957 Act as also the 1958 Act must, thus, be instituted where the whole or a part of cause of action arise. Sub-section (2) of section 62 of the 1957 Act provides for an additional forum….. 21. Admittedly, no such additional forum had been created in terms of the provisions of the 1958 Act”. “14. For the aforesaid conclusion that we have arrived at after scrutinizing the provisions of section 20 of the code of civil procedure and section 134 of the trade marks act, 1999 and particularly, the non obstante clause, we derive support from the decision of the supreme court in Dhodha House (AIR 2006 SC 730) (supra). Therefore, what is provided under section 134 of the Trade Marks Act is an additional forum over and above the one provided for by the provisions of section 20 of the CPC. This is also made clear when the provisions enacted under sub-section (2) of section 134 of Trade Marks Act are passed. It is also to be noted that the provisions of section 62 of Copyright Act are almost pari materia with the provisions of section 134 of Trade Marks Act. Sub-section (2) of section 134 clearly stipulates that the provisions made therein are in addition to what is provided for under section 20 CPC.” “15. It is also to be noted that the provisions of section 62 of Copyright Act are almost pari materia with the provisions of section 134 of Trade Marks Act. Sub-section (2) of section 134 clearly stipulates that the provisions made therein are in addition to what is provided for under section 20 CPC.” “15. In this view of the matter, and in terms of the aforesaid discussion, we are of the considered opinion, that the submissions of the learned counsel for the appellant that section 134 of Trade Marks Act overrides the provisions of sections 20 of code of civil procedure and that it impliedly repeals the said provisions, is found to be devoid of merit and is rejected. We hold that the provisions of section 134 of the Trade Marks Act, 1999 do not whittle down the provisions of section 20 of the CPC but only provide an additional forum and place for filing a suit in the case of any trade mark violation”. “16. In any event, in the present case, it is not the intention of the respondent/plaintiff to invoke the provisions of section 134 of the Trade Marks Act. It is categorically submitted before us by the learned counsel for the respondent for the purpose of proving and establishing that this court has territorial jurisdiction that what is sought to be invoked, is only the provisions of section 20 of the code of Civil Procedure and not the provisions of section 134 of Trade Marks Act. Therefore, we are required to scrutinize the plaint filed by the respondent/plaintiff and come to a definite conclusion as to whether or not this court will have the territorial jurisdiction, in terms of the provisions of Section 20 CPC” “19. In this view of the matter, the ratio of the decision of the Supreme court in Dhodha House: (AIR 2006 SC 730)(Supra) is not at all applicable to the facts and circumstances of the present case, to the aforesaid extent, as it had no occasion to deal with the issue regarding selling of the goods by the defendant in Delhi due to part of the cause of action had arisen within the territorial jurisdiction of this Court. Two decisions rendered by the Single Judges of this Court and the present impugned order passed by another learned single judge have held that since the offending goods are being sold by the appellant/defendant at a particular place, it shall definitely give jurisdiction to the court of such a place, which is also what was held in M/s. Jawahar Engineering Company (supra). It is necessary to mention at this stage that in view of the decision rendered in Dhodha House (AIR 2006 SC 730) (supra, the Supreme Court held that the decision in M/s. Jawahar Engineering Company (supra) will not be applicable to the facts of the case before it. Since the application for registration of trade mark in the cases before it had not been made within the territory of Delhi, the Supreme Court in the case of Dhodha House (supra) found and held that the decision in the case of M/s. Jawahar Engineering Company (supra) would be inapplicable to the facts of the said case before it. In the said case, the Division Bench of this Court also held that such Court will have jurisdiction where the trade mark is sought to be sold and if such trade mark is being sought for sale in Delhi amongst other places. Delhi shall also have jurisdiction to entertain such a suit”. 24. Plaintiff has alleged in the plaint at paragraph 38 of the present suit to the following effect: “38. The Defendants actually and voluntarily reside and carry on business personally and through their agent/s within the territorial jurisdiction of this Honorable Court. Moreover, the Defendants are offering for sale of counterfeit shirts bearing the Trademark/name ‘DAVIDOFF’ through the infringing website www.davidoffindia.com. Any person accessing the Defendant’s website can place order for the Trademark/name ‘DAVIDOFF’ shirts. This Honorable Court also have jurisdiction under Section 134 of the Trade Marks Act where the plaintiff’s goods are available freely”. 25. Cause of action is a bundle of facts which is required to be proved in a given case. Cause of action if arises within the jurisdiction of the Court concerned it empowers that Court to entertain the suit. 26. In the judgment rendered by Honorable Supreme Court in the case of M/s. Dodha House referred to supra two orders namely of Allahabad High Court and Delhi High Court came up for consideration. Cause of action if arises within the jurisdiction of the Court concerned it empowers that Court to entertain the suit. 26. In the judgment rendered by Honorable Supreme Court in the case of M/s. Dodha House referred to supra two orders namely of Allahabad High Court and Delhi High Court came up for consideration. In Dhodha’s case plaintiff who was carrying on the business of sweet meat sought for injunction against the defendant (which carried on similar business at Kotakpur in the district of Faridakot) alleging infringement of its registered Trade mark and also for infringement of its artwork/label/ of its registered copyright. Trial Court issued injunction and High Court held that Civil Court at Ghaziabad had no jurisdiction and hence appeal came to be filed by plaintiff before Honorable Supreme Court which ended in its dismissal and thereby High Court order came to be confirmed. 