CASE LAW -1

Glen Raven Mills Inc. vs Vaspar Concepts Private Ltd.

Citation: 1995 IVAD Delhi 569, 60 (1995) DLT 616, 1996 (36) DRJ 187

Facts:

The plaintiff has filed this suit on the allegations that the plaintiff is a Corporation
incorporated under the laws of the State of North Carolina in the United States of America.
One of its division is Custom Fabrics Division which manufacture Awning, marine and
furniture fabrics under its trade mark "SUNBRELLA"."SUNBRELLA" is staled to be an
invented word newly and freshly corned by the plaintiff and extensively used and advertised
throughout the world. The said trade mark is staled to have been used in various countries
including India. Defendant No. 1 is engaged in manufacture of canopies, awnings and
Aluminium casted furniture and is selling the same under the trade mark "SUNBRELLA".
An order was placed on 3rd June, 1991 on the defendants by one Mr.Debjit Gupta, who had
been engaged by the plaintiff for making investigations, for supply to him awnings under the
trade mark "SUNBRELLA". On 18th July, 1991 the defendant dispatched awnings to the said
Mr.Debjit Gupta from Bangalore and the same were delivered in Delhi on 31st July, 1991. It
is admitted that the product of the defendant is not available in the market. It is stated that as
the defendants were malafidely using the plaintiffs trade mark "SUNBRELLA" for its
products with a view to earn illegal profits by banking upon the goodwill and reputation of
the plaintiff, The plaintiff has, therefore, claimed a decree for injunction restraining the
defendants from manufacturing or selling or offering for sale directly or indirectly awnings,
canopies or any other goods or fabric or textiles under the trade mark "SUNBRELLA".

In the written statement, the defendant has challenged the jurisdiction of this Court and it is
stated that no cause of action has arisen for a suit for passing off in Delhi; even the sale of
goods to Mr.Debjit Gupta who had acted on behalf of the plaintiff was made in Bangalore
and not in Delhi. On merits, it was alleged that the plaintiff themselves were manufacturing
awnings and were marketing the same under the trade mark "SOMFY. It was, therefore,
stated that the plaintiff was guilty of willful suppression of facts. It is stated that the plaintiff
in any case does not have any business activity in India nor there is any goodwill in respect of
such goods in India, It was also stated that as the plaintiffs were marketing their awnings
under the name of "SOMFY, they cannot have any right in the trade mark "SUNBRELLA". It
was, therefore, stated that the suit filed by the plaintiff is liable to be dismissed.

Issues

 Whether the plaintiff is eligible for the grant of the interim injunction of the said trade
mark?
 Whether there is territorial jurisdiction for the Delhi court to try the suit ?
 Whether by this single transaction of sale any cause of action for filing the suit has
arisen in Delhi or not?

Legal provisions

 Section 39 of the Sale of Goods Act, a delivery of the goods to the carrier will be,
prima facie, deemed to be the delivery of goods to the buyer.
 Section 20 of the Code of Civil Procedure, a suit can be filed against the defendants at
a place where he either resides or is carrying on business or personally works for gain.
A suit can also be filed in the Court which has the jurisdiction over the place where
the cause of action wholly or in part arises.

Reasoning

The case of the plaintiff is that as the goods have been supplied by the defendant to Mr.Debjit
Gupta in Delhi, therefore, Delhi Courts have the jurisdiction to try the suit. To appreciate the
contention of the plaintiff as to how the cause of action has arisen, even while the preparatory
steps were being taken, it was not clear whether the defendants were continuing the use of the
impugned trade mark Sunbrella or had discontinued the same since the product was not
available in the market place. In fact to this date the position remains the same and the
plaintiff is bringing this action with a view to nipping the infringement in the bud. Hence,
having regard to the aforesaid facts and to the fact that the plaintiff is a foreign corporation,
the action has been brought at the very first opportunity and without any delay whatsoever. It
will, therefore, be seen that it is the case of the plaintiff itself that the product of the
defendants is not available in market and plaintiff was not even sure whether the defendant
was continuing the use of the trademark "SUNBRELLA" or not.

Under Section 39 of the Sale of Goods Act, a delivery of the goods to the carrier will be,
prima facie, deemed to be the delivery of goods to the buyer. In this case, the order was
placed by Mr.Debjit Gupta upon the defendant at Bangalore. Such order was accepted by the
defendant at Bangalore and pursuant to the acceptance of the order, the goods were delivered
to the carrier for onward delivery to .the said Mr.Debjit Gupta. As freight has been paid by
the plaintiff, prima facie, carrier will be deemed to be the agent of the plaintiff and delivery to
the carrier will be deemed to be delivery to the plaintiff at Bangalore. In the Court’s opinion,
the contract for supply of goods was completed at Bangalore and no part of cause of action
has arisen in Delhi. Nothing has been placed on record to indicate that defendant is
threatening to sell their products in Delhi so as to pass them off as those of the plaintiff. One
sale mentioned in the plaint was on the basis of a trap order placed by Mr.Debjit Gupta for
and on behalf of the plaintiff. Even this order has been placed upon the defendant in
Bangalore and the goods had been supplied from Bangalore.

Judgement

The Hon’ble Delhi High Court held that one single trap order placed upon the defendant and
supply of goods on the basis of the said order to a person for use in Delhi cannot be said to
form part of cause of action which would give jurisdiction to the Courts at Delhi., As already
held above, to give jurisdiction to the Court, sale has to be on a commercial basis to the
whole seller, retailer or a distributor. It was held that no part of cause of action has arisen in
Delhi and consequently, the Delhi High Court will have no jurisdiction to entertain this suit.

And hence, it was directed that the plaint be returned to the plaintiff for presentation in a
proper Court. In view of the fact that it was already held that this Court has no jurisdiction to
entertain the suit, there will be no questioning of deciding the interim application for
injunction.