Malabar Gold Private Limited v. M. Manuvel (Malabar Fashion Jewellery)

## **IN THE HIGH COURT OF KERALA AT ERNAKULAM** **PRESENT:** ## **THE HONOURABLE MR.JUSTICE P.N.RAVINDRAN** **MONDAY, THE 4TH DAY OF NOVEMBER 2013/13TH KARTHIKA, 1935** ## **OP(C).No. 2661 of 2013 (O)** **--------------------------AGAINST THE ORDER/JUDGMENT IN OS 3/2009 of ADDL.DISTRICT COURT, KOZHIKODE DATED** ## **PETITIONER(S)/DEFENDANT:** **----------------------------------------------** **M.MANUVEL, MALABAR FASHION JEWELRY, SHOP NO.184 MOHAN SINGH MARKET, INA, NEW DELHI-23.** ## **BY ADVS.SRI.SHYAM PADMAN** **SRI.A.RANJITH NARAYANAN SRI.S.K.SAJU SMT.A.SIMI SMT.VIDYA V.DEVAN** ## **RESPONDENT(S)/PLAINTIFF:** **------------------------------------------------** **MALABAR GOLD PVT. LTD, 17/1491-D, 3RD FLOOR, MALABAR GATE RAM MOHAN ROAZD KOZHIKODE-673 004.REPRESENTED BY MANAGING DIRECTOR MR.AHAMMED M.P.** ## **BY ADV. SRI.JOBY JACOB PULICKEKUDY** **THIS OP (CIVIL) HAVING BEEN FINALLY HEARD ON 04-11-2013, THE COURT ON THE SAME DAY DELIVERED THE FOLLOWING:** ## **OP(C).No. 2661 of 2013 (O)** **---------------------------** ## **APPENDIX** |**PETITIONER(S)' EXHIBITS**|**PETITIONER(S)' EXHIBITS**| |---|---| |**-------------------------------------**|| |**EXHIBIT-P1**|**TRUE COPY OF PLAINT IN O.S.3/2009 PENDING BEFORE THE COURT**| ||**OF II ADDL. DISTRICT JUDGE, KOZHIKODE.**| |**EXHIBIT-P2**|**TRUE COPY OF THE WRITTEN STATEMENT IN O.S.3/2009 PENDING**| ||**BEFORE THE COURT OF II ADDL. DISTRICT JUDGE, KOZHIKODE.**| |**EXHIBIT-P3**|**TRUE COPY OF THE DEPOSITION OF PW1.**| |**EXHIBIT-P4**|**TRUE COPY OF THE DEPOSITION OF PW2.**| |**EXHIBIT-P5**|**TRUE COPY OF THE DEPOSITION OF DW1.**| |**EXHIBIT-P6**|**TRUE COPY OF I.A.738/2013 APPLICATION FOR AMENDMENT .**| |**EXHIBIT-P7**|**TRUE COPY OF THE COUNTER STATEMENT FILED BY THE**| ||**RESPONDENT IN I.A.738/2013 DATED .**| |**EXHIBIT-P8**|**TRUE COPY OF THE ORDER DATED 24.07.2013 IN I.A.738/2013 PASSED**| ||**BY THE COURT OF II ADDL.DISTRICT JUDGE, KOZHIKODE.**| **RESPONDENT(S)' EXHIBITS NIL ---------------------------------------** **/TRUE COPY/** ## **P.A. TO JUDGE** **VPV** ## **P.N.RAVINDRAN, J.** =-=-=-=-=-=-=-=-=-=-=-=-= ## **O.P.(C)No.2661 of 2013** =-=-=-=-=-=-=-=-=-=-=-=-=-= **Dated this the 4[th] day of November, 2013** ## **JUDGMENT** The petitioner is the defendant in O.S.No.3 of 2009 on the file of the Court of the II Additional District Judge of Kozhikode. The respondent is the plaintiff therein. The suit instituted by the respondent/plaintiff is one for a perpetual prohibitory injunction restraining the defendant, its men, agents, or any other person claiming through it from using in any manner, the trademark 'MALABAR FASHION JEWELLERY' along with the logo or any other similar or deceptively similar mark/marks, whether or not falling under the classes in which the plaintiff is presently using the said trademark and also from printing, publishing, circulating or causing to print or publish or circulate any material such as pamphlets, leaflets, brochures, catalogues, advertisements, audio/visual reproductions and other publicity materials containing the said trademark. The respondent/plaintiff has also prayed for a mandatory injunction directing the defendant to deliver-up the labels, brochures, leaflets, catalogues, advertisements, audio/visual reproductions and any other publicity materials/print outs or any **2** ## **O.P.(C)No.2661 of 2013** other form of work in which the said infringing mark has been imprinted or embossed for destruction of the same and also to produce accounts of profits made since the start of their business to ascertain and claim damages. 2. In paragraph 5 of the plaint, a copy of which is on record as Ext.P1, it is stated that the plaintiff has been using the trade mark 'MALABAR GOLD' of which it is the registered proprietor from 1993 onwards, that even prior to its registration which was on 19.6.2001, it was using the trade mark 'MALABAR GOLD' without any device or artistic work and that the trade mark of the plaintiff is also used as the trade name for all the retail stores of the plaintiff in India and abroad. In paragraph 6, the plaintiff has averred that it has 24 retail stores in India and 4 retail stores abroad, that it has manufacturing and wholesale facilities at Calicut and retail stores at Calicut, Tirur, Kannur, Thalassery, Kasargod, Palakkad, Manjeri, Thrissur, Perinthalmanna, Vadakara, Ernakulam, Edappal, Kodungallur, Kanhangad, Thodupuzha, Sulthan Bathery and Payyannur in the State of Kerala. It has also given the details of its establishments in other states in India and abroad. In paragraph 7, the plaintiff has averred that it applies the trade mark continuously, extensively and conspicuously in such a manner that every person **O.P.