MANU/DE/1976/2019

Equivalent Citation: 261(2019)DLT692, 2019(79)PTC 126(Del)

IN THE HIGH COURT OF DELHI

CS (COMM) 1067/2016
Decided On: 30.05.2019
Appellants: Allied Blenders and Distillers Pvt. Ltd. and Ors.
Vs.
Respondent: Amit Dahanukar and Ors.
Hon'ble Judges/Coram:
Jayant Nath, J.
Counsels:
For Appellant/Petitioner/Plaintiff: Rajiv Nayyar, Sr. Adv., Shrawan Chopra, Sanjay
Chhabra, Pundreek Dwivedi, Advs.
For Respondents/Defendant: Hemant Singh, Mamta Jha, Waseem Shuaib Ahmed and
Saumya Gupta, Advs.
Case Note:
Intellectual Property Rights - Trademarks - Claim for injunction - Order 39
Rule 1 and 2 of Code of Civil Procedure, 1908 (CPC) - Present application
filed by plaintiffs under Order 39 Rules 1 and 2 of CPC to restrain
defendants from creating any third rights in trademarks - Whether case
made out for grant of injunction as prayed - Held, plaintiff stood by while
defendants continued with its business and built up its trade - Plaintiff's
claim that they terminated license of defendant No. 2 by notice in 2003 - In
2014 they approached this court by filing of present suit seeking interim
injunction to restrain defendants from using impugned trademarks - This
unexplained delay of 11 years on part of plaintiffs - Improper for this court
to grant any interim injunction to plaintiff on account of gross delay,
latches and acquiesce - Application dismissed.[33]
JUDGMENT
Jayant Nath, J.
IA Nos. 8795/2017 & 14016/2015
1 . The suit is filed by the plaintiff seeking a decree of permanent injunction to
restrain defendants etc. from manufacturing, selling, etc. alcoholic beverages
especially IMFL and/or goods of any description bearing the trademark MANSION
HOUSE and SAVOY CLUB or any other mark which is deceptively similar to the
plaintiffs said registered trademarks. Other connected reliefs are also sought.
2. IA No. 14016/2015 is filed by the defendant for dismissal of the suit under Order 2
Rule 2 CPC. IA No. 8795/2017 is filed by the plaintiffs under Order 39 Rules 1 and 2
CPC to restrain the defendants from creating any third rights in the trademarks
MANSON HOUSE and SAVOY CLUB during pendency of the present dispute.

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 IA No. 8795/2017
I will first deal with the above application for injunction. I may note that when this
matter came up for hearing on the first date on 13.10.2014 only notice was issued on
the stay application i.e. IA. No. 19963/2014 and no ex parte injunction was passed.
IA No. 19963/2014 is still pending. Thereafter IA No. 8795/2017 was filed by the
plaintiff. In the said application being IA No. 8795/2017 it is stated that recently
plaintiff No. 1 became aware that defendant No. 2 has informed stock exchanges that
a company Edelweiss Asset Reconstruction Company Ltd. has acquired part of the
debt of the defendants. It is further claimed that the plaintiffs has rights in the
trademarks MANSION HOUSE and SAVOY CLUB. It is further stated that the plaintiffs
apprehend that defendants would create third party rights in the said trademarks and
the plaintiffs would suffer great prejudice and irreparable injury. On 13.11.2017 the
court directed that status quo qua transfer of the subject trademark will be
maintained by all the parties till the next date of hearing. The matter was heard on
more than 8 different dates and judgment was reserved.
3. The case of the plaintiff as stated in the plaint is that the plaintiff No. 2 is said to
be an affiliate company of plaintiff No. 3 and a part of the UTO/Harman Jansen Group
of Companies. The groups are producers, sellers and distributors of various spirits
and liquors including whiskies, gin, etc. tracing their origin back to 1777. Present suit
concerns the trademarks MANSION HOUSE, MH and SAVOY CLUB for alcoholic
beverages. It is the case of the plaintiff that through their predecessors they have
been using the above marks for more than 70 years and their extensive use has
spread over several countries. It is pleaded that in 2014 plaintiffs No. 1 and 2
acquired ownership in the above trademarks for India and other neighbouring
countries as stated in the Assignment Deed from plaintiff No. 3 and its other group
companies.
4 . It is pleaded that the plaintiffs predecessors have been using the trademark
MANSION HOUSE since 1912. In India it is stated that plaintiff No. 3 is the registered
proprietor of the trademark MANSION HOUSE which dates back to 1983.
5 . The plaintiffs use of the trademark SAVOY CLUB dates back to 1947. In India
plaintiff No. 3 is the registered proprietor of SAVOY CLUB trademark. It is pleaded
that the plaintiffs enjoy vast reputation and goodwill in the said trademarks and is
recognized as proprietor of the said trademarks globally.
6 . Pursuant to a request from defendant No. 2 plaintiff No. 3 granted a license to
defendant No. 2 on 7.7.1983 to use the plaintiffs said trademarks MANSION HOUSE
and SAVOY CLUB for alcoholic beverages in India. It is further stated that a dispute
that arose between Scotch Whisky Association and plaintiff No. 3 over the use of the
term SCOTCH. Certain proceedings commenced against plaintiff No. 3 in a Dutch
Court. It was suggested by defendant No. 2 that the said trademarks in India be
temporarily transferred to the defendant so that the Plaintiff was not liable for its use
in India. Another agreement was entered into between the parties on 23.2.1987. It is
claimed that plaintiff No. 3 retained ownership of the trademarks and all goodwill
therein.
7. In terms of the agreement dated 23.02.1987 defendant No. 2 was obliged to buy
concentrate of plaintiff No. 3. As there was a breach of the said term by the
defendant No. 2, it is stated that on 7.8.2003 the plaintiff through its lawyers
terminated the Agreement between the parties unless an acceptable compromise was

