MANU/MH/1429/2017

Equivalent Citation: 2017(6)ABR576, 2018(5)ALLMR195, 2017(71)PTC 488(Bom)

IN THE HIGH COURT OF BOMBAY

Suit No. 93 of 2016
Decided On: 12.07.2017
Appellants: Black Ticket Films
Vs.
Respondent: Walter Philip and Ors.
Hon'ble Judges/Coram:
R.D. Dhanuka, J.
Counsels:
For Appellant/Petitioner/Plaintiff: Amir Arsiwala, Malika Tally and Mansi Patel
For Respondents/Defendant: Jaideep Mitra i/b Virendra Kanojia
Case Note:
Civil - Jurisdiction of Court - Present suit filed by Defendants challenging
jurisdiction of present Court in granting leave under Clause XII of Letters
Patent - Whether leave granted by present Court under Clause XII of
Letters Patent to Plaintiffs was liable to be revoked - Held, Plaintiff has
proved that it had garnered goodwill in City in question - Defendants had
not chosen to lead evidence on issue of jurisdiction - Plaintiff had proved
beyond reasonable doubt that substantial part of cause of action in this
action for Quia Timet had arisen within territorial jurisdiction of present
Court based - Present Court had rightly granted leave under clause XII of
Letters Patent on application filed Plaintiff - Present Court has thus
jurisdiction to entertain, try and dispose of suit upon present Court having
granted leave in favour of Plaintiff - No case was made out by Defendants
for revocation of leave and for dismissal of suit - Present Court had
jurisdiction to entertain, try and dispose of suit, question of revocation of
leave or for dismissal of suit or for return of plaint to appropriate Court did
not arise - Suit disposed off. [67] and[85]
JUDGMENT
R.D. Dhanuka, J.
1. By an order dated 6th October, 2016, in view of the issue of jurisdiction raised by
the defendants in the affidavit in reply to the Notice of Motion No. 1205 of 2016, this
Court framed two preliminary issues under section 9-A of the Code of Civil Procedure,
1908 as under :-
"1). Whether the leave granted by this Court under Clause XII of the Letters
Patent to the plaintiffs is liable to be revoked?
2). If the answer to the aforesaid issue is in the affirmative and leave is
revoked, whether the suit is liable to be dismissed for want of jurisdiction or
whether this plaint is liable to be returned for being filed in an appropriate

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 Court?"
2 . Pursuant to the liberty granted by this Court, the plaintiffs led oral as well as
documentary evidence on the aforesaid issues framed by this Court. The defendants
did not laid any oral evidence. Some of the relevant facts for the purpose of deciding
the aforesaid issues are as under :
3. It is the case of the plaintiff that the plaintiff has been an independent film maker
and creative agency focussed on presenting stories from a fresh perspective. The
productions of the plaintiff have been screened in over 200 film festivals and across
TV networks in North America, Europe and Asia. The plaintiff was formed on 6th May,
2009 and was registered on 26th May, 2009. The plaintiff has described in the plaint
several projects undertaken by the plaintiff over the years. The plaintiff has also