(C)No.2661 of 2013** **3** who sees the trade mark at any place is able to relate it to the plaintiff and that the trade mark is also adopted as the trade name of the plaintiff and its licensed users in India and abroad. In paragraph 15, the plaintiff has averred that it was shocked to note that the defendant has been dishonestly using the trade mark and the trade name which is closely related to the plaintiff's registered trade mark. In paragraph 16, the plaintiff has averred that the defendant has been willfully and dishonestly adopting and falsely applying the plaintiff's registered trademark as his trademark and trade name, knowing full well that it constitutes an infringement of the statutory right of the plaintiff over the mark and passing off the same as though they are entitled to use it. In paragraph 17, the plaintiff has averred that the defendant has violated the statutory rights of the plaintiff, which is the registered proprietor of the mark and has also passed off their goods as the goods of the plaintiff. In paragraphs 29, 30 and 32 of the plaint, the plaintiff has averred as follows:- _“29. The Plaintiff submits that it is entitled to filing this plaint against infringement within the meaning of Section 29 and passing off within the meaning of clause (a) of sub-section (1) of Section 134 of the Trademarks Act, 1999 and Copyright Infringement of the artistic work under Sections 51 and 55 of the Copyright Act,_ **O.P.(C)No.2661 of 2013** **4** _1957. The Registered Office and Corporate Office and some of Jewellery Shops of the Plaintiff are all within the jurisdiction of this Hon'ble Court._ _30. The Plaintiff submits that the Hon'ble District Court Calicut has the jurisdiction within the meaning of Section 134 (2) of the Trademarks Act,1999 and Section 62 of the Copy Right Act, 1957 to try this suit as the Plaintiff is having its Registered office at 17/1491-D, 3[rd] Floor, Malabar Gate, Ram Mohan Road, Calicut-673 004 and dealing and controlling its business from Calicut and grant relief as stated in Section 135 of the Trademarks Act, 1999 against infringement and passing off._ _32. The cause of action for the suit arose in 1993 when the Plaintiff adopted and commenced the actual and continuous use of the mark and in 21.9.2005 when the Plaintiff's well known and reputed mark was registered for goods falling under Class 14 and when the Defendant has started his business operations in the name of "MALABAR FASHION JEWELLARY" along with logo in similar products of the Plaintiff, i.e. gold, silver, other precious metals, and jewelers trade and when the Defendant issued invoice in the name of Malabar Fashion Jewellery along with logo and when the Defendant started stating Malabar Fashion Jewellery in the shop name board and when the Defendant has continuously infringed the Plaintiff's mark and indulged in passing off all falling under the jurisdiction of this Court under Section 134 (2) of the Trademarks Act, 1999 and when the Plaintiff issued caution notices and when the defendant issued reply notices.”_ 3. Upon receipt of summons, the defendant entered appearance and filed Ext.P2 written statement dated 20.1.2010. In paragraph 2 it was contended that the Malabar Fashion Jewelery of **O.P.(C)No.2661 of 2013** **5** which the defendant is the proprietor, is engaged in the business of wholesale and retail trading of gold jewellery, diamonds and other precious metals as included in Class 14 of Schedule IV of the Trade Mark Rules, 2002 since the year 1990, that it has showrooms at Mohan Singh Market, INA, New Delhi; Sector 11, Dwaraka, New Delhi and sister concerns at Jail Road, Gugaon, Haryana and Jamia Nagar, Delhi; all of which are within Delhi and national capital region. He has averred that he is doing business in Delhi and national capital region, that his business interest is restricted to the said particular region whereas the plaintiff's business interest is restricted mainly to Kerala, some parts of South India and U.A.E. as mentioned in their website. In paragraph 3, the defendant contended that he operates his business specifically and exclusively in and around Delhi and there has been no occasion for a business confrontation or competition in any manner and the plaintiff does not have the right to file the suit and the same is liable to be dismissed at the threshold. In paragraph 9, he contended that there is no violation of any statutory right of the plaintiff and the allegation that the defendant has been causing infringement and passing off of their goods as that of the plaintiff is baseless, incorrect and malafide and that in the area of business wherein the **O.P.