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 reached. It is stated that the plaintiff also learnt that the defendant has surreptitiously
applied for the trademark and copyright registrations and excise approvals for the
said trademarks in India in its own name. It is stated that the plaintiff has filed
rectifications and oppositions against the defendant's impugned registrations and
applications.
8 . In the meantime plaintiff No. 3 is said to have entered into an Agreement with
Titlis Distilleries Pvt. Ltd. for manufacturing and distributing its MANSION HOUSE and
SAVOY CLUB products in India. This resulted in litigation between the defendants and
Titlis Distilleries in Hyderabad and Bangalore.
9. Plaintiff No. 3 and its group of companies also filed a suit before the Bombay High
Court in 2009 against defendant No. 2 to restrain passing off of the said suit
trademarks by defendants and infringement of the copyright by the defendants. It is
pleaded that after termination of the license by the plaintiffs the usage by the
defendants amounts to violation of the plaintiffs trademark. Plaintiff No. 3's notice of
motion for interim injunction was dismissed on 22.12.2011. Against the said order an
appeal was filed which is said to be pending. Defendant has also filed a counter-
claim in the said suit claiming that plaintiff No. 3 was passing off the said trademark
and was infringing the copyright of the defendant herein. An interim order was
passed in the counter-claim on 30.9.2014 restraining the plaintiffs herein to introduce
any products with the said trademarks in the market without the leave of the court.
10. It is, hence, pleaded that the use of the said trademark by the defendants after
termination of the license amounts to infringement of the plaintiff's trademark
MANSION HOUSE and SAVOY CLUB. It is also claimed that the defendants are guilty
of dilution and unfair competition Tortuous interference, defamation etc.
1 1 . Defendants in their written statement/replies have stated that the agreement
dated 7.7.1983 created rights in the two trademarks in favour of the defendant.
Further, in order to fulfil its obligations with the Scotch Whisky Association and to
deal with the restrictions imposed by the said Association on the plaintiff No. 3 and
so that plaintiff No. 3 would not be liable for use of the two trademarks MANSION
HOUSE and SAVOY CLUB, plaintiff No. 3 by writing dated 23.2.1987 absolutely ceded
and transferred the proprietorship of the said two trademarks MANSION HOUSE and
SAVOY CLUB to the defendants. Further, in 1992-93 the defendant developed its own
concentrate for use in alcoholic beverages sold under the said trademarks and started
manufacturing the said alcoholic beverages by using its indigenously made
concentrate. Thereafter the said trademarks have been used in relation to alcoholic
beverages made from its own concentrate. Plaintiff No. 3 was fully aware of this
position and never objected except that the said plaintiff tried to persuade the
defendant to buy the concentrate of plaintiff No. 3. On 22.11.1993 defendants made
three applications for registration of the said trademark labels containing the word
MANSION HOUSE and/or MH. As there was no objection the same were duly
registered on 28.10.2003. The said trademark is valid and subsisting upto
22.11.2023. On 28.2.1994 defendant made three applications for registration of the
trademark labels containing the word SAVOY CLUB in respect of alcoholic beverages.
Said applications were opposed by plaintiff No. 3. However, plaintiff No. 3 withdrew
the opposition vide its letter dated 21.6.2005 and thereafter the defendant received
certificates of registration of all the marks but is yet to receive the certificate or
registration in respect of trademark No. 620650. Hence, it is claimed that the
defendant has common law and/or statutory rights in exclusive use of the trademark
MANSION HOUSE, MH and SAVOY CLUB. It is pleaded that during all these years

