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Wednesday, November 23, 2011

Territorial Jurisdiction Of Court Where The Trademark Application Is Applied For Registration

South African Breweries International (Finance) B.V. a company registered in Netherlands, along with its Indian joint venture company, promoted with SAB Group filed a suit for permanent injunction, rendition of accounts, damages and delivery up of the infringing packaging and material against Mohan Goldwater Breweries Ltd in year 2002 & Anr.

The trademark “CASTLE”, which was originally adopted and used by Charles Glass, doing business as Glass & Company in respect of “beer”, in the year 1884. In 1895, Glass & Company was taken over by the South African Breweries Limited, which assigned worldwide rights in the trademark CASTLE to Avalon International Incorporate, which subsequently changed its name to SABMARK International Incorporated. Subsequently, SABMARK International assigned those rights to South African Breweries International Holdings Inc., which, in turn, assigned them to South African Breweries International (Finance) B.V i.e. Plaintiff herein. It claimed registration of the trademark CASTLE and CASTLE label in respect of beer in a large number of countries and also claims sale of US$ 1billion. According to the them, the trademark CASTLE is a well-known mark in India and is well-recognized worldwide on account of its extensive availability in various countries and duty free shop of various airports. It also claimed to be sponsoring the South African Cricket team for past 10 years and claimed that on account of such wide publicity, Indians would be familiar with the trademark CASTLE. It was also alleged that they had been selling beer in India since 1974, under the trademark CASTLE. They also applied for registration of CASTLE (label) on 29th April, 1995 and the word mark CASTLE on 6th February, 1996. The registrations were granted during pendency of the suit.
The Mohan Goldwater Breweries Ltd i. e. Defendant no. 1 herein sent a notice dated 15th April, 2002 to South African Breweries International (Finance) B.V. i.e. plaintiff claiming ownership of the trademark CASTLE PILSNER in respect of beer. They also claimed that the trademark OLD CASTLE and CASTLE were registered in their favour on 30th May, 1972 and 22nd October, 1973 respectively and also claimed that the plaintiffs were passing off their goods as those originating from the defendants and, thereby infringing their registered trademark.
On enquiry, the plaintiffs came to know that the trademark registrations in favour of the defendants had been removed from the record of Registrar of Trademarks and in fact, the defendants never sold any product bearing the trademark CASTLE. The plaintiffs had sought an injunction, restraining the defendants from manufacturing, selling, offering for sale or advertising any beer or alcoholic beverages, using the trademark CASTLE. They also sought delivery up of all the goods, packaging material bearing the impugned mark besides damages of Rs 20,00,000/-.
The defendant no. 1 contested and filed a written statement taking a preliminary objection that since it was carrying on business of manufacture and sale of beer under the trademark CASTLE only in Uttar Pradesh, Delhi Court has no jurisdiction to try the suit. It is claimed that CASTLE is one of the oldest brands being used by defendant No. 1 to sell its beer and it has been selling bear using the trademarks CASTLE and OLD CASTLE since 1970-71. It is also alleged that registration of the trademark OLD CASTLE (label) was granted to defendant No. 1 on 30th May, 1972 vide Trade Mark No.280552, whereas registration of the trademark CASTLE PILSNER STRONG BEER label was granted w.e.f. 22nd October, 1973, vide Trade Mark Registration No. 291623. It was also claimed that the renewal of the aforesaid trademarks was applied by defendant No. 1 on 13th June, 2000 and 17th May, 2000 respectively. It was also claimed that since the trademark CASTLE is being used by defendant No. 1, the plaintiffs have no right to use the aforesaid mark.
There was also another defendant in the matter, but in 2010, The matter between the plaintiff and defendant No.2 was compromised vide settlement contained in IA No. 4700/2010. Under the settlement, the plaintiff acknowledged defendant No. 2 to be the proprietor of the trademark KING CASTLE in respect of whisky, whereas defendant No. 2 acknowledged the plaintiffs to be the proprietors of the trademark CASTLE in respect of beer and other non-alcoholic beverages falling under International Class 32 of the Trademarks Act. Defendant No. 2 undertook not to use the trademark CASTLE in respect of beer or any other goods falling in Class 32 of the Trademarks Act. It also undertook not to seek registration of the trademark CASTLE for any goods falling in Class 32 of Trademarks Act.