27. Likewise P.M. Disels filed a suit (original side) at High Court of Delhi against M/s.Patel Field Marshall Industries and others claiming relief of perpetual injunction restraining infringement of its trade mark, copyright, trading style, passing off and for rendition of accounts and application for injunction was rejected on the ground of lack of territorial jurisdiction and Division Bench while examining contentions raised by plaintiff held Delhi High Court had territorial jurisdiction (i) since it was a composite suit and (ii) defendant had applied for registration of its trade mark at Delhi. Thus, these two judgments came up for consideration before Honorable Supreme Court and after examining various provisions of Copyright Act, 1957 Trade and Merchandise Marks Act, 1958 it came to conclusion that in Dodha’s case High Court had positively arrived at a finding that infringement complained of primarily was under Trade and Merchandise Marks Act, 1958 and not under Copyright Act, 1957. In the instant case when facts are examined by scrutinizing plaint averments it would emerge that plaintiff had specifically alleged that defendant is selling similar products at Bangalore as that of plaintiffs and plaintiff has also alleged its products are being sold at number of outlets at Bangalore and identical issue having been examined by High Court of Delhi in Intas Pharmaceutical referred to supra has clearly held Dodha case was inapplicable to the facts of said case. Principles laid down in Intas Pharmaceuticals are squarely applicable to the facts of the present case prima facie since suit in question has been filed at Bangalore would be maintainable and as per Section 20 (c) of C.P.C. when cause of action arises either wholly or in part at Bangalore. In the instant cast, plaintiff has specifically contended that defendants voluntarily and actually reside and carry on business within the territorial jurisdiction of Bangalore and as such Bangalore Court also has jurisdiction to try and entertain the suit prima facie since the defendant is also claiming to sell its product at Bangalore as admitted by it in its written statement which however would be an issue triable during the course of trial. Hence, conclusion arrived at by the trial Judge to deny consideration of plaintiffs prayer for grant of temporary injunction at the initial stage is erroneous and same cannot be sustained. IV RE: Non-Production of original certificate 28. Learned counsel for appellant would contend that trial Court has erroneously interpreted Section 137 of Trade Marks Act, 1999 to come to a conclusion that plaintiff ought to have compulsorily furnished the original certificate of Trade Mark Registration and to hold non-production of the original certificate would disentitle the plaintiff to claim an order of temporary injunction. He would contend that computer generated on line copies of the plaintiff’s trade mark registration was produced along with the plaint as Document No.10.11.12 and 12A which has not been considered in proper perspective resulting in erroneous order being passed. He would contend that at interim stage these certificates were sufficient enough to show that plaintiff had registration of its trade mark and in support of his submission, he relies upon Judgment of Ozone Spa Pvt. Ltd., Vs Ozone Club reported in 2010(42) PTC 469 (Delhi). 29. Per contra Mr.Rai learned counsel for defendants would contend that finding of trial Court at paragraph 8 of its order is just and proper and does not call for interference and plaintiff had to be non-suited on account of non-production of original certificate. FINDINGS:- 30. 29. Per contra Mr.Rai learned counsel for defendants would contend that finding of trial Court at paragraph 8 of its order is just and proper and does not call for interference and plaintiff had to be non-suited on account of non-production of original certificate. FINDINGS:- 30. In order to examine this contention it would be necessary to extract relevant provisions of the Act which governs production of registration certificate namely Section 137 of the Trade Marks Act, 1999 which reads as under: “Section 137-Evidence of entries in register, etc., and things done by the Registrar- (1) A copy of any entry in the register or of any document referred to in sub-section (1) of Section 148 purporting to be certified by the Registrar and sealed with the seal of the Trade Marks Registry shall be admitted in evidence in all courts and in all proceedings without further proof of production of the original. (2) A certificate purporting to be under that hand of the Registrar as to any entry, matter or thing that he is authorized by this Act or the rules to make or do shall be prima facie evidence of the entry having been made, and of the contents thereof, or of the matter or things having been done or not done. 31. Trial Court at paragraph 8 has come to a conclusion that original certificate which is required to be produced in the legal proceedings is not produced and as such it has held that plaintiff is not entitled for relief of temporary injunction. A reference has been made by trial Court in its order that computer generated online copy has been produced and same cannot be accepted for being admitted in a legal proceedings. 32. As seen from the documents produced by plaintiff before trial Court, plaintiff has produced along with plaint true copies of certificate of registration of its trade mark as Document No. 10,11 and 12 and claimed exclusive right to use of the said trade mark “DAVIDOFF” in India. As to whether these copies of registration certificate would suffice at the preliminary stage is the one which has to be looked into and it is to be examined as to whether non-production of the same would be fatal. As to whether these copies of registration certificate would suffice at the preliminary stage is the one which has to be looked into and it is to be examined as to whether non-production of the same would be fatal. Trial Court has applied Section 137 of the Act to arrive a conclusion that non-production of original certificate under Section 137 read with Rule 119 is fatal to the suit. What Section 137 mandates is that a copy of an entry in the Register certified by the Registrar and sealed with the seal of the Trade Marks Registry is sufficient enough for being admitted in evidence without production of the original and it is for the trial Court to admit this document at the time of evidence without on production of original certificate. Section 137 does not place an embargo for the trial Court not to accept the true copies or copies generated through on lime for consideration of interim prayer. Such prohibition is available only while admitting it is evidence and not for considering its evidentiary value at preliminary stage. Admittedly in the instant case plaintiff has produced all original documents before High Court of Delhi and even otherwise as per the objection statement filed by defendants whereunder it has been contended by them that mark of the plaintiff has been illegally registered by the office of Trade Mark Registrar at paragraph at 5 and 7 of their objection statement would go to show that there is registration of the plaintiff’s trade mark in existence as on date of filing of the suit. Hence, trial Court committed a serious error in holding that non-production of the original certificate or a certificate duly issued by the Registrar of Trade Marks would disentitle the plaintiff for grant of an order of temporary injunction. It is also to be noticed that plaintiff has an