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 plaintiff No. 3 had full knowledge of the activities of the defendant and accepted the
defendant's proprietary rights in the said trademarks. It has allowed the defendants
to expand huge sums of money for establishing the said trademarks. Plaintiff No. 3
never acted as the 'Licensor' of the said trademarks during the aforesaid period and
the defendant had full freedom to use the said trademark as its own.
12. It has been strongly pleaded that the plaintiffs are guilty of Forum Shopping and
abuse of process of law. They have in March 2009 filed a suit against the defendant
before the Bombay High Court where they sought permanent injunction to restrain
the defendant from using the subject trademarks and artistic labels incorporating the
said trademarks. Their interim injunction application was dismissed by the Bombay
High Court on 22.12.2011 giving a clear and definitive finding of entitlement to
proprietorship in favour of the defendants. Further on 10.9.2014 the Bombay High
Court passed interim orders in the counter-claim of the defendant herein restraining
the plaintiffs therein from introducing any products with the subject trademarks in the
market without the leave of the Bombay High Court. It is pleaded that the present suit
has been filed to overreach the orders of the Bombay High Court and is an abuse of
the process of law. It is also pleaded that the conduct of the plaintiffs is dishonest
and fraudulent. It has been strongly urged that on the Principle of Comity this court
ought not to pass any interim orders in favour of the plaintiff.
13. I have heard Mr. Rajiv Nayyar, learned senior counsel for the plaintiffs and Mr.
Hemant Singh, learned counsel for the defendants.
14. Learned senior counsel for the plaintiffs has stated as follows:-
(i) The plaintiffs are prior adopters and users of the trademark MANSION
HOUSE and SAVOY CLUB Alcohol beverages. The registration of the
trademark MANSION HOUSE and SAVOY CLUB dates back to 1983. The said
trademarks were only licensed to defendant No. 2. License of defendant No.
2 has been terminated. Hence, the defendants have no right to use the same.
It is also strongly urged that the plaintiff never ceded the trademark to the
defendants. Reliance is placed on various communications and various
documents to plead that there was, at no stage, any ceding of the trademarks
in favour of the defendants.
(ii) Despite the above clear position the defendants have surreptitiously
applied for registration of the impugned trademarks. The plaintiffs have taken
appropriate steps in this regard.
(iii) It is pleaded that the issues raised in the present suit and the Bombay
suit are not the same or substantially similar. The reliefs sought are different.
Plaintiff is dominus litis and is entitled to file a suit before a court having
territorial jurisdiction.
15. Learned counsel for the defendant has stated as follows:-
(i) It is pleaded that the Agreements dated 7.7.1983 and 23.2.1987 clearly
show that the defendant No. 2 had exclusive and irrevocable rights with
regard to the subject trademarks in respect of alcoholic beverages in India.
In 1986 disputes arose between Scotch Whisky Association and plaintiff No.
3 whereby plaintiff No. 3 was restrained by the Rotterdam District Court,
Netherland from holding their products to be Scotch Whisky as they did not
fulfill the requirement of the Scotch Whisky Association. It was in those facts

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 to fulfill their obligations with the said Scotch Whisky Association and to
ensure that plaintiff No. 3 would not be liable for use of the said trademarks
MANSION HOUSE and SAVOY CLUB and the labels of defendant No. 2,
plaintiff No. 3 absolutely ceded proprietorship of the said trademarks to the
defendant No. 2.
(ii) In 1992-93 defendant No. 2 had developed its own concentrate for use in
alcoholic beverages sold under the said trademark and started manufacturing
the said alcoholic beverages. Plaintiff No. 3 was always aware of this position
but did not chose to object till 2002 during which period the business of the
defendants grew significantly.
(iii) It is reiterated that the conduct of the plaintiff is dishonest and amounts
to Forum Shopping. Bombay High Court has already based on the virtually
identical facts has dismissed the injunction application of the plaintiff. It is
urged that this court would follow the Principle of Comity. Reliance is placed
on judgments of the Supreme Court in India Household and Healthcare Ltd.
vs. LG Household and Healthcare Ltd., MANU/SC/1253/2007 : (2007) 5 SCC
510 and Neon Laboratories Ltd. vs. Medical Technologies Ltd. &
Ors.,MANU/SC/1192/2015 : (2016) 2 SCC 672.
(iv) It is further pleaded that plaintiffs are not entitled to any equitable relief
on account of Forum Shopping and overreach.
16. The two important documents around which the controversy in issue revolves are
the agreements dated 7.7.1983(Ex. P-1) and 23.2.1987(Ex.P-4). I may first look at
these documents. The relevant part of Agreement dated 7.7.1983 reads as follows:-
"This license and authority is given to Tilaknagar Distilleries & Industries Ltd.
exclusively in India and/or its associate group companies on an irrevocable
basis based on the procurement of specified minimum quantities and subject
to the condition that the said Tilaknagar Distilleries & Industries Ltd. shall
procure through UTO Nederland B.V. all required concentrates for producing
and selling Whisky, Brandy, Gin and rum under the brand names Mansion
House and Savoy Club in India."
17. The Agreement dated 23.02.1987 reads as follow:-
"Dear Mr. Dahanukar, We herewith cede our brand names MANSION HOUSE
and SAVOY CLUB to Tilaknagar Distilleries.
The above mentioned brands must go back to UTO (NED) B.V. if due to
Dutch, Indian or International Law UTO (NED) B.V. can no longer supply the
concentrates to Tilaknagar Distilleries and Industries Ltd. to which Tilaknagar
agrees.
UTO NEDERLAND B.V."
1 8 . The issue centers around interpretation of the phrase used in the aforesaid
communication dated 23.2.1987, i.e. "We herewith cede our brand name MANSION
HOUSE and SAVOY CLUB to Tilaknagar Distilleries"
19. Learned senior counsel for the plaintiff has taken me through large number of
documents to plead that the conduct of the parties was such that the parties
interpreted the aforenoted document dated 23.2.1987 to imply that no rights were

