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2014 DIGILAW 1275 (DEL)

TUDOR INTERNATIONAL v. ARREE CLOTHING

2014-04-21

RAJIV SAHAI ENDLAW

body2014
JUDGMENT : - 1. This suit has been instituted for restraining the defendant from passing off and infringing the trademark and copyright of the plaintiff in the label/logo ARRAY in relation to hosiery and readymade garments, by use of label/logo ARREE with respect to the same goods, as well as for ancillary reliefs of delivery up of the infringing material, rendition of accounts and damages, pleading: (I) that the plaintiff is a partnership firm having its business office in Ludhiana, Punjab and engaged in the business of manufacturing hosiery and readymade garments under the trademark/label/logo ARRAY; (II) that the aforesaid trademark is being continuously used since 1991 and is registered under the Trade Marks Act, 1999 in respect of hosiery and readymade garments (Class 25); (III) that the plaintiff is also the owner of the artistic features/work involved in the trademark/label/logo ARRAY and its copyright therein is registered under the Indian Copyright Act, 1957; (IV) that the plaintiff has built up enormous goodwill/reputation on account of continuous commercial use of the aforesaid trademark and which has become the indicium of the plaintiffs goods and business; (V) that the plaintiff in the last week of January 2008, discovered the adoption of identical/deceptively similar trademark/label ARREE and trade name M/s Aree Clothing Inc. by the defendant in relation to the same goods i.e. hosiery and readymade garments; (VI) that the impugned trademark/label adopted by the defendant is identical/deceptively similar in each and every respect including phonetically/visually/structurally, in its basic idea, and other essential features; (VII) that a comparison of the stickers/tags of the plaintiff and the defendant reveals both to be in black, with ARRAY and ARREE respectively written in white, and similar devices in orange displayed on the upper left corner; (VIII) that the impugned adoption and user by the defendant is dishonest and with a view to take advantage of the goodwill/reputation of the plaintiff, by causing deception and confusion in the market and to pass off the goods of the defendant as those of the plaintiff. 2. Summons in the suit were issued on 28.03.2008 and an ex-parte ad-interim injunction restraining the defendant from using label similar to the plaintiffs label and/or using the same manner of representing its products and logo was granted in favor of the plaintiff. 3. 2. Summons in the suit were issued on 28.03.2008 and an ex-parte ad-interim injunction restraining the defendant from using label similar to the plaintiffs label and/or using the same manner of representing its products and logo was granted in favor of the plaintiff. 3. The defendant thereafter filed its written statement whereunder it has traversed each and every averment in the plaint and in particular objected to the territorial jurisdiction of this Court in view of the fact that neither of the parties carry on any business or trade in Delhi. The defendant has further alleged that the plaintiffs own use of the trademark ARRAY is an imitation of the famous trade mark ARROW whereas the defendants adoption (admitted to be in 2007) of the trademark ARREE is honest and stems from the name of the locality in which the grandfather of one of the partners of the defendant firm resided as well as the nickname of the son of the said partner. 4. Though a replication to the written statement of the defendant has also been filed by the plaintiff, but the same merely denies the averments in the written statement and reiterates those made in the plaint, and is thus not being adverted to in detail. 5. Vide order dated 25.07.2013, this Court, on account of there being no appearance on behalf of the defendant despite the matter having been passed over, directed the defendant to be proceeded ex-parte and confirmed the ex-parte ad-interim order of injunction granted in favor of the plaintiff on 28.03.2008. This Court, in light of the aforesaid pleadings of the parties, also framed the following issues: “1. Whether the defendant has infringed or threatened to infringe the plaintiff’s registered trade mark “ARRAY” registered under no.650819 in class 25 by the adoption and/or use of the mark “ARREE” as its trade mark/trade name in relation to Readymade Garments? If so, its effect? (OPP) 2 Whether the defendant has infringed the plaintiff’s copyright in the “ARRAY” label registered under no.59116/01? If so, its effect? (OPP) 3. Whether the defendant has passed off or threatened to pass off its goods & business as those of the plaintiff? If so, its effect? (OPP) 4. Whether this Court does not have territorial jurisdiction to entertain & decide the present suit? (OPD) 5. If so, its effect? (OPP) 3. Whether the defendant has passed off or threatened to pass off its goods & business as those of the plaintiff? If so, its effect? (OPP) 4. Whether this Court does not have territorial jurisdiction to entertain & decide the present suit? (OPD) 5. Whether the defendant is protected under the provisions of Section 35 of the Trade Marks Act, 1999? (OPD) 6. Whether the plaintiff is entitled to an order of Delivery up of goods of the defendant under the mark “ARREE”? (OPP) 7. Whether the plaintiff is entitled to an order of Rendition of Accounts of profits against the defendant and a decree of amount so found due? (OPP) 8. Relief.” 6. The plaintiff has tendered his ex-parte evidence and examined Sh. Munish Jain (one of the partners of the plaintiff firm) as the sole witness. Sh. Munish Jain has inter alia tendered the following documents in evidence to support the case set up by the plaintiff: I. Copy of the Registration Certificate of the Trade Mark ARRAY under Class 25 of the Trade Marks Act, 1999 and the Legal Proceeding/Renewal Certificate of the same, exhibited as PW1/2 and PW1/3 respectively; II. Copy of Registration of the Copyright in the Mark/Label ARRAY, exhibited as PW1/9; III. The Year-Wise Sales Figures of the plaintiff under the trademark ARRAY from the year 1994-2007, exhibited as PW1/13; IV. The copies of Income Tax Returns and Balance Sheets of the plaintiff firm, exhibited as PW1/14 and PW1/15 respectively; V. Copies of Sale Invoices issued by the plaintiffs to its retailers in Delhi, exhibited as PW1/47 to PW1/78; and, VI. Copies of other Sale Invoices issued since the year 1994, exhibited as PW1/79 to PW1/172. 