opportunity to place the registration certificate even at the time of trial in order to prove that registration has been granted in its favour and as such doubt entertained by the trial Court at the stage of considering an application for grant of temporary injunction is not only premature but also without any basis. At this stage it would be of benefit to note the judgment of Delhi High Court in the matter of Ozone Spa Pvt. Ltd., Vs Ozone Club reported in 2010 (42) PTC 469 (Delhi) at paragraph 30 which reads as under;- “30. The other submission of the defendant is that the plaintiff has not filed the certificate for use in legal proceedings and has merely filed the copies of the registration certificate. The admission/denial in the present matter is yet to be carried out by the parties. The plaintiff still has an opportunity to file the certificates of registration or to summon the relevant record of the Trade Mark office in order to prove the registration granted in favour of the plaintiff, therefore, the objection at this stage cannot be decided in favour of the defendant as the plaintiff has filed the photocopies of registration certificates in its favour. Further, there is no denial by the defendant that the plaintiff has not obtained the registration. Therefore, the objection is not sustainable”. 33. Infact there is no denial by the defendant about the trade mark registered in favour of the plaintiff. On the other had defendants themselves contend that trade marks authority has erroneously and illegally granted registration of the trade mark in favour of the plaintiff which would prima facie establish that there is registration granted in favour of the plaintiff. Even otherwise there is no prohibition for filing a suit without production of certificate under Section 137 of Trade Marks Act, 1999. Hence, the finding of the trial Court on this issue does not stand to scrutiny and same is hereby set aside. V -RE: Section 124 – stay of Proceedings 34. It is contended by Sri.Kamalcharan, learned counsel for plaintiff that as on date of filing of suit, plaintiff had obtained registration of its trade mark “DAVIDOFF” and defendants had not contended in their objection statement regarding stay of present proceedings and it is only an after thought raised during course of arguments and filing of an appeal by defendant against registration of plaintiffs trade mark would not preclude the plaintiff from seeking order of temporary injunction. He would also draw the attention of court to sub-section (5) of Section 124 which empowers the Court to grant an order of temporary injunction even under such circumstances. He would also draw the attention of court to sub-section (5) of Section 124 which empowers the Court to grant an order of temporary injunction even under such circumstances. He would contend such a plea is unavailable to defendant in view of Section 31(2) of the Act. 35. Per contra Sri.Rai, learned counsel for defendants would support the order passed by the trial Court to contend that it is open for the defendant to file the written statement and raise a plea seeking stay of the suit on the ground, rectification proceedings are pending before Trade Marks Registry and when such an issue is raised trial Court ought to stay the suit, particularly when an application under section 124 of the Trade Marks Act, 1999 is filed and pending consideration. 36. It is held by the trial Court at paragraph 11 of the order under challenge that defendant is entitled to seek for stay of the proceedings when a defence is set up regarding a plea put forth by the plaintiff relating to invalidity of registration of defendant’s trade mark. It is an admitted fact that plaintiff had filed a suit in O.S.No. 548/2000 before High Court of Delhi and defendant had entered appearance and filed the written statement. Admittedly such a plea was not put forward. The written statement filed by the defendants before Delhi High Court does not disclose that any such plea had been put forward. Be that as it may, as rightly observed by trail Court defendants having a right to file written statement in the instant case are entitled to raise such a plea in their written statement and it is to be examined as to whether defendant has raised such a plea. In the instant case defendant having time to file written statement has filed as application under Section 124 of Trade Marks Act, 1999 seeking stay of proceedings. The following dates and events would be of relevance to consider this contention: 37. In the instant case defendant having time to file written statement has filed as application under Section 124 of Trade Marks Act, 1999 seeking stay of proceedings. The following dates and events would be of relevance to consider this contention: 37. In order to examine this contention it would be necessary to extract Section 124 (1) and subsection (5) along with Section 30 (1) (e) and Section 31 (2) of Trade Marks Act, 1999 and same are extracted herein below: 124 (1) “where in any suit for infringement of a trade mark- (a) the defendant pleads that registration of the plaintiff’s trade mark is invalid; or (b) the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the in validity or registration of the defendant’s trade mark, The court trying the suit (hereinafter referred to as the court), shall – (i) if any proceedings for rectification of the register in relation to the plaintiffs or defendant’s trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings: (ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff’s or defendant’s trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable to party concerned to apply to the Appellate Board for rectification of the register”. 124[5] “the stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order(including any order granting an injunction, directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit”. 30(1) (e) “the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each order, in exercise of the right to the use of that trade mark given by registration under this Act”. 30(1) (e) “the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each order, in exercise of the right to the use of that trade mark given by registration under this Act”. 31(2) “In all legal proceedings as aforesaid a registered trade mark shall not be held to be invalid on the ground that it was not a registrable trade mark under section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration”. 38. From a perusal of the above provisions, it would emerge that when a suit is filed for infringement of trade mark and injunction is sought for, such suit can be stayed in the eventualities enumerated in sub-section (1) namely when: (a) defendant pleads that registration of plaintiff’s trade mark is invalid. (b) The defendant raises a defence under clause (e) of sub-section (2) of section 30 and plaintiff also pleads the invalidity of the registration of defendant’s trade mark. (c) If there are any proceedings for rectification pending before the Registrar or Appellate Board in relation to plaintiff or defendant’s trade mark; or (d) If the Court is satisfied that plea regarding invalidity of registration of the plaintiff’s or defendant’s trade mark is prima facie tenable. 