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 permanently ceded in the said trademark in favour of the defendants. However, I do
not wish to go into a detailed examination of the documents relied upon by learned
senior counsel for the plaintiff, at this stage, when the court is only considering grant
of an interim injunction. This is specially so as there are other important factors why
in my opinion, no interim relief ought to be granted to the plaintiff.
20. The plaintiff in 2009 filed suit No. 632/2009 against defendant No. 2 before the
High Court of Judicature at Bombay seeking injunction to restrain defendant No. 2
herein by perpetual injunction from printing, publishing etc. the labels or other
literary work thereby committing infringement of the copyright of the plaintiff.
Injunction was also sought to restrain the defendant therein (defendant No. 2 herein)
from using the trademarks in question i.e. MANSION HOUSE, MH, SAVOY CLUB and
MHB. Other connected reliefs were also sought.
21. On 22.12.2011 while hearing a notice of motion seeking interim injunction the
Bombay High Court rejected the motion and recorded a detailed finding and held as
follows:-
"88. During these sixteen years, the plaintiffs proceeded on the basis that by
the documents dated 23rd February, 1987, the trademarks had been
transferred or assigned to the defendant. The plaintiffs knew at least from the
year 1994 that the defendant had not purchased the concentrates from them.
I have disbelieved the case in paragraph 27 of the plaint regarding the
defendant having represented that it was manufacturing the products sold
under the said marks utilizing the concentrates purchased from the plaintiffs
as it had an adequate stock thereof. This is clear, inter-alia, from the
plaintiffs advocate's letter dated 7th August, 2003. It was, therefore, clear to
the plaintiffs that the defendant was manufacturing products sold under the
said marks contrary to the terms and conditions of the arrangement
contained in the document dated 7th July, 1983 as well as the documents
dated 23rd February, 1987. The plaintiffs did nothing to prevent the
defendant from doing so. Nor did the plaintiffs call upon the defendant to
cease and desist doing so. The inference is that the plaintiffs did not do so as
they had considered their having transferred or assigned the marks to the
defendant. What is, however, more important is that their failure to do so
indicates that they had abandoned their rights under the documents dated
23rd February, 1987, especially the right to have the defendant purchase the
concentrates from them and to use the same in the products sold under the
said marks. The reason for the plaintiffs not having even insisted upon their
rights is immaterial. However, the fact that they did not enforce their rights
or even insist upon the same from 1994 to the year 2003 indicates a strong
prima facie case in favour of the defendant that this was due to the plaintiffs
having lost interest in the Indian market probably due to the economic
scenario and the laws regarding prohibition in India or the enforcement
thereof during that period. Whatever be the reasons, the fact is that the
plaintiffs from the year 1994 to 2003 permitted the defendant to sell their
products under the said marks without, in turn, insisting upon the defendant
fulfilling the terms and conditions thereof in favour of the plaintiffs. The
alleged breaches by the defendant of the documents dated 23rd February,
1987, were, therefore, waived by the plaintiffs."
.........

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 95. In view of these facts, it is sufficient to refer to the judgment of the
Supreme Court in M/s. Power Control Appliance v. Sumeet Machines Pvt.
Ltd., MANU/SC/0646/1994 : (1994) 2 SCC 448. The Supreme Court held on
facts that the appellant was disentitled to the equitable relief of injunction by
reason of the unexplained delay and that the balance of convenience was
also overwhelming in favour of the respondent. It was also held that under
section 30(b), it is open to the defendant to show that he has been impliedly
permitted to use the trade mark.
The facts of the present case establishes that the plaintiffs acquiesced in the
defendant using the marks. The plaintiffs sat by while the defendant did so
and spent money on it. The defendant's conduct in the present case is also
consistent with the claim of exclusive rights in the said marks. In the course
of the correspondence, it stoutly denied the plaintiffs' claim to the said
marks, asserted its rights in respect thereof and continued to use the marks
as the proprietor thereof. Even in response to the letter of termination, the
defendant contended that it was entitled to use the marks. The plaintiffs
stood by knowingly and let the defendant build up an important trade. It is
only thereafter, that the plaintiffs thought it necessary to adopt proceedings
to crush the same. For a crucial period, the plaintiffs acquiescence virtually
amounted to their consenting to the defendant's using the said marks. The
plaintiffs do not state that they were ignorant of the fact that they had a
rights in respect of such marks as well as the means to assert the same.
The present case therefore, falls squarely within the ratio of the judgment of
the Supreme Court."
2 2 . Having observed as above, the Bombay High Court dismissed the notice of
motion. An appeal has been filed by the plaintiff against the said order which is
pending.
2 3 . Similarly, in the Counter-claim filed by defendant No. 2 herein before the
Bombay High Court in the said suit on 10.09.2014 the Bombay High Court directed
that the defendants to the counter-claim (plaintiffs herein) would not introduce any
products with the said trademark into the market without leave of the court.
24. Contemporaneously the plaintiff on 10.10.2014 filed the present suit which came
up for hearing on 13.10.2014. On 14.10.2014 the Bombay High Court noted that a
very disturbing circumstance had arisen which require passing of urgent order. The
court noted the action of the plaintiff herein in filing of the suit before this Court
when the matter was pending before the Bombay High Court and interim order had
been declined by the judgment of the Bombay High Court dated 22.12.2011. The
court noted that it is the most brazen form of Forum Shopping and restrained the
plaintiffs from taking any steps in the present proceedings till 7.11.2014. The said
order was modified on 14.11.2014.
25. The issue would be as to whether the plaintiff can be permitted to now all over
agitate the same facts to seek interim orders against defendant No. 2 before this
court by filing the present suit and interim injunction application which relief was
declined by the Bombay High Court and appeal against which order is pending. It
may be noted that parties to the two proceedings namely, the plaintiff and the
defendant are virtually identical.
Before this Court, the plaintiffs have, needlessly, impleaded the Managing Director of