(C)No.2661 of 2013** **6** defendant operates, nobody would have even heard of the plaintiff or seen the alleged trade mark of theirs. In paragraph 10, he contended that the defendant had not objected to the use of the trade name 'MALABAR GOLD' by the plaintiff as the defendant had no business interest in South India till date. In paragraph 12, he inter alia contended that there is no malicious intention on his part in passing off his goods as the plaintiff's goods or services. In paragraph 13, he contended that the plaintiff has no cause of action to initiate legal proceedings and the reliefs sought in the plaint are not liable to be allowed. He has also contended that the cause of action alleged is not correct, proper, adequate or sustainable. He has also averred that he is specifically denying the repeated allegations made in the different paragraphs of the plaint about the copy right, trade mark violations, infringement and passing off. 4. After the written statement was filed, issues were framed on 12.7.2010. More than six months later, affidavit of proof in lieu of chief examination of the Assistant Manager (Legal) who was examined as PW1 was filed. PW1 was cross-examined on 18.6.2012 and thereafter, the trial was adjourned to 26.6.2012. On that day, an employee of the plaintiff was examined as PW2 and the trial was adjourned to 16.7.2012, later to 30.7.2012 and still later to **O.P.(C)No.2661 of 2013** **7** 22.8.2012. The trial was thereafter adjourned to 20.9.2012 and on that day, the defendant was examined as DW1 and his evidence was closed. DW1 was recalled at the instance of the plaintiff and he was cross examined again on 19.3.2013. The suit thereafter stood posted for hearing on 6.4.2013. On that day, the learned counsel on both sides were heard and the hearing was adjourned to 20.5.2013, later to 30.5.2013, then to 11.6.2013, 2.7.2013 and later to 12.7.2013. In the meanwhile, on 6.4.2013 the defendant filed I.A.No.738 of 2013 (Ext.P6) to amend the written statement by incorporating additional averments. By the proposed amendment, the defendant wanted the following averments to be incorporated as paragraphs 1(a) and 3(a) in his written statement:- _“1. In the written statement after paragraph 1 add new paragraph 1(a) “It is submitted that this Hon'ble Court is not having territorial jurisdiction even going by the allegations contained in the plaint to entertain the claim of passing off as the defendant is doing his business in Delhi and NCR region only and his business interest is restricted to said particular region. At present the defendant has no business interest in Kerala much less in Kozhikode within the jurisdiction of this Hon'ble Court. The plaintiff was fully aware of the above fact and has wilfully suppressing the same filed the above suit before this Hon'ble Court with malafide intention to cause loss and injury and to create difficulties to this defendant with an ulterior motive to make the defendant amenable for their illegal, unjustifiable and_ **O.P.(C)No.2661 of 2013** **8** _unreasonable demands. It is pertinent to point out that the plaintiff, Malabar Gold is not the registered proprietor of the Trademark “Malabar Gold” as evidenced from the certificate of registration produced and hence the plaintiff, the Malabar Gold Private Limited has no locus standi to institute the above suit.”_ _2. In the written statement after paragraph 3 add new paragraph as 3(a) that “It is submitted that Malabar Fashion Jewellery, a proprietary concern, is registered on 06.11.2011 as a private limited company under the Indian Companies Act, 1956 as “MALABAR FASHION JEWELLERS PRIVATE LIMITED”. The defendant has been using the trade mark Malabar Fashion Jewellery, and has been regularly campaigning and marketing the above trademark through print and electronic media and the same is associated and has become part of the business since then, that the said trade name and mark has acquired wide reputation and goodwill in the minds of people and in the market by virtue of its long actual extensive and continuous use. As early as on 2005 itself the defendant had applied for trade mark registration but the same being for a different class, which was not relevant to the business of the defendant, as no products/goods is sold with the said trademark and the defendant is only providing retail services by using the said trademark, the said trademark registration was not pursued on legal advise. But later the defendant obtained registration of the trademark “Malabar Fashion Jewellery” in Class 35. The plaintiff is fully aware of the above aspects. To the knowledge of the defendant no objection has been filed before the registrar of trade marks as against the granting of the above trademark registrations till this date by the plaintiff. Apart from the same the plaintiff has abandoned their alleged trademark and is using another trademark entirely different from that of the_ **O.P.