39. When the aforesaid eventualities are examined in the context of present case, if would emerge that at the time of filing of objections to the application for temporary injunction namely I.A.No.I and II, defendant has not lodged its objections to the trade mark of the plaintiff before the Registrars of Trade Marks or had filed any appeal before Intellectual Property Appellate Board, Said objections have been filed during October 2010 by the defendant, i.e., after the order was passed by the trial Court. It would also emerge from a combined reading of Section 30(1) (e) and Section 124(1) that there should be an existing dispute between the parties regarding the trade mark in question and in the event of one or more trade marks registered under the Act are identical or nearly resemble each other, the there would be a dispute as to its useability by both the parties and not otherwise. In such circumstances suit requires to be stayed and not otherwise. It would be necessary to note at this stage that invalidity of the registration cannot be presumed under sub-section (2) of Section 31 of the Act particularly when there is not plea put forward in this regard. Hence, it cannot be held that on the ground of the probable claim that defendant may raise with regard to the trade mark in question, injunction cannot be granted. This fact is also fortified from sub-section (5) of Section 124 itself which does not preclude the Court from making any interlocutory order including grant of an order of temporary injunction. Hence, contention raised by learned counsel for defendant that trial Court was justified in refusing temporary injunction on this ground is not tenable. Even otherwise also an order of temporary injunction was operating against the defendant from 26.03.2008 till 20.07.2010. VI Re: Use of trade mark, name “DAVIDOFF” 40. It is the contention of the plaintiff that late Zino- DAVID OFF was the pioneer in creating the range of DAVID OFF branded products and having tasted success to connect top quality, style, authenticity, honesty and lifestyle for the purpose of pleasure, the firm Zino – DAVIDOFF –SA firm was established in the year 1980 and thus plaintiff’s trade mark/name is well recognized by the public and in trade circles all over the world including India and plaintiff’s products are sold at duty free shops worldwide and it is also sold in high end shopping centers and malls in Indian metros and they enjoy immense popularity amongst its customers. It was further contended that Trade mark/name “DAVIDOFF” is registered in favour of the plaintiff in more than 130 countries across the world including India. A copy of the list of countries where the plaintiff’s trade mark is registered and/or pending registration has been produced along with plaint as Document No.9. It was further contended that Trade mark/name “DAVIDOFF” is registered in favour of the plaintiff in more than 130 countries across the world including India. A copy of the list of countries where the plaintiff’s trade mark is registered and/or pending registration has been produced along with plaint as Document No.9. Learned counsel for plaintiff would also contend that trial Court has failed to consider the fact of “prior user” of the trade mark in question by plaintiff and trade mark “DAVIDOFF” in Indian context has no relevance. He would also contend that no reason or justification is given by defendant for using this trade mark and as to why he is adopting this particular trade mark which is being used by plaintiff and contends non-consideration of plaintiff’s plea by the trial Court that plaintiff has a worldwide recognition of its trade mark and plaintiff had acquired transborder reputation has resulted in prejudice to the plaintiff. It is specifically contended that plaintiff’s trade mark “DAVIDOFF” is registered as TM No.454875 in class 25 vide registration certificate produced along with the plaint as Document No.10. It is also contended that it was renewed from time to time. It is contended plaintiff’s trade mark/name “DAVIDOFF” is recognized as a luxury brand by Indian residing in major cities by virtue of they being available in all leading shopping malls and various retail outlets. It is contended that plaintiff’s branded products are available at the local markets, departmental stores, duty free shops at Indian Airports and on account of liberalization, in economic front, plaintiff’s products are readily available across the country. It is contended that over the years sales in India of plaintiff’s products has increased year by year. It is also contended that plaintiff’s product under the trade mark/name “DAVIDOFF” are extensively advertised in several international magazines which has large circulation in India and on account of easy accessibility of information via Internet even to a common man the products of the plaintiff is accessible to all the consumers in India. It is also contended that in view of liberal foreign exchange control laws the consumers are able to order these goods via internet as well from India. 41. Per contra Mr. It is also contended that in view of liberal foreign exchange control laws the consumers are able to order these goods via internet as well from India. 41. Per contra Mr. Rai, learned counsel appearing for defendants would contend that “DAVIDOFF” is a common surname of Christian community and “DAVIDOFF” is connected to a Russian King who is well known personality of the said community and who was known for his best dressing sense and fashionable outfits and as such plaintiff’s cannot claim exclusive use of the said name and the mark “DAVIDOFF” has been used by various other users. It is contended that the mark “DAVIDOFF”was initially used by the second defendant from the year 1988 till 2004 and from the date of establishment of its business in the year 2004 this trade mark is openly and without any let or hindrance is being used by the defendant and it has established its own reputation and goodwill in the field of manufacturing of garments under the trade mark “DAVIDOFF” and it has promoted its business, advertised its trade mark and has made huge expenses for advertising its trade mark. 42. It is contended that the brand name “DAVIDOFF” was registered as a trade mark during 1986 by the plaintiff which was valid for a period of seven years upto 1993 and on account of there being no business in India carried on by the plaintiff’s it was not got renewed and as such the said trade mark stood removed from the register of trade marks. It is contended that only during the year 2005 plaintiff sought for fresh registration since by that time defendant had already applied for a search report and found that the said mark was not registered as on the date of making the application i.e., 28.07.1998 and as a bonafide user of the said trade mark, defendant continued to use the same. On these grounds the defendant contended that plaintiff’s are not entitled for injunction and sought for dismissal of the appeal as also affirming the order passed by the trail Court. 