23 Sep 2022

M/S MAAN PHARMACEUTICALS LTD. VS M/S MINDWAVE HEALTHCARE PVT. LTD.

FACTS:

  1. The appellant (hereinafter 'MAAN') has filed the present appeal, aggrieved by an order dated 07.12.2021 passed by the learned District Judge, Saket Courts - South District, New Delhi, whereby the application filed by the appellant (defendant in the trail case) under Order VII Rules 10 and 11 of Code of Civil Procedure, 1908, was dismissed.
  2. The respondent (plaintiff in the trail case), M/s Mindwave Healthcare Pvt. Ltd. (hereinafter 'MINDWAVE'), filed a suit against MAAN, seeking permanent injunction restraining MAAN from using the trademark "BUPROEX-N". MINDWAVE claims to be the registered owner of the said trademark and it alleged unauthorized use of the said trademark by MAAN.

 

Contention of the Plaintiff (respondent in the appellant suit)

  1. The plaintiff contended that the Hon'ble Court (Saket Court) has jurisdiction to entertain the present suit for infringement as the plaintiff is registered owner of the Trademark and they are carrying on the business from the place within the territorial jurisdiction of this Hon'ble Court.
  2. Also the defendant was all set to launch the product under impugned trademark BUPROEX within the territorial jurisdiction of that court and was negotiating with various traders within the jurisdiction of the Hon'ble Court as a direct challenge to Plaintiff. The threat perceived by Plaintiff is also extended to the place within the territorial jurisdiction of that court. In the case of registered trademark section 134 of the Trademark Act 1999, specifically confers the jurisdiction at the place where Plaintiff resides and carries on their business. Hence the Hon'ble Court has the jurisdiction to entertain and try the instant suit as the suit was for infringement of the registered trademark of Plaintiff.

Contention of the Defendant (appellant in the appellant suit)

  1. The defendant took a preliminary objection and filed an application under Order VII, Rules 10 and 11 read with Section 151 of the CPC seeking return of the plaint due to lack of territorial jurisdiction.
  2. The defendant pleaded that the plaintiff only has a sales office within the territorial jurisdiction of the learned Trial Court at Saket and the registered office of the plaintiff is located in Mangol Puri Industrial area, which is outside the territorial jurisdiction of the learned Trial Court at Saket.
  3. The defendant further contended that a suit for injunction on the basis of mere apprehension cannot be maintained being without cause.

 

Judgment & Analysis by Trail Court

  1. The learned Trial Court, after considering the rival contentions, dismissed the said application by the impugned order, which led to filing of the present appeal.
  2. The court held that the plaintiff has a sales office even if not a registered office within the jurisdiction of the trail court, it would be considered that it the place where the plaintiff is carrying on their business operation.
  3. Also “Quia Timet action” is when plaintiff apprehends infringement even if defendant had not commenced operation, the right of the plaintiff to maintain cause of action on account of apprehension of infringement of its trademark is well known. Therefore, if the threat exists, then the court certainly has jurisdiction to entertain the present suit. The legal position is well settled that the question as to whether the court has territorial jurisdiction to entertain a suit or not has to be arrived at on the basis of averments made in the plaint and defense being immaterial, cannot be gone into at this stage.

 

Judgment & Analysis by Delhi High Court

  1. In relation to the suit for infringement of a trademark, the law provides for an additional forum in terms of Section 134 of the Trade Marks Act, on the basis of which a suit can be filed at a place "within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain". The plaintiff ( respondent here) has apprehended the launch of the infringing product within the territorial jurisdiction of the learned Trial Court at Saket.
  2. Also, section 20(c) of the CPC provides that every suit shall be instituted in a court within the local limits of whose jurisdiction the cause of action, wholly or in part, arises. The plaintiff (respondent here), in the present case, has not only pleaded that it is carrying on its business from its principal office for sale, distribution and control, which is within the territorial jurisdiction of the learned Trial Court at Saket, but it has also apprehended that the defendant(appellant here) would launch the infringing product within the territorial jurisdiction of the learned Trial Court and is, further, negotiating with various traders within the jurisdiction of the Trial Court at Saket.
  3. Thus, where the plaintiff has a principal office at one place and the cause of action has arisen at the place where its subordinate office is located. In this eventuality, the plaintiff would be deemed to carry on business at the place of his subordinate office and not at the place of the principal office. Thus, the plaintiff could sue at the place of the subordinate office and cannot sue (under the scheme of the provisions of section 134(2) and 62(2)) at the place of the principal office.
  4. Further, a suit on the basis of cause of action on a fear or apprehension is commonly known as “quia timet suit”, which are latin words and in legal terminology, defined as action by which a person is entitled to obtain an injunction and restrain a threatened act, which if done, would cause a substantial damage. The person, who is under a threat of infringement, is not remediless and as has been held by various courts, can maintain a suit for injunction. There is no doubt that such apprehension or threat has to be genuine, and not a figment of the plaintiff's imagination.
  5. In view of the settled law as discussed above, there is no merit in the objection taken by the defendant (appellant) that an apprehension to sell the goods with impugned trademark in future will not confer a cause of action in favour of the plaintiff (respondent) to file the present suit.
  6. The court has heard the arguments advanced on behalf of both the parties and find no infirmity with the impugned order passed by the learned Trial Court. For the above stated reasons, the court finds no infirmity in the order passed by the learned Trial Court. The appeal was, therefore, dismissed.