(C)No.2661 of 2013** **9** _earlier trademark from March 2012 and the plaintiff is now regularly using the new trademark alone for their business activities. It is further submitted that the plaintiff is not selling any product or goods with the trademark Malabar Gold and is indulging in business of retail and wholesale business in gold, platinum, silver precious stones, diamonds and precious metals, watches, etc. Hence the alleged registration obtained by them is of no consequence and hence they are in fact infringing the trademark registration obtained by the defendant. It is further submitted that the term Malabar being a geographical name, the plaintiff cannot appropriate the word Malabar to themselves.”_ 5. By the proposed amendment, the contention that as the defendant is doing business in Delhi and national capital region and his business interest is restricted to the said region the Court of the II Additional District Judge of Kozhikode has no territorial jurisdiction to entertain the claim of passing off was sought to be raised. It was contended that the amendment sought is necessitated on account of the stand taken by the plaintiff that no objection can be taken to the lack of territorial jurisdiction as the defendant has not pleaded want of territorial jurisdiction in the written statement and has waived it. It was also contended that as no further evidence is required in respect of the averments sought to be introduced by the proposed amendment and it is necessary to do complete justice between the parties, the amendment prayed for **O.P.(C)No.2661 of 2013** **10** may be allowed. The respondent/plaintiff opposed the application by filing Ext.P7 objections wherein inter alia it was contended that the defendant who had the opportunity of raising the objection to jurisdiction before issues were framed and before the commencement of trial, cannot at this belated stage take up the plea now sought to be raised. It was also contended that the defendant has by his conduct waived his objection to the territorial jurisdiction of the court. The court below considered the rival contentions and dismissed I.A.No.738 of 2013 by Ext.P8 order passed on 24.7.2013. The said order is under challenge in this original petition filed under Article 227 of the Constitution of India. 6. I heard Sri.Shyam Padman, learned counsel appearing for the petitioner and Sri.Vidyasankar.R, learned counsel appearing for the respondent. Sri.Shyam Padman, learned counsel appearing for the petitioner contended referring to the averments in the plaint that even according to the plaintiff, the defendant was carrying on business only in New Delhi and adjoining areas, that the plaintiff had not averred that the defendant is carrying on business within the local limits of the territorial jurisdiction of the Court of the II Additional District Judge of Calicut, that even according to the plaintiff the suit is one for infringement of trade mark as also for **O.P.(C)No.2661 of 2013** **11** passing off and therefore, the plaintiff cannot rely on section 134 of the Trade Marks Act, 1999 to contend that the Court of the II Additional District Judge of Kozhikode has jurisdiction to entertain the case. Referring to section 134 of the Trade Marks Act, 1999, learned counsel for the petitioner contended that a suit for infringement of a registered trade mark or relating to any right in a registered trade mark or for passing off, arising out of use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered, cannot be instituted in a court inferior to a District Court having jurisdiction to try the suit, that under sub section (2) thereof an exception has been made to section 20 of the Code of Civil Procedure and the plaintiff has been permitted to institute the suit at the place where the plaintiff is actually and voluntarily residing or carrying business or personally working for gain, that the said exception has no application to actions for passing off, that in the instant case, from the averments in the plaint it is evident that the passing off of the goods was confined to Delhi and adjoining areas and therefore, the Court of the II Additional District Judge of Kozhikode has no jurisdiction to try the suit. Learned counsel for the petitioner contended that as the court lacks inherent jurisdiction to **O.P.