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 the defendant No. 2 as Defendant No. 1. In the present suit, plaintiffs No. 1 and 2
claim that they have acquired ownership in the said trademark in India and other
neighbouring countries in 2014 from plaintiff No. 3.
In the Bombay suit, the plaintiff No. 3 in the present suit is plaintiff No. 2 in the suit
before Bombay High Court. The said suit is filed along with one UTO Nederland B.V.
in Bombay. Plaintiff No. 3 herein and UTO Nederland B.V. are admittedly wholly
owned subsidiaries of UTO Holding B.V., i.e., belong to the same Group of
Companies. Both the suits virtually claim the same relief i.e., to restrain the
defendant from manufacturing, selling, offering for sale, distributing, advertising etc.
the beverages, especially IMFL or any goods bearing the trade mark SAVOY CLUB or
MANSION HOUSE.
26. Reference in this context may be had to the judgment of the Supreme Court in
India Household and Healthcare Ltd. vs. LG Household and Healthcare Private Ltd.,
(supra) wherein the court held as under:-
"17. This aspect of the matter has been considered in A Treatise on the Low
Governing Injunctions by Spelling and Lewis wherein it is stated:
"Section 8. Conflict and loss of jurisdiction.- Where a court having
general jurisdiction and having acquired jurisdiction of the subject-
matter has issued an injunction, a court of concurrent jurisdiction
will usually refuse to interfere by issuance of a second injunction.
There is no established rule of exclusion which would deprive a court
of jurisdiction to issue an injunction because of the issuance of an
injunction between the same parties appertaining to the same
subject-matter, but there is what may properly be termed a judicial
comity on the subject. And even where it is a case of one court
having refused to grant in junction, while such refusal does not
exclude another coordinate court or Judge from jurisdiction, yet the
granting of the injunction by a second Judge may lead to compliance
and retaliatory action ..."
18. In Manohar Lal Chopra v. Seth Hirala, this court injuncted a party from
prosecuting a suit wherein power under section 10 of the code of Civil
Procedure could not have been exercised.
19. A court while exercising its judicial function would ordinarily not pass an
order which would make one of the parties to the lis violate a law order
passed by another court."
27. Reference may also be had to the judgment of the Supreme Court in the case of
Neon Laboratories Ltd. vs. Medical Technologies Ltd., (supra). It was the case of the
plaintiff in that case that it had invented the trademark PROFOL. The defendant
introduced in the market the same generic drug under the trademark ROFOL. The
defendant filed a notice of motion in the Bombay High Court and was granted an
injunction on 31.3.2012. The plaintiff had filed a suit in Gujarat. It was in those facts
that the Supreme Court held as follows:-
"7. ....We may reiterate that every High Court must give due deference to the
enunciation of law made by another High Court even though it is free to
charter a divergent direction. However, this elasticity in consideration is not
available where the litigants are the same, since Sections 10 and 11 CPC

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 would come into play. Unless restraint is displayed, judicial bedlam and
curial consternation would inexorably erupt since an unsuccessful litigant in
one State would rush to another State in the endeavour to obtain an
inconsistent or contradictory order. Anarchy would be loosed on the Indian
Court system. Since the Division Bench of the Bombay High Court is in seisin
of the dispute, we refrain from saying anything more. The respondent-
plaintiffs filed an appeal against the order dated 31.03.2012 and the Division
Bench has, by its order dated 30.04.2012, stayed its operation."
28. In Union of India & Ors. v. Cipla Ltd. & Ors., MANU/SC/1345/2016 : AIR 2016
SC 5025, the Supreme Court dealt with the issue of forum shopping. The court held
as follows:
"150. A classic example of forum shopping is when a litigant approaches one
Court for relief but does not get the desired relief and then approaches
another court for the same relief. This occurred in Rajiv Bhatia v. Govt. of
NCT of Delhi & Ors.: MANU/SC/0552/1999 : (1999) 8 SCC 525. The
respondent-mother of a young child had filed a petition for a writ of habeas
corpus in the Rajasthan High Court and apparently did not get the required
relief from that court. She then filed a petition in the Delhi High Court also
for a writ of habeas corpus and obtained the necessary relief.
Notwithstanding this, this court did not interfere with the order passed by the
Delhi High Court for the reasons that this court ascertained the views of the
child and found that she did not want to even talk to her adoptive parents
and therefore the custody of the child granted by the Delhi High Court to the
respondent-mother was not interfered with. The decision of this court is on
its own facts, even though it is classic case of forum shopping.
151. In Arathi Bandi v. Bandi Jagadrakshaka Rao: MANU/SC/0711/2013 :
(2013) 15 SCC 790 this court noted that jurisdiction in a court is not
attracted by the operation or creation of fortuitous circumstances. In that
case, circumstances were created by one of the parties to the dispute to
confer jurisdiction on a particular High Court. This was frowned upon by this
court by observing that to allow the assumption of jurisdiction in created
circumstances would only result in encouraging forum shopping."
29. The facts of the present case are glaring. The parties to the suit in Bombay and
the present suit are virtually identical/have a commonality of interest. The said suit in
Bombay was filed in 2009. Interim injunction application was dismissed on
22.02.2011 and a clear prima facie findings of fact were recorded in favour of the
defendants and against the plaintiffs. It is thereafter that the present suit has been
filed on 10.10.2014. The plaintiffs seek interim orders from this court despite being
declined relief by the Bombay High Court.
30. Keeping in view the legal position it is manifest that this court has to give due
deference to the enunciation made by another court especially when the litigants are
the same. In my opinion, the above legal proposition squarely applies to the facts of
the case. The plaintiff having filed suit based on identical facts before the Bombay
High Court and having been declined an interim injunction cannot now try to
overreach the said order of the Bombay High Court and file the present suit in Delhi
High Court seeking an interim injunction. If this court were to agree with the
contentions of the plaintiff and were to pass an interim order in favour of the plaintiff
it would be passing an order wholly contrary to the order of the Bombay High Court.

