Intra Life PVT LTD And Others vs. Harish Kumar

Facts

The petitioners, Intra Life Pvt. Ltd. and others, challenged an order dated 28.04.2023 by the Additional District Judge, Panchkula, which rejected their application under Order VII Rule 11 CPC to dismiss a suit filed by Harish Kumar (Proprietor) M/s Trumac Healthcare. The respondent-plaintiff filed a suit for permanent injunction against the petitioners for alleged infringement of the trademark 'Nefrotime'. The respondent claimed to have adopted the trademark on 20th February 2021 and applied for its registration. The petitioners sought rejection of the plaint, arguing that the suit was based on a cause of action of passing off, not infringement, as the trademark was not registered at the time of filing. They contended that the suit should have been filed at their place of business in Bangalore, not Panchkula.

Held

The Court held that on the date of filing the suit, the respondent-plaintiff did not possess a registered trademark for 'Nefrotime'. Therefore, the suit was to be treated as based on a cause of action of passing off, not infringement. Consequently, for territorial jurisdiction, the suit was not governed by Section 134(2) of the Trade Marks Act, 1999, but by Section 20 of the Code of Civil Procedure, 1908. The Court noted that the petitioners' legal notice indicated their business of selling and supplying medicines under the trade name 'Nefrotime' across the country, including through channel partners. Based on this, the Court concluded that a part of the cause of action could be considered to have arisen in Panchkula, where alleged deception to consumers occurred, causing injury to the respondent-plaintiff. Therefore, rejecting the plaint under Order VII Rule 11 CPC prematurely would be inappropriate. The Court decided to afford the respondent-plaintiff an opportunity to lead evidence on the issue of territorial jurisdiction. The revision petition was dismissed, with observations being prima facie and not prejudicing the parties' contentions in the trial.

Key Issues

1. Whether the suit, filed when the plaintiff had only an application for trademark registration and not a registered trademark, is maintainable before the District Court at Panchkula based on a cause of action of passing off, as per Section 134 of the Trade Marks Act, 1999? 2. Whether a part of the cause of action arose in Panchkula, making the suit maintainable there under Section 20 of the Code of Civil Procedure, 1908, considering the defendants' alleged business operations across the country? Petitioner's arguments: The petitioners argued that since the respondent-plaintiff did not have a registered trademark at the time of filing the suit, the cause of action was limited to passing off. They contended that under Section 134 of the Trade Marks Act, 1999, a suit for passing off must be instituted where the defendant resides or carries on business, which is Bangalore, not Panchkula. Therefore, the plaint was liable for rejection. Respondent's arguments: The respondent-plaintiff argued that the suit was based on prior user of the trademark since 20.02.2021, and during its pendency, the trademark application was accepted. They asserted that the suit could be treated as based on infringement and was maintainable in Panchkula under Section 134(2) of the Trade Marks Act, 1999. Furthermore, they argued that the petitioners' legal notice indicated their business operations across the country, including Panchkula, thus establishing a part of the cause of action in Panchkula, making the suit maintainable under Section 20 of the CPC.