(C)No.2661 of 2013** **12** try the suit by virtue of the stipulations contained in section 134 of the Trade Marks Act, 1999 and as no prejudice would be caused to the plaintiff for the reason that evidence touching upon the question of jurisdiction has been adduced there was no reason for the court below to reject the application as one filed belatedly. Learned counsel contended that the impugned order is therefore liable to be set aside and the application for amendment liable to be allowed. Learned counsel for the petitioner also placed reliance on various decisions of this Court and the Apex Court to contend for the position that the principles governing amendment of the written statement are different from those which govern amendment of the plaint and therefore, the court below ought to have adopted a liberal approach in the matter of considering the application for amendment. Learned counsel contended that the plaintiff had not in the plaint averred that the cause of action for the passing off action has arisen within the jurisdiction of the court and therefore, it was not necessary for the defendant to specifically allege that no part of the cause of action at least in relation to the relief of injunction against passing off has arisen within the local limits of the territorial jurisdiction of the Court of the II Additional District Judge of Kozhikode. **O.P.(C)No.2661 of 2013** **13** 7. Per contra Sri.Vidyasankar.R., learned counsel appearing for the respondent contended that the suit was instituted in July, 2009, that the defendant entered appearance and filed his written statement in January 2010, that the trial of the suit commenced on 18.6.2012 when PW-1 was examined and that it was nearly an year later and that too after the defence evidence was over and the case was heard in part that the defendant came forward with an application to raise the plea that the court below has no territorial jurisdiction to entertain the suit. Referring to the various averments, more particularly the averments in paragraphs 16, 17, 18 and the relief portion of the plaint, learned counsel submitted that the suit is one for infringement of trade mark and also for passing off, arising out of use by the defendant of a trade mark which is identical with or deceptively similar to the plaintiff's trade mark, that the suit was instituted for infringement and therefore, the defendant could have if at all he had any objection to the territorial jurisdiction of the court below, raised the objection immediately before the issues were framed, but failed to raise any such objection. The learned counsel also placed reliance on the decision of the Apex Court in **Bahrein Petroleum Company Ltd. v. Pappu and Anr.** [AIR 1966 SC 634] to contend for the position that though waiver under **O.P.(C)No.2661 of 2013** **14** section 21 of the Code of Civil Procedure is limited to objection to appellate jurisdiction, section 21 is a statutory recognition of the principle that any defect as to the place of suing under sections 15 to 20 of the Code Civil Procedure may be waived and that a defendant who has waived his objection to jurisdiction is precluded from taking it subsequently. Learned counsel contended relying on the decision of the Apex Court in **Ajendraprasadji N.Pande and Anr. v. Swami Keshavprakeshdasji N. and Ors.** [AIR 2007 SC 806] that the proviso to order VI rule 17 of the Code of Civil Procedure curtails the discretion of the trial court to allow amendment, that after order VI rule 17 was amended by Act 22 of 2002 it has to be shown that in spite of due diligence, the amendment could not have been sought earlier, that in the instant case the petitioner has not pleaded that in spite of due diligence the amendment sought could not have been sought earlier and therefore on that short ground, the application for amendment was liable to be dismissed. 8. I have considered the submissions made at the Bar by learned counsel appearing on either side. I have also gone through the pleadings and the materials on record. The court below has by the impugned order held that though the plea sought to be raised **O.P.