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 3 1 . I may also note that on facts the Bombay High Court in its judgment dated
22.02.2011 recorded a finding that the plaintiffs herein for 16 years proceeded on the
basis that by document dated 23.02.1987, the trademarks have been transferred and
assigned to the defendants. The court also concluded that the plaintiffs permitted
defendant No. 1 to sell their products with the said marks and therefore, alleged
breaches by the defendants of the documents dated 23.02.1987 were waived by the
plaintiffs. There are no additional facts and circumstances which persuade me to
record a finding contrary to the finding recorded by the Bombay High Court.
3 2 . There is another aspect which persuades me not to grant any relief to the
plaintiffs, namely, gross delay and laches.
3 3 . The relevant agreement in the present case has been executed on 23.2.1987
whereby the plaintiff No. 3 is said to have ceded its rights in favour of defendant No.
2. The plaintiff stood by while the defendants continued with its business and built up
its trade. The plaintiff's claim that they have terminated the license of defendant No.
2 by notice dated 7.8.2003. It is now in 2014 that they have approached this court by
filing of the suit seeking an interim injunction to restrain the defendants from using
the said trademarks i.e., after an alleged delay of 11 years. There is an unexplained
delay on the part of the plaintiffs. It would be improper for this court to grant any
interim injunction to the plaintiff on account of gross delay, latches and acquiesce.
34. In this context reference maybe had to the judgment of the Supreme Court in
Power Control Appliances v. Sumeet Machines (P) Ltd., MANU/SC/0646/1994 :
(1994) 2 SCC 448 which held as follows:
"33. Now, we come to the principles in relation to the grant of interim
injunction. The case in K.E. Mohammed Aboobacker v. Nanikram Maherchand
[MANU/TN/0621/1957 : (1957) 2 ML J 573] makes a reference to the case-
law and holds at pages 574-75 as under:
"The principles which should govern the Court in granting or
withholding a temporary injunction in trade mark infringement
actions are well-settled: See recent decision Henry Hemmings, Ltd.
v. George Hemmings, Ltd. [(1951) 68 RPC 47] As a temporary
injunction is merely of a provisional nature and does not conclude
the rights of the parties in any way, the Court will exercise its
discretion in favour of the applicant only in strong cases. The
plaintiff must make out a prima facie case in support of his
application for the ad interim injunction and must satisfy the Court
that his legal right has been infringed and in all probability will
succeed ultimately in the action. This does not mean, however, that
the Court should examine in detail the facts of the case and
anticipate or prejudice the verdict which might be pronounced after
the hearing of the suit or that the plaintiff should make out a case
which would entitle him at all events to relief at the hearing. Colman
v. Farrow & Co. [(1898) 15 RPC 198], Hoover, Ltd. v. Air-way Ltd.
[(1936) 53 RPC 399], Upper Assam Tea Co. v. Herbert and Co.
[(1890) 7 RPC 183], Star Cycle Co., Ltd. v. Frankenburgs [(1906) 23
RPC 337]. In fact the Court will not ordinarily grant an interlocutory
injunction if a large amount of evidence is necessary to support the
plaintiff's case. The proper course in such a case is to ask for the
trial of the action. The injury must be actual or imminent. Pinel & Cie

