Pfizer Products Inc. v. Rajesh Chopra and Ors.
2006 (32) PTC 301 Del
Plaintiff had filed a suit for injunction for passing off and unfair competition. Plaintiff had approached the Delhi High Court and claimed it’s jurisdiction to entertain and try the Plaintiff’s suit on account of two factors:
(a) The first factor being that the Defendants had applied for registration of the trademark ‘GEODON’ and ZOLOFT in Delhi Trade Mark Office which was in the jurisdiction of the Delhi High Court.
(b) According to the Plaintiff, Defendants intended to sell the offending goods in Delhi.
Defendants filed an application seeking return of the Plaint on the ground that the suit for passing off was not maintainable before the Delhi High Court as Defendants have not sold any goods in Delhi. As per the Defendants, Delhi High Court had no jurisdiction to entertain the present suit for the threatened or intended sale of the offending goods in Delhi.
The present matter only pertains to the decision on the Defendant’s interlocutory application.
• Supreme Court’s decision in Dhodha House does not hold that mere filing of an application by the Defendants for registration of the very trademark which is being used by the Plaintiffs would not grant territorial jurisdiction to the court to hear the matter.
• An injunction can certainly be granted when there is a threat of the goods being sold in Delhi. Therefore, is not necessary that before an injunction is granted, the goods must have been sold in Delhi. Even if there is an intention to sell and the Plaintiff is able to make out a prima facie case of such intention then the court can grant an injunction restraining the Defendants from carrying out their intention to sell the offending goods at a particular place.
• In an action for passing off since the Defendants have not sold any goods in Delhi, therefore, no cause of action would have arisen in Delhi and consequently this court would not have jurisdiction to entertain this suit for the threatened or intended sale of the offending goods in Delhi.
Whether mere filing of an application for registration of the trademark would grant territorial jurisdiction to the court to hear the matter and that whether an injunction can be granted if only there is a threat of the goods being sold in that particular jurisdiction and there is no actual sale of goods.
It was held that the ratio of Dhodha House case does not go against what has been held in Jawahar Engineering case and that the decision in the Jawahar Engineering case covers the present case.
A threat of selling the offending goods in Delhi would in itself confer jurisdiction in the courts in Delhi to entertain a suit claiming an injunction in respect thereof. Whether the threat perception is justified or not is another matter which has to be considered and decided upon in the application filed by the Plaintiff under Order 39 Rules 1 and 2 or on merits when the suit is taken up for disposal. In so far as Order 7 Rule 10 is concerned, assuming that whatever is stated in the plaint is correct, one would have to also assume that the threat or the intention of the Defendants to sell and offer for sale the offending goods in Delhi is also correct. Therefore, if the threat exists then this court would certainly have jurisdiction to entertain the present suit.
Therefore, the Defendants’ application was dismissed.
Author: Anjali Bisht, Law College, Dehradun