7. It is pertinent to note that the defendant had, apart from taking an objection with regard to the territorial jurisdiction of this Court in its written statement, also filed an application (IA No.11026/2008) under Order 7 Rules 10 & 11 of the CPC seeking return/dismissal of the plaint on this ground. 7. It is pertinent to note that the defendant had, apart from taking an objection with regard to the territorial jurisdiction of this Court in its written statement, also filed an application (IA No.11026/2008) under Order 7 Rules 10 & 11 of the CPC seeking return/dismissal of the plaint on this ground. Though the said application was dismissed in default vide the aforesaid order dated 25.07.2013, but the issue of jurisdiction still remains alive inasmuch it is incumbent upon this Court to satisfy itself with regard to the same before it renders any finding on the merits of the case, and in any case, a specific issue thereon, being Issue No. 4 already stands framed. 8. The plaintiff, as is evident from the memo of parties filed as well, has admitted that both the parties are located in Ludhiana, Punjab. The plaintiff has however in the plaint, while invoking the jurisdiction of this Court, stated: “28)….The plaintiff has been carrying out its trade and business within the territories of Delhi through its dealers, distributors and agents….The plaintiff has tremendous goodwill and reputation in its said trademark which is being tarnished by defendant’s impugned activities in Delhi…The Hon’ble Court has jurisdiction to try and adjudicate the present suit within the meaning of Section 134 of the Trade Marks Act, 1999 as well as Section 62(2) of the Copyright Act, 1957…” (emphasis supplied). 9. The plaintiff thus has asserted the jurisdiction of this Court on two grounds: (I) Invoking Section 134 of the Trade Marks Act, 1999 as well as Section 62(2) of the Copyright Act, 1957 which permits a suit to be filed where the plaintiff carries on business and thereafter asserting that the plaintiff is indeed ‘carrying on business’ in Delhi through its various dealers, distributors and agents; and, (II) Suggesting that a part of cause of action has arisen in Delhi inasmuch as the defendant is also selling its goods in Delhi and thereby infringing its trademark and copyright ‘by its impugned activities in Delhi’. 10. The defendant, on the other hand, in its written statement has questioned territorial jurisdiction by traversing the assertions of the plaintiff in the plaint. It has pointed out that both the parties are admittedly located in Ludhiana, Punjab and categorically denied having ever sold its goods in Delhi. 11. 10. The defendant, on the other hand, in its written statement has questioned territorial jurisdiction by traversing the assertions of the plaintiff in the plaint. It has pointed out that both the parties are admittedly located in Ludhiana, Punjab and categorically denied having ever sold its goods in Delhi. 11. The witness of the plaintiff in ex-parte evidence, qua the aspect of territorial jurisdiction has deposed that the goods of the defendant are being sold in the markets across Delhi and has also proved as Ex.PW1/47 to PW1/78 the invoices issued by the plaintiff to its Delhi Retailors. 12. Though the Supreme Court in Dhodha House Vs. S.K. Maingi (2006) 9 SCC 41 has held the expression “carries on business” to be meaning ‘having an interest in a business at that place, a voice in what is done, a share in the gain or loss and some control thereover and that agent must be a special agent who attends exclusively to the business of the principal and carries it on in the name of the principal and not a general agent who does business for any one that pays him and that mere availability of goods in the market of a place by itself would not mean that the plaintiff carries on any business at that place’ and yet further, though the Division Bench of this Court in Archie Comic Publications Inc. Vs. Purple Creations Pvt. Ltd. 2010 (44) PTC 520 (Del.) also held that merely because a particular bookstore sells the books/comics of the plaintiff in Delhi would not confer the Court in Delhi with the jurisdiction but in view of the ex-parte statement of the witness of the plaintiff, of the defendant carrying on business at Delhi, I am inclined to entertain this suit in Delhi, even though the plaintiff has not led any evidence to attract Section 134 of the Act. 13. Else, the plaintiff has made out a case for injunction. The action aforesaid of the defendant are found to amount to infringement of the rights of the plaintiff and the defendant passing off its goods as that of the plaintiff. 14. 13. Else, the plaintiff has made out a case for injunction. The action aforesaid of the defendant are found to amount to infringement of the rights of the plaintiff and the defendant passing off its goods as that of the plaintiff. 14. Accordingly, a decree for permanent injunction is passed in favour of the plaintiff and against the defendant restraining the defendant from using, selling, exporting or offering for sale, advertising or displaying or dealing in any manner in hosiery, readymade garments and allied/cognate goods under the trademark/label ARREE and/or under the trade name M/s Arree Clothing Inc. or any other identical or deceptively similar trademark/label or trade name and further restraining the defendant from infringing the trademark/label ARRAY and copyright of the plaintiff therein. As far as the claim of the plaintiff for damages is concerned, in view of what has been discussed hereinabove qua the territorial jurisdiction, I am not inclined to grant the said relief to the plaintiff. The plaintiff is however given liberty to file an appropriate proceeding against the defendant, if considers itself so entitled for recovery of damages if any suffered by the plaintiff. For the same reasons, no case for grant of any of the other ancillary reliefs is made out. 15. The defendant having abandoned the defense to the suit, no costs. Decree sheet be drawn up.