43. The trial court has refused the prayer of the plaintiff for grant of temporary injunction on the ground that name “DAVIDOFF” is a Christian name and same being a surname it cannot be exclusively claimed by plaintiff. 43. The trial court has refused the prayer of the plaintiff for grant of temporary injunction on the ground that name “DAVIDOFF” is a Christian name and same being a surname it cannot be exclusively claimed by plaintiff. In order to arrive at such a conclusion trial Court found that under 1958 Act there was absolute bar for registration of a mark, since the said mark contained the name of sect or religion, surname. It has been held by the trial court that prudent course to be adopted is to await the decision of rectification proceedings now pending before the Appellate Board. It was also held by the Trial Court the defendant has taken a contention that he is marketing and manufacturing clothes under the brand name “DAVIDOFF” since 1986 and as such the adjudication from the statutory authority will have to be awaited to decide as to who is the bonafide, concurrent or prior user of the mark irrespective of the fact of registration in favour of plaintiff. 44. At this juncture it would be of relevance to extract the judgment relied upon by trial Court in the case of Rajinder Kumar Aggarwal Vs. Union of India and anr reported in 2007 (35) PTC 616 wherein it has been held as follows: “10. Upon examining the provisions of Section 9 (1) and (2) of the 1958 Act and considering the submissions made by the learned counsel, I am of the view that the submissions made by Mr. Manmohan deserves to be accepted and those made by Mr.Sudhir Chandra can only be accepted in part. In so far as the provisions of Section 9 (1) (a) are concerned that was not in issue before the Assistant Registrar nor was it in issue before the Intellectual Property Appellate Board. And therefore, it would not be proper for this Court to examine as to whether the respondent No.2’s application fell within section 9 (1) (a) of the 1958 Act. The only issue that arose was with regard to the word AGGARWAL being registrable in view of the fact that it was a surname. It is another matter that is also happens to be the name of a sect/caste in India. That does not alter the position in as much as a surname and name of a sect/caste stand on the same footing. It is another matter that is also happens to be the name of a sect/caste in India. That does not alter the position in as much as a surname and name of a sect/caste stand on the same footing. In this petition, we are only concern as to whether the word AGGARWAL, which is admittedly a surname, can be registered under section 9 (1) (d) or under section 9 (2) . Clause (d) of section 9 (1) has two parts. The first part relates to one or more words having no direct reference to the character or quality of the goods. The second part creates an exclusion in respect of the said one or more words which in their ordinary signification are not geographical names, surnames, personal names or any common abbreviation thereof or the names of the sect,caste or tribe in India. The two parts are linked by the conjunctive word “and”. This would mean that if a word were to qualify for registration under clause (d), it must first pass the test of not having any direct reference to the character or quality of the goods. Once it clears this test, it must a) face the second test and that is that the word must not, according to its ordinary signification be, inter alia, a surname or a name of the sect/cast in India. So, although a word may have no direct reference to the character or quality of the goods, it may still not be registrable under the said clause (d) if it happens to be, according to its ordinary signification, interalia, a surname or the name of a sect/cast in India. This is where Mr.Sudhir Chandra has gone wrong in submitting that since the surname AGGARWAL has no direct reference to the character or b) quality of the goods, it would qualify for registration under clause (d) of sub-section (1) of section 9. As pointed out above, this is not correct. If a word is to qualify for registration under clause (d), it has to pass both the tests and if it fails even one it would not fall under clause (d). The two tests being that the word must not have a direct reference to the character or quality of the goods and that it must not, inter alia, be a surname or name of a sect/cast in India. The two tests being that the word must not have a direct reference to the character or quality of the goods and that it must not, inter alia, be a surname or name of a sect/cast in India. The word AGGARWAL passes the first test in a much as it has no direct reference to the character or the quality. c) of the goods in question i.e., sweets and namkeens. But it fails the second test. It is a surname and it is also the name of a sect/caste in India. 11. This being the position AGGARWAL by itself cannot be registered under section 9 (1) . However, it can be registered by invoking the provisions of section 9 (2) which clearly and specifically provides that a name, signature or word, other than such as fall within the description in clause (a) to (d) of sub-section (1) shall not be registrable in Part A of the register except upon evidence of its distinctiveness. This makes it clear that a word which happens to be a surname or the name of a sect/caste in India, cannot be registered under section 9 (1) but can be registered as certainly registrable in part A of the Register but there must be clear evidence of its distinctiveness” FINDINGS:- 45. In order to appreciate the contentions raised by learned Advocates appearing for the parties, it would be of benefit to extract section 31 of the Act under which provision the registration issued shall be prima facie evidence of its validity. The same reads as under: “31 (1) – In all legal proceedings relating to a trade mark registered under this Act (including mark registered under this Act (including applications under section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof. (2) In all legal proceedings as aforesaid a registered trade mark shall not be held to be invalid on the ground that it was not a registrable trade mark under section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration”. 46. 46. A reading of the above provision would make it explicitly clear that in all legal proceedings relating to the registered trade mark, registration affords proof of title to the registered proprietor. 