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 v. Maison Pinet, Ltd. [(1895) 14 RPC 933] Where the defendant
disputes the plaintiff's title to the mark or contends that the plaintiff
is not entitled to relief by reason of the acquiescence or delay or
other estoppel or of the defendant's concurrent rights, the Court will
be guided by the balance of convenience which may arise from
granting or withholding the injunction as well as the justice of the
cause after considering all the circumstances in the suit. In other
words, where the plaintiff's title is disputed or the fact of
infringement or misrepresentation amounting to a bar to the action
or some other defence is plausibly alleged upon the interlocutory
motion, the Court in granting or refusing the interim injunction is
guided principally by the balance of convenience that is by the
relative amount of damage which seems likely to result if the
injunction is granted and the plaintiff ultimately fails or if it is
refused and he ultimately succeeds; Read Brothers v. Richardson and
Co. [(1881) 45 LT 54], Hommel v. Bauer & Co. [(1903) 20 RPC 801]
... It is necessary that an application for interlocutory injunction
should be made immediately after the plaintiff becomes aware of the
infringement of the mark. Improper and unexplained delay is fatal to
an application for interlocutory injunction. The interim injunction will
not be granted if the plaintiff has delayed interfering until the
defendant has built up a large trade in which he has notoriously used
the mark. North British Rubber Co., Ltd. v. Gormully and Jeffery
Manufacturing Co. [(1894) 12 RPC 17], Army and Navy Cooperative
Society, Ltd. v. Army Navy and Civil Service Cooperative Society of
South Africa Ltd. [(1902) 19 RPC 574], Hayward Bros. Ltd. v. Peakall
[(1909) 26 RPC 89], Yost Typewriter Co. Ltd. v. Typewriter Exchange
Co. [(1902) 19 RPC 422], Royal Warrant Holders' Assn. v. Slade &
Co., Ltd. [(1908) 25 RPC 245]"
Hence, also on the ground of given delay and latches by the plaintiff, in my opinion,
the plaintiff is not entitled to any relief.
There is no merit in this application. The same is dismissed. Interim order dated
13.11.2017 is vacated.
IA No. 14016/2015
35. IA No. 14016/2015 is filed by the defendants under Order 2 Rule 2 CPC seeking
dismissal of the present suit.
36. It is pleaded by the defendants/applicants that the present suit is filed based on
the same cause of action on which the suit before the Bombay High was filed. It is
pleaded that the suit in Bombay is based on alleged passing off by the defendants
therein while the present suit is filed for infringement of trademark. It is pleaded
relying upon various judgments of this court that the settled principle is that statue
law relating to infringement of trademark is based on the same fundamental
principles as general law relating to passing off.
37. I have heard the learned counsel for the parties.
3 8 . The learned counsel for the defendants/applicants relies upon the following
judgments of this court to support his case:

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 i) Usha International & Anr. v. Usha Television Ltd., MANU/DE/0260/2002 :
2002 (25) PTC 184 (Del) (DB);
ii) Vatika Resorts Pvt. Ltd. v. Vatika Grand, MANU/DE/1615/2009 : 2009 (40
PTC 111 (Del); and
iii) Hyundai Corporation v. Rajmal Ganna, MANU/DE/8614/2007 : 2007 (35)
PTC 652 (Del).
The learned counsel further submits that in the suit filed in Bombay the plaintiffs
failed to seek relief relating to infringement of trademark and hence cannot now seek
the same relief in this suit.
3 9 . The learned senior counsel appearing for the plaintiffs has relied upon the
judgment of the Supreme Court in Bengal Waterproof Ltd. v. Bombay Waterproof
Manufacturing Company & Anr. MANU/SC/0327/1997 : (1997) 1 SCC 99 to plead that
Order 2 Rule 2 CPC has no application.
40. Order 2 Rule 2 CPC reads as follows:
"2. Suit to include the whole claim.--(1) Every suit shall include the whole of
the claim which the plaintiff is entitled to make in respect of the cause of
action; but a plaintiff may relinquish and portion of his claim in order to
bring the suit within the jurisdiction of any Court.
(2) Relinquishment of part of claim.--Where a plaintiff omits to sue in
respect of, or intentionally relinquishes, any portion of his claim, he shall not
afterwards sue in respect of the portion so omitted or relinquished.
(3) Omission to sue for one of several reliefs.--A person entitled to more
than one relief in respect of the same cause of action may sue for all or any
of such reliefs; but if he omits, except with the leave of the Court, to sue for
all such reliefs, he shall not afterwards sue for any relief so omitted.
Explanation.--For the purposes of this rule an obligation and a collateral
security for its performance and successive claims arising under the same
obligation shall be deemed respectively to constitute but one cause of
action."
41. In Bengal Waterproof Ltd. v. Bombay Waterproof Manufacturing Company & Anr.
(supra), the Supreme Court was dealing with a case where the plaintiff had claimed
to be the proprietor of the trademark, 'DUCK BACK'. The plaintiff alleged that the
defendants were manufacturing and marketing similar products under the trademark
'DACK BACK' which phonetically and visually resembled the plaintiff's trademark. The
plaintiff filed a suit before the civil court Hyderabad praying for permanent injunction
for infringement of its registered trademark, 'DUCK BACK'. The suit was dismissed on
06.04.1982. The plaintiff filed a second suit in 1982 in the court of City Civil Court
Hyderabad. The Supreme Court held as follows:
"10. ...... The aforesaid averments in the plaint clearly show that the present
suit is not based on the same cause of action on which the earlier suit was
based. The cause of action for filing this present second suit is the
continuous and recurring infringement of plaintiff's trade mark by the
defendants continuously till the filing of the present second suit. We asked