On the question of territorial jurisdiction, Plaintiff alleged that Defendant No.1 is a Company having offices in Lucknow as well as in Delhi. Delhi office of defendant No.1 was stated to be 4F, Hansalya, 15, Barakhamba Road, New Delhi. Reliance was placed on Section 20 of the Code of Civil Procedure, it provides that every suit shall be instituted in a Court within the local limits of whose jurisdiction, the defendant, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain or in a Court within local limits of whose jurisdiction, the cause of action, wholly or in part, arises. The explanation to Section 20 provides that a corporation shall be deemed to carry on its business at its sole or principal office in India or in respect of any cause of action arising at any place where it has also a subordinate office, at such place. Therefore, if the cause of action either wholly or in part arose in the jurisdiction of this Court, it would have territorial jurisdiction to try the present suit. It was also alleged that defendant no. 2 has office in Delhi and products of the Defendant no. 1 were also sold in Delhi. The defendant no. 1 denied having any office in Delhi or selling any products in Delhi. It was further claimed that since the plaintiffs had learnt that the defendants had applied for registration of trade mark in Delhi, they could claim for injunction to prevent any sale of the infringing products in Delhi and in that case, Delhi Courts would have jurisdiction, whether any sale in Delhi has taken place or not.

The Court applied the ratio laid down by Supreme Court in Dhodha House and observed that in the opinion of this Court was that an advertisement by itself in a Trade Mark Journal would not confer jurisdiction on a Court within whose territorial limit the advertisement is published or is seen. In the opinion of this Court, if an application for registration of the impugned trade mark is made in the territorial jurisdiction of a Court that Court would have jurisdiction to try the suit relating to the particular trade mark. Since defendant No.1 applied for registration of the trade mark to the Registrar of Trade Marks at Delhi, as is evident from the advertisements, this Court would have jurisdiction to try the present suit.

The Court also relied on Exphar SA & Anr. v. Eupharma Laboratories Ltd. & Anr. AIR 2004 SC 1682, where a cease and desist notice was given to the plaintiff at its office in New Delhi alleging infringement of the copyright of defendant No.1 by the plaintiff. Supreme Court held that a cease and desist notice in a copyright action cannot, particularly in view of Section 60 of the Act, be termed as a mere notice which is not sufficient to confer jurisdiction and that such a threat may give rise to a right to institute a suit but counter such threat and ask for relief on the ground that the alleged infringement to which the threat related was in fact an infringement of any legal right of the person making such threat. Section 60 of the Copyright Act is identical to Section 142 of the Trademarks Act and therefore this judgment does support the proposition that if a cease and desist notice is received at Delhi, the Courts would have jurisdiction to entertain a suit at the instance of the person to whom such a notice is given.

Injunction can also be sought in case of threatened use of a Trademark

In a suit for for permanent injunction, rendition of accounts, damages and delivery up of the infringing packaging and material filed by South African Breweries International (Finance) B.V. a company registered in Netherlands, along with its Indian joint venture company, promoted with SAB Group against Mohan Goldwater Breweries Ltd in year 2002 & Anr. Delhi High Court held that Injunction can be sought not only in a case of CS actual use but also in a case of threatened use of a trademark. The owner of a trademark is well within his right in coming to the Court, for grant of an injunction, the moment he has a genuine apprehension that the defendant is likely to infringe his mark or to pass off his goods as those of the plaintiff. He need not necessarily wait till actual invasion of his rights and the law entitles him to take remedial action, well in time, whenever there is a reasonable threat of his right being invaded.

Thursday, November 3, 2011

Amendment of claims in infringement Suit whether permissible without amending the plaint

In Re: Glaverbel S.A. vs Dave Rose & Ors., Justice A. K. Pathak, Delhi High Court rejects IA seeking amendment in claims as allowed in another suit without amending the present suit. The Court also relied on certified copy of Patent Office wherein the amendment sought in claim did not reflect.
Here the Plaintiff vide an interlocutory Application 12535/2011 (under Section 151 of CPC)sought the amendment in present suit (CS (OS) no. 594/2007 of independent claim 1 as allowed in CS (OS) no. 593/2007.
The originally allowed claim under Patent No. 190380 read as under
A Mirror with no copper layer comprising:
i) a vitreous substance,
ii) at least one material selected from the group consisting of bismuth, chromium, gold, indium, nickel, palladium, platinum, rhodium, ruthenium, titanium, vanadium and zinc at the surface of the said substrate,
iii) a silver coating layer on the surface of the said substrate, said silver layer optionally comprising at least one material selected from the group consisting of tin, chromium, vanadium, titanium, iron, indium, copper, and aluminum present at the surface of the silver coating layer and/or traces of silane; and
iv) at least one paint layer covering said silver coating layer."
Plaintiff had filed CS(OS) No. 593/2007, against one Shri Anand Mahajan for permanent injunction praying therein that the defendant be restrained from infringing the Indian Patent No. 190380 of the plaintiff as also for rendition of accounts. In the said case, plaintiff also filed an application under Sections 57 and 58 of the Patents Act read with Section 151 CPC being IA No. 13519/2007 seeking amendment in the Claim No. 1. By way of amendment, plaintiff sought to insert "a sensitizing material, typically tin, and" at the beginning of clause (ii) of Claim No. 1. After the proposed amendment clause (ii) of Claim No. 1 reads as under:-
"(ii) a sensitizing material, typically tin, and at least one material selected from the group consisting of bismuth, chromium, gold, indium, nickel, palladium, platinum, rhodium, ruthenium, titanium, vanadium and zinc at the surface of the said substrate,"
A Single Judge of this Court vide order dated 10th September, 2009 reported in 2009 (41) PTC 207 (Del.) titled AGC Flat Glass Europe SA vs. Anand Mahajan and Ors. disposed of said application whereby allowed the aforementioned amendment. The operative portion of the order reads as under:-
"25. In view of the aforementioned discussion and well settled position of law and bearing the facts of the present case in mind, I find that the present amendment is merely a clarificatory/ elaborative one and does not alter the scope of the invention.