47. It is to be noticed that plaintiff has pleaded that “DAVIDOFF” is the name of a family and at the beginning of last century it immigrated from kiev (Russia to Geneva) and “DAVIDOFF” was opened in 1911 as a tobacco nist’s which still belong to “DAVIDOFF” group. The plaintiffs trade mark was registered in India by the plaintiff under the Trade Marks Act, 1958 as per Document No.10 produced before the trial Court. The name “DAVIDOFF” has been registered by the plaintiff in various countries as per Document No.9. Whether the registration done under Trade Marks Act. 1958 by the authorities was in the Indian context or otherwise is not discussed or analysed by the trial court. Infact provisions of Trade Marks Act, 1999 does not have any stringent prohibition as was found in section 9 of the old Act. Be that as it may, fact remains that trade mark “DAVIDOFF” is registered in India by the plaintiff. 48. Section 31 as found in the 1999, Act is in parimateria with section 31 of the Trade and Merchandise Act, 1958. Thus, a presumption will have to be drawn, about prima facie evidence of validity regarding the trade mark which is already registered in an action for infringement. The registered proprietor need not have to produce evidence of use or reputation of his mark, but merely rely on the fact of registration of mark in his name in evidence of proprietorship. It is to be noticed that sub-section (2) declares that the registered trade mark shall not be held to be invalid on the ground that it was not a registrable trade mark under section 9, except upon evidence of distinctiveness and that such evidence was not submitted prior to registration, if it is to be proved that the trade mark had been so used by the proprietor or his predecessor as to have become distinctive at the date of registration. In a proceeding for removal of registered trade mark on the ground of non-use under the ground of non-user validity of registration cannot be the subject matter of attack. 49. In a proceeding for removal of registered trade mark on the ground of non-use under the ground of non-user validity of registration cannot be the subject matter of attack. 49. On facts of the instant case it is required to be noticed that the plaintiffs trade mark has been registered under the trade and merchandise marks act, 1958 initially for the period 1986 to 1993 as evidenced by the certificate of registration issued by the Trade Marks Registry produced along with the plaint at Document No.11. The said registration came to be renewed from 30.05.1993 and thereafter for a further period of seven years i.e., upto 17.05.2007 as evidenced by the Certificated of renewal granted by the Trade Marks Registry as per document No.11 and 12 respectively. Application for renewal has been made in the year 1998 which was pending consideration before the Trade Marks Registry. The said application having been accepted and renewed the validity of the earlier registration granted was extended from 1993 to 2000. Thereafter on an application made on 30.05.2000 the said registration was further renewed from 30.05.2000 till 30.05.2007 as evidence from Document No.12. Thereafter it has been further renewed from 30.05.2007 to 30.05.2017 as evidenced from Document No.12A. These documents namely Document No.10 to 12 A were produced by the plaintiff before trial court was very much available on record. 50. As observed hereinabove a presumption is to be drawn prima facie about the validity of the registration certificate issued, and trial Court ought to have raised this presumption and examined the facts of the case. However, it did not embark upon such a journey but refrained itself on the premise that issue regarding registration obtained by the plaintiff was the subject matter of adjudication by the Intellectual Property Appellate Board on the application submitted by defendant and as such it would not be safe to enter the said domain. 51. However, it did not embark upon such a journey but refrained itself on the premise that issue regarding registration obtained by the plaintiff was the subject matter of adjudication by the Intellectual Property Appellate Board on the application submitted by defendant and as such it would not be safe to enter the said domain. 51. Since the defendant has raised a plea that plaintiff after having obtained the registration of the trade mark on 30.05.1986 which was valid upto 1993, it did not obtain renewal thereof and as such it is contended that defendant took steps to obtain a search report from Trade Marks Registry as per the document produced along with the reply statement (filed in the present appeals), as expected of a prudent businessmen and found that there was no prior user and as such defendant claims to have proceeded to use the trade mark “DAVIDOFF” without any let or hindrance. In order to examine this contention raised by the learned Counsel for defendant it would also be necessary to examine the records produced by the defendant along with the reply statement namely the communication dated 22.10.2001 said to have been communicated to the defendant by the Trade Marks Registry pursuant to the application no. 812224 submitted by the defendant on 28.07.1988 seeking for registration of the trade mark “DAVIDOFF”, the Trade Marks Registry has specifically informed the second defendant as under: 52. The search report said to have been enclosed to the endorsement given to second defendant would disclose that application bearing No.454875 dated 30.05.1986 has been registered and subsequent renewals are also reflected in the “history details” as is available in the website of the Trade Marks Registry. As such the defendant cannot feint its ignorance or there being no prior user of the trade mark in question and / or claim its prior use. 53. The defendants having set up a plea of the word “DAVIDOFF” cannot be registered under the Trade Marks Act, 1958 as it is a surname relating to a Christian community cannot at the same breath claim its prior use and further claim that said surname is being used by it exclusively in the Indian Market on the strength of an application for registration pending as on 28.07.1998 (prior to 1999 act coming into force) and this would clearly go to show that defendants are attempting to blow hot and cold. It would also be of relevance to observe at this juncture itself that the search report said to have been made by the defendant and produced along with reply statement itself would clearly go to show the plaintiff’s prior use as per its trade mark No.454875 was already registered thus defendants were fully aware of this trade mark was used earlier by the plaintiff and application for renewal was under active consideration by the Registry. Hence, contention of the learned counsel appearing for respondents that on account of there being a bar under section 9 under the Trade Marks Act, 1958 and between 1993 to 1998 plaintiff’s trade mark was not in vogue and it was deemed to have been removed from Trade Marks Register cannot be accepted. 