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 the learned counsel for the defendants as to whether pending the suit and at
present also the defendants are trading in the offending goods, namely,
bearing the mark 'DACK BACK' and he informed us that defendants even at
present are carrying on this business. Therefore, pending the second suit all
throughout and during the pendency of these proceedings the defendants
have carried on the business of trading in the commodity waterproof
raincoats 'DACK BACK'. It is obvious that thus the alleged infringement of
plaintiff's trade mark 'DUCK BACK' and the alleged passing off action on the
part of the defendants in selling their goods by passing off their goods as if
they were plaintiff's goods has continued all throughout uninterrupted and in
a recurring manner. It is obvious that such infringement of a registered trade
mark carried on from time to time would give a recurring cause of action to
the holder of the trade mark to make a grievance about the same and
similarly such impugned passing off actions also would give a recurring
cause of action to the plaintiff to make a grievance about the same and to
seek appropriate relief from the court. It is now well settled that an action for
passing off is a common law remedy being an action in substance of deceit
under the Law of Torts. Wherever and whenever fresh deceitful act is
committed the person deceived would naturally have a fresh cause of action
in his favour. Thus every time when a person passes off his goods as those
of another he commits the act of such deceit. Similarly whenever and
wherever a person commits breach of a registered trade mark of another he
commits a recurring act of breach or infringement of such trade mark giving
a recurring and fresh cause of action at each time of such infringement to the
party aggrieved. It is difficult to agree how in such a case when in the
historical past earlier suit was disposed of as technically not maintainable in
absence of proper reliefs, for all times to come in future defendant of such a
suit should be armed with a licence to go on committing fresh acts of
infringement and passing off with impunity without being subjected to any
legal action against such future acts. ......"
4 2 . Hence, the court was of the view that infringement of the trademark is a
continuing cause of action. It also noted that the act of passing off is an act of deceit
under the Law of Torts and whenever such act is committed by the defendants, the
plaintiff gets a fresh cause of action to come to the court. Similarly, the same
situation prevails regarding infringement of the trademark. In those facts and
circumstances, the Supreme Court took the view that the subsequent suit is not
barred under Order 2 Rule 2.
43. Reference may also be had to the judgment of the Division Bench on this High
Court in the case of Syndicate Bank vs. Raj Kumar Tanwar, MANU/DE/1479/2008 :
154 (2008) DLT 230. That was a case in which the only contention raised was that
the landlord had filed the suit seeking ejectment of the appellant from the tenanted
premises stating that the lease has come to an end by efflux of time. A second suit
was filed by the landlord claiming damages for unauthorised use and occupation. The
issue was as to whether the second suit is barred under Order II Rule 2 CPC. The
Division Bench held as follows:-
"9. Discussing the ambit of Order 2 Rule 2, a Division Bench of this Court, in
the decision dated 24.02.2004 disposing of FAO (OS) No. 350/2001 Union of
India, K. Paints Sales v. Madho Ram Budh Singh observed as under:
The principle enshrined under Order 2 Rule 2 is aimed against a

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 multiplicity of suits in respect of the same cause of action. The Rule
is based on the principle that a party should not be vexed twice for
the one and the same cause of action. However, the said rule must
be applied with caution. The plea of bar under Order 2 Rule 2
defeats, what otherwise may be legitimate claim of a party, and
therefore, care must be taken to see that complete identity of cause
of action is established. Can it be said that the recovery of damages
for unauthorized use and occupation of a premises for different
periods constitutes a single cause of action. To our mind it does not.
Cause of action to recover rent for a premises or damages for
unauthorized use and occupation would arise each month for which
possession is retained by the tenant or the person in unauthorized
occupation as the case may be. Reference may be made to the
decision of the Calcutta High Court reported as MANU/WB/0242/1972
: ILR 1973 (1) CAL 343. It was held that recovery of rent from
Badrapad to Kartik 1377, B.S., would not bar a subsequent suit for
recovery of rent from Baisakh to Shrawan 1377 B.S. The principle of
law was set out with clarity by the judgment of the Privy Council
reported as 26 IC 228 titled Payana v. Panna Lal. It was held that the
rule is directed to securing the exhaustion of the relief in respect of
cause of action and not to the inclusion in one and the same action
of different causes of action, even though they arise from the same
transaction."
44. In the present case, the facts are virtually identical to the facts of the above
judgment in the case of Bengal Waterproof Ltd. v. Bombay Waterproof Manufacturing
Co. (Supra). The earlier suit was filed in Bombay in 2009. Now in 2014, another suit
has been filed in this court. The cause of action being a continuing cause of action,
the present suit would not be barred under Order 2 Rule 2 CPC.
45. In view of the above reasons there is no merit in the present application i.e. IA
14015/2015 and the same is dismissed.
4 6 . I may only note that the defendant has filed an application being IA No.
14015/2015 under section 10 of CPC for stay of the present proceedings. The order
sheet on some occasions shows that the application being IA No. 14015/2015 was
argued. However, in the written submissions none of the parties have filed
submission regarding this application under section 10 CPC. In these circumstances,
it is appropriate that the said application be heard.
47. List this application for arguments on 5.8.2019.
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