At best, even if the defendants' objections are accepted, the said amendment appears to be a disclaimer which also cannot come in the way of permitting the amendment and in fact, the same rather support the amendment. The merits of the controversy as to whether it is disclaimer or clarification will be decided at a later stage. The amendment is thus allowed as being a clarificatory one and the same does not attract the proviso of Sections 58 and 59 of the Patent Act, 1970."
It was contended by Plaintiff that the amendment in claim no. 1, as allowed vide order dated 10th September, 2009 passed in CS (OS) No. 593/2007, is clarificatory in nature and does not alter the scope of invention. Claim nos. 9 and 10 of the same patent specifically mention about sensitization of the mirror by tin chloride. This fact was taken note of by the Single Judge while allowing the amendment. Clerical correction of claim no. 1 does not change the nature of the claim no. 1. Besides this, order of amendment is "in rem" and has attained finality and can be read in this case without amending the pleadings of this case. Correctness or incorrectness of the order dated 10th September, 2009 cannot be gone into in this case. Amended claim no. 1, in terms of order dated 10th September, 2009, can be read in all other proceedings without amending the pleadings in other cases. Defendants have understood the claim no. 1 as a copper free mirrors in which first step is sensitization with tin chloride. This is evident from the averments made in para nos. 17, 18 and 19 of the written statement. Defendants in their written statement, have taken a plea that a patent claim "sensitization by tin chloride" is not new, therefore, the patent is invalid. Defendants have also cited prior art like "Franz", "Shipley", "Orban" and "Buckwalter" in para 18 of the written statement and have stated that "sensitization by tin chloride" is an old concept. Thus, no formal amendment of pleading in respect of claim No.1 is required in this case. Defendants are not prejudiced in this case even if amended claim No.1, as contained in the order dated 10th September, 2005 is read in this case. It was further contended that the whole purpose of opposing the present application by the defendants is to seek de novo trial. In other words, defendants will seek time to file amended written statement and recall of the Plaintiff’s witnesses for further cross examination. This will not do any good to anyone except that final adjudication will get delayed. In nutshell, contention of plaintiff was that there is no need to amend the plaint. It was further contended that plaint is not required to be amended if not necessary. According to him existing pleadings are sufficient to indicate that defendant has understood the claim of plaintiff regarding sensitization by tin of the mirror manufactured by it. Subsequent event of amendment in claim No.1 can be taken note of in this case without amending the pleadings of this case.
The Defendant contended that the plaintiff is seeking amendment in claim no. 1 without amending the plaint, which is not permissible under the law. It was further contended that in the order dated 10th September, 2009 it has been categorically mentioned that the amendment does not attract the provisions of Sections 58 and 59 of the Patents Act; meaning thereby amendment in claim no. 1 was not allowed under the said provisions of Patents Act. Accordingly, amendment can be read only in CS(OS) No.593/2007 and not in other proceedings. Amendment in claim no. 1 permitted by the Court was not recorded in the Patent Office. Certified copy of the Patent Ex.PW1/3 has been issued by the Patent Office in the month of March, 2009, which does not contain amended claim no.1. This indicates that amendment was not allowed under Sections 58 and 59 of the Patents Act. Amendment could at best be read as an amendment of claim No.1 in that particular suit and not in patent records. It was further submitted that plaintiff has to amend claim no. 1 in this case and for the said purpose he has to file appropriate application under Order 6 Rule 17 CPC seeking amendment in claim no.1 which application is, otherwise, not permissible in this case as the trial has already commenced, inasmuch as, plaintiff's witnesses have already been cross- examined. The only contention acceptable under the law is that a plaint can be amended after the start of trial when the plaintiff had exercised due diligence and in spite of that he could not seek the amendment earlier. In the instance case, plaintiff was well aware of the order dated 10th September, 2009; whereas plaintiff's evidence was concluded in this case on 21st July, 2011, much thereafter. In any case even if such an amendment is permitted in the present suit the defendants have to respond to such amendment by filing amended written statement, inasmuch as, have to cross examine the Plaintiff’s witnesses on this point. It was further contended that the plaintiff cannot be allowed to bring on record the amended claim no. 1 in this case indirectly so as to prejudice the defendants. Under the Patents law a patent can be obtained either in a product and/or in a process. Claims Nos.1 to 8 in the suit reflect product patents; whereas claim Nos. 9 to 20 are the process patent. By adding tin in the product claim no. 1, the plaintiff is trying to expand its monopoly even in a product having layer of tin by way of such amendment, which is not permissible under the law.