54. The next corollary question that would arise for consideration by this Court would be as to whether the defendant can be construed as a prior user and if so plaintiffs cannot be held to be prior user and if so plaintiffs cannot be held to be prior user as a result of which the order refusing grant of temporary injunction by trial Court is to be affirmed or reversed is required to be considered. In order to embark upon such exercise, it would be necessary to extract the Judgments of the Honorable Apex Court where action for infringement of registered trade mark came to be considered and answered: “5. The mark submitted for registration is identical with or deceptively similar to the registered trade mark)s) and/or mark(s) in prior pending application. Such report is enclosed herewith.” (i) AIR 1965 SC 980 – Kaviraj Pandit Durga Dutt Sharma Vs Navaratna Pharmaceutical Laboratories “29. When once the use by the defendant of the mark which is claimed to infringe the plaintiff’s mark is shown to be “ in the course of trade”. The question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff’s registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (vide S.21). When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff’s registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (vide S.21). A point has sometimes been raised as to whether the words “or cause confusion” introduce any element which is not already covered by the words “likely to deceive” and it has some times been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words “likely to deceive”. But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff’s mark. The purpose of the comparison is for determining whether the essential features of the plaintiff’s trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that, the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff. 30. The mark of the respondent which he claims has been infringed by the appellant is the mark Navaratna Pharmaceutical Laboratories’. and the mark of the appellant which the respondent claimed was a colourale imitation of that mark is ‘Navaratna Phamacy’. 30. The mark of the respondent which he claims has been infringed by the appellant is the mark Navaratna Pharmaceutical Laboratories’. and the mark of the appellant which the respondent claimed was a colourale imitation of that mark is ‘Navaratna Phamacy’. Mr.Agarwala here again stressed the fact that the ‘Navaratna’ which constituted an essential part of feature of the Registered Trade Mark was a descriptive word in common use and that if the use of this word in the appellant’s mark were disregarded, there would not be enough material left for holding that the appellant had used a trade mark which was deceptively similar to that of the respondent. But this proceeds, in our opinion, on ignoring that the appellant is not, as we have explained earlier, entitled to insist on a disclaimer in regard to that word by the respondent. In these circumstances, the trade mark to be compared with that used by the appellant is the entire registered mark including the word ‘Navaratna’. Even otherwise, as stated in a slightly different context: “Where common marks are included in the trade marks to be compared or in one of them, the proper course is to look at the marks as whole and not to disregard the parts which are common’. (ii) 2004 (3) SCC 90 – Midas Hygiene Industries (P) Ltd., and anr Vs Sudhir Bhatia and others “5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest. 6. In this case it is an admitted position that the respondents used to work with the appellants. The advertisements which has been issued by the appellants in the year 1991 show that at least from that year they were using the mark LAXMAN REKHA on their products. Not only that but the appellants have had a copyright in the marks KRAZY LINES and LAXMAN REKHA with effect from 19.11.1991. The copyright had been renewed on 23.04.1999. The advertisements which has been issued by the appellants in the year 1991 show that at least from that year they were using the mark LAXMAN REKHA on their products. Not only that but the appellants have had a copyright in the marks KRAZY LINES and LAXMAN REKHA with effect from 19.11.1991. The copyright had been renewed on 23.04.1999. A glance at the cartons used by both the parties shows that in 1992 when the respondent first started he used the mark LAXMAN REKHA on cartons containing colours red, white and blue. No explanation could be given as to why that carton had to be changed to look almost identical to that of the appellant at a subsequent stage. This prima facie indicates the dishonest intention to pass off his goods as those of the appellants”. (iii) AIR2002 SC 117 – Mahendra and Mahendra Paper Mills Ltd., Vs Mahindra and Mahindra Ltd., “15. This question has been considered by different High Courts and this Court in umpteen cases from time to time. On analysis of the principles laid down in the decisions, certain recognized parameters relating to the matter have emerged. Without intending to be exhaustive some of the principles which are accepted as well settled may be stated thus; that whether there is a likelihood of deception or confusion arising is a matter for decision by the court, and no witness is entitled to say whether the mark is likely to deceive or to cause confusion; that all factors which are likely to create or allay deception or confusion must be considered in combination; that broadly speaking, factors creating confusion would be, for example, the nature of the market itself, the class of customers, the extent of the reputation, the trade channels, the existence of any connection in course of trade, and others. 23. Judging the case in hand on touchstone of the principles laid down in the aforementioned decided cases, it is clear that the plaintiff has been using the word “Mahindra” and “Mahindra and Mahindra” in its companies/business concerns for a long span of time extending over five decades. The name has acquired a distinctiveness and a secondary meaning in the business or trade circles. People have come to associate the name “Mahindra” with a certain standard of goods and services. The name has acquired a distinctiveness and a secondary meaning in the business or trade circles. People have come to associate the name “Mahindra” with a certain standard of goods and services. Any attempt by another person to use the name in business and trade circles is likely to and in probability will create an impression of a connection with the plaintiff’s group of companies. Such user may also effect the plaintiff prejudicially in its business and trading activities. Undoubtedly, the question whether the plaintiff’s claim of passing off action against the defendant will be accepted or not has to be decided by the court after evidence is led in the suit. Even so for the limited purpose of considering the prayer fro interlocutory injunction which is intended for maintenance of status quo, the trial court rightly held that the plaintiff has established a prima facie case and irreparable prejudice in its favour which calls for passing an order of interim injunction restraining the defendant – company which is yet to commence its business from utilizing the name of “Mahendra” or “Mahendra and Mahendra” for the purpose of its trade and business. Therefore, the Division Bench of the High Court cannot be faulted for confirming the order of injunction passed by the learned single judge”. 