(C)No.2661 of 2013** **15** by the proposed amendment regarding subsequent events can be taken into consideration even without a plea in the written statement for the reason that both parties have adduced evidence as regards that aspect of the matter, the objection regarding territorial jurisdiction cannot be permitted to be raised having regard to the proviso to rule 17 of Order VI of the Code of Civil Procedure. The trial court also held that the suit is one for passing off arising out of use by the defendant of the plaintiff's trade mark alleged to be identical with or deceptively similar to that of the plaintiff's trade mark and also for infringement of the plaintiff's registered trade mark. The court below also accepted the defendant's contention that as regards the action for passing off, in view of sub-section (2) of section 134 of the Trade Marks Act, 1999 section 20 of the Code of Civil Procedure alone would apply and therefore the suit can be instituted only in a court within the local limits of whose jurisdiction the defendant or each of the defendants if there is more than one at the commencement of the suit, actually and voluntarily resides or carries on business or personally works for gain or the cause of action wholly or partly arises. The court below however rejected the application for amendment on the ground that no objection as to the place of suing was raised until **O.P.(C)No.2661 of 2013** **16** after the trial was over and the arguments commenced. The trial court held that as the defendant did not in his written statement which was filed in the year 2010 raise an objection to the territorial jurisdiction of the court and participated in the trial, he has waived his right to object to the territorial jurisdiction. 9. It is not in dispute that trial of the suit which was instituted in the year 2009 commenced on 18.6.2012 when PW-1 was examined. The evidence on the side of the plaintiff was closed on 26.6.2012. It was only on 20.9.2012 that the defendant was examined as DW-1. He was recalled and cross examined again on 19.3.2013. It was only thereafter, to be exact on 6.4.2013 that the defendant came forward with the application for amendment of the written statement. A reading of the affidavit filed in support of the application for amendment shows that it was only because of the rival contentions put forward at the time of arguments that the application for amendment was necessitated. The affidavit discloses that at the time of arguments the defendant's counsel raised an objection regarding the territorial jurisdiction of the court to try the suit as regards the passing off action and that was met with a plea by the plaintiff's counsel that as it has not been raised, it should be deemed to have been waived. The defendant did not for reasons **O.P.(C)No.2661 of 2013** **17** best known to him explain in the affidavit filed in support of the application for amendment, the reason why he did not object to the jurisdiction of the Court of the II Additional District Judge of Kozhikode to try the suit. He had no case that in spite of due diligence he could not raise the issue which was sought to be raised by the proposed amendment, before the commencement of the trial. As held by the Apex Court in **Ajendraprasadji N.Pande and Anr. v. Swami Keshavprakeshdasji N. and Ors.** [AIR 2007 SC 806] unless the party applying for amendment satisfies the court that in spite of due diligence he could not have raised the matter before the commencement of trial, an application for amendment cannot be allowed after the trial has started. It was only about a year after the trial commenced that the instant application was filed. In the absence of any explanation from the side of the defendant as to the reason why he could not and did not raise the issue now sought to be raised, by way of the amendment before the commencement of the trial, I am of the opinion that the application was liable to be dismissed on that short ground. I therefore find no reason why this Court should decide the question as to whether the suit is a composite suit for infringement of trade mark and a passing off action or whether it is only one for infringement of copy right, as **18** ## **O.P.(C)No.2661 of 2013** sought to be made out by the learned counsel appearing for the petitioner. It is for the trial court to examine the said issue in the light of the pleadings and the evidence and to arrive at a finding. I accordingly hold that no interference is called for with the impugned order. The original petition fails and is dismissed. No costs. Sd/- **P.N.RAVINDRAN JUDGE** **vpv/rkc**