After considering the contentions of both the parties, the Court was unable to persuade itself to accept the contention of the plaintiff that the amendment in claim no. 1, as permitted in CS (OS) No. 593/2007, can be read in this case without amending the pleadings of this case. Court observed that it is well settled that a case is decided on the facts involved therein as are emerging from the pleadings duly proved by the evidence adduced in support thereof. No judicial notice of the facts emerging from the pleadings and the evidence led in some other case can be taken for deciding the controversy between the parties in a different case. It is the fact pleaded and the evidence led in that particular case alone which has to be considered. Judicial pronouncements can be referred to at the bar in support of a legal preposition but the facts involved therein cannot be read as the facts of such cases where such reports are referred. Subsequent events can be considered only if the same are brought on record by seeking necessary amendment in the pleadings and not by noticing the same from the facts emerging from the pleadings and the documents of other cases, which may have been referred to in the reports. Even though plaintiff is at liberty to refer and rely on the order dated 10th September, 2009 passed in CS (OS) No. 593/2007 in support of law laid down therein but the fact remains that the amended claim no. 1 cannot be read in this case. Judgment has to be pronounced in this case on the pleadings and the evidence adduced i.e. either documentary or ocular, in this case. It appears that plaintiff was conscious of this fact and for this reason only plaintiff had expressed its desire to amend the plaint initially, as is evident from the perusal of order dated 5th February, 2010. However, subsequently, on 3rd May, 2010 Plaintiff made a statement that he does not intend to file any application for amendment. Consequently, issues were framed. Merely because amendment of the pleading would result in delay in disposal of the suit by itself cannot be made a ground to adopt a shortcut by reading the amended claim No.1 as permitted in CS (OS) No. 593/2007 in the present case, without amending the pleadings. Plaintiff cannot be permitted to achieve its objective of amending the claim no. 1 in this case indirectly.
If the matter is viewed from another angle then also the course adopted by the plaintiff cannot be permitted. Amendment in claim no. 1 as allowed in CS (OS) No. 593/2007 has yet not been recorded by the Patent Office in its record. Certified copy of patent, issued by the Patent Office after more than 6 months of the order dated 10th September, 2009, contains un-amended claim no.1. It is this certificate which has been placed on record in this case and has been proved. Plaint also contains un-amended claim. Evidence led by the parties, which is in consonance with the pleadings of the parties, alone can be read at the stage of final adjudication of the matter. There is no gain saying in reiterating that evidence led beyond the pleadings cannot be looked into. Accordingly, the amended claim no. 1 cannot be read in this case without plaintiff taking necessary steps to get the claim amended in this case as well.
For the foregoing reasons, the Court held that plaintiff though can refer the order dated 10th September, 2009 passed in CS (OS) No. 593/2007 at the time of hearing but same cannot be permitted to be taken on record as a document so as to read the amended claim No.1, in this case. Amendment in claim no. 1, as permitted in CS (OS) No. 593/2007, cannot be read as amended claim No.1 in this case. As regards permission to the plaintiff for placing on record certified copy of amended patent no. 190380 as and when received from the Patent Office, the same also cannot be granted at this stage. However, plaintiff is at liberty to file appropriate application as and when he receives the certified copy from the Patent Office.
Accordingly application was disposed of in the above terms. Therefore Along with I.A. No. 13631/2011 (u/Sec. 151 CPC) by Defendants) became infructuous and was disposed of as such.

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