55. In the instant case, plaintiff has obtained registration of the trade mark “DAVIDOFF”. Defendant claims that second defendant developed her business in textiles with the trademark “DAVIDOFF” from 1998 till 2004 and first defendant after establishment of business in 2004 is using this trade mark openly and without any let or hindrance. Thus, defendants claim to have established its own reputation and goodwill in the field of manufacturing of garments under trade mark “DAVIDOFF”. It would be curious to note at this juncture, that defendant has not whispered a word as to why they are borrowing the word “DAVIDOFF” for sale of its garments and by no stretch of imagination it can be presumed that it has any nexus in the Indian context. Here again defendant claims the word “DAVIDOFF” is connected to a Russian King who is said to be known for his personality amongst the Christian community and known for his best dressing sense and fashionable outfits and thus it is contended that word “DAVIDOFF” is synonym to best dressing sense. Absolutely no material whatsoever in this regard is placed. Here again defendant claims the word “DAVIDOFF” is connected to a Russian King who is said to be known for his personality amongst the Christian community and known for his best dressing sense and fashionable outfits and thus it is contended that word “DAVIDOFF” is synonym to best dressing sense. Absolutely no material whatsoever in this regard is placed. Be that as it may, even if the defendant’s claim is to be accepted for scrutiny it would not stand to reason since defendants claim that they have been carrying on the business from 1998 and the reason for using the said name “DAVIDOFF” is not explained in any of their pleadings. Admittedly defendant obtained search report during the year 1988 and presumably and under an erroneous impression that trade mark “DAVIDOFF” registered in the name of the plaintiff is deemed to have been removed from the Trade Marks Registry started using the said trade mark. The trade mark “DAVIDOFF” used by the defendant when compared with the registered trade mark of the plaintiff and held side by side and when the overall similarity is compared having regard to the composite words used both by the plaintiff and defendant to the goods in question namely garments and a critical comparison of the two names are made, it would emerge that an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the goods in question namely garments. 56. In order to examine whether there is deceptive resemblance, two facts will have to be taken into consideration namely, (i) who are the persons whom the resemblance must be likely to confuse: and (ii) to what rules of comparison are to be adopted in judging whether such resemblance exists. 57. In this background and putting oneself into the shoes of a customer the trade mark in question is examined, the only inference that would have to be drawn would be the customer would go by the word “DAVIDOFF” as also the similarity in the words as also its style and thus a gullible customer would become a prey for such deceit. It is this which ought not to be countenanced and it cannot be permitted to be allowed. It is this which ought not to be countenanced and it cannot be permitted to be allowed. Thus, defendant having not been able to establish as to the nexus for using the word “DAVIDOFF” for its products manufactured by it cannot contend that word “DAVIDOFF” relates to a surname and also the name of a sect/caste in India to deprive the plaintiff of its use particularly when it has international repute of its products and at the same time defendant’s cannot be permitted to use the very same name for their gain. Hence, trial court committed a serious error in not addressing to these issues and deny the relief of temporary injunction to the plaintiff. 58. It would also be of relevance to note that the Judgment relied upon by the plaintiff’s to drive home the point of transborder reputation acquired by it by relying upon the Judgment of Delhi High Court in the case of Daimler Benz Aktiegesellschaft Vs Hybo Hindustan reported in AIR 1994 Delhi 239 and brushing it aside on the premise that it relates to engineering products without examining the principles laid thereunder was not a safe course adopted by trial court, in as much as a trade mark is not intended to protect a person who deliberately sets out to take the benefit of somebody else’s reputation with reference to goods especially so when the reputation extends wordwide as is visible in the instant case as evidenced from the list produced by the plaintiff to evidence from the list produced by the plaintiff to evidence the fact that it has acquired transborder reputation which also is not disputed by the defendant. Hence, applying the principles laid down in the said judgment to the facts of the present case and examined, it would emerge that goods manufactured by the defendant is not only akin to the goods marketed by the plaintiff but also the words used by the defendant is not only deceptively similar but also susceptible for a gullible customer to fall prey to such deception. 59. 59. Yet another factor which also requires to be noticed in the instant case, as noted hereinabove is plaintiff instituted a suit for an order of permanent injunction and recovery of damages and had obtained an order of temporary injunction before Delhi High Court on 26.03.2008 in C.S. (O.S.) 548/2008 which order was in force and vogue till plaint came to be returned for want of territorial jurisdiction by order dated 20.07.2010. Thus, an order of temporary injunction was operating against the first defendant herein for a period of 2 years 3 months and thus the continuance of said order of injunction would neither cause any hardship nor injury to the defendants in this factual background. 60. In these circumstances, I am of the considered view that three ingredients for grant of temporary injunction namely prima facie case, balance of convenience and irreparable loss or injury, are in favour of plaintiff as discussed hereinabove and the conclusion that requires to be drawn is that plaintiffs have made out a case for grant of temporary injunction. Hence following order: ORDER (1) Appeals MFA 475/2011 and 474/2011 are hereby allowed. (2) Order passed in O.S. 6487 / 2010 dated 04.10.2010 on I.A.No.I and II are hereby set aside. (3) Applications filed by the plaintiffs I.A.No. I and II in O.S. 6487 / 2010 are hereby allowed. (4) In so far as costs are concerned the same shall follow the cause namely the final outcome of the suit and in the event of plaintiff suit being dismissed, trial court would be a liberty to quantify the costs payable by plaintiff including quantification of loss if any suffered by the defendant on account of order of temporary injunction operating against them.