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G.D Foods Mfg (India) Pvt Ltd. vs Zihawa Foods Pvt Ltd. on 17 May, 2017

1. Vide this application, the defendant has sought the dismissal of the

suit alleging that since the plaintiff is not the registered owner of the

trademark TOPS, his suit for infringement of the trademark is not

maintainable. It is submitted that the plaintiff’s claim that it is an assignee is

not maintainable, as in view of Section 45 of the Trade Marks Act, 1999, an

assignee does not become the owner of a trademark unless it is registered in

his name and his name is entered into the register. It is further submitted that

CS(OS) No.813/2013 Page 1
the assignment could be only by a registered document and the plaintiff has

not made any contention that any such document was issued to him by the

owner of the trademark nor he has placed on record any document to support

his claim of an assignee. It is further contended that the defendant is a

Chennai based company and is not doing any business in Delhi and,

therefore, this Court has no territorial jurisdiction. It is further submitted that

since the plaintiff is not a registered owner of the trademark and since he

cannot file a suit for infringement of his trademark, Section 134 of Trade

Marks Act, 1999 has no relevance and the jurisdiction of the Court has to be

ascertained under Section 20 of the Civil Procedure Code (hereinafter

referred to as ‘the CPC’) which requires that a suit can be filed only where

the defendant is carrying on its business or working for gain or actually or

voluntarily residing or where a cause of action has arisen. It is further

contented that as per the plaintiff’s own contention in the plaint, the

defendant is Chennai based and the plaintiff has not averred that the

defendant is carrying on any business activity in Delhi and merely because

the plaintiff has averred that the defendant has the intention to sell its goods

in Delhi, this bald averment is not sufficient to give jurisdiction to the Delhi

Courts. It is further submitted that the plaintiff has also sought relief of

CS(OS) No.813/2013 Page 2
passing off of the goods by the defendant, but it is also a fact that the

defendant is not doing any business in Delhi and the plaintiff’s apprehension

that the defendant is likely to sell its product in Delhi, is not sufficient to

constitute cause of action for a suit of passing off and also does not confer

jurisdiction on this Court to entertain a suit for passing off. It is submitted

that in para 7 of the plaint, the plaintiff has given the details of the

applications filed for the registration of trademark TOPS in various classes

which also discloses that the application bearing No.751963 filed on

20.01.1997 for class 30 was still pending and no registration qua that

application has been issued. Also, the registration certificates filed by the

plaintiff-company shows that the applications were filed in the year 2002 for

the products mentioned therein and no registration certificate has been

issued by the authorities till 2005. It is also stated in the plaint that the

plaintiff had opposed few applications filed by M/s Kenwel Foods Pvt. Ltd.

for grant of registration under Section 18 of the Act, therefore, the plaintiff

had the knowledge that the predecessor of the defendant-company and the

defendant-company are using the trademark TOPPS continuously

uninterruptedly since 1986, but this information was suppressed and a

frivolous suit has been filed making false and scandalous statements that

CS(OS) No.813/2013 Page 3
they were using the trademark TOPS since 1984. It is further submitted that

the averments made in para 17 of the plaint that the plaintiff came to know

of the use of trademark TOPPS by the defendant in the second week of

April, 2013 is also a false statement. It is submitted that a false averment is

also made in the plaint that the plaintiff came to know of the applications

No.2403780 and 2403781 of the defendant for registration of their

trademark in class 29 and 30 respectively only on 30.09.2012. All the other

averments in the plaint are also false. Relying on the averments in the

paragraphs 18, 19 and 20, it is submitted that all these averments are false

and the suit is barred by limitation. It is further submitted that the plaintiff

has not placed any material evidence to establish that they had conducted

research work in this field. No laboratory reports have been submitted. It is

submitted that it was the defendant’s predecessor company who had done

extensive research and on the basis of that, launched the products which are

sold under the trademark TOPPS since 1986 and they have not received any

complaint regarding the quality of the product and they have good customer

line, including three star, five star, seven star hotels in the south zone of

India. It is submitted that it was plaintiff who had infringed the defendant’s

trademark TOPPS and the copyright of the defendant-company and have

CS(OS) No.813/2013 Page 4
filed this suit with the sole purpose and intention to escape the legal hurdle.

The defendant-company has a legitimate right over the trademark TOPPS. It

is submitted that although the averments in the plaint shows that the plaintiff

was aware of infringement of its trademark in the year 2008, still they have

filed the suit after five years of the said knowledge and, therefore, the suit is

barred by limitation. It is further submitted that no document has been

placed to support the statement that the defendant-company is planning any

business in Delhi. It is further submitted that proper Court Fee has not been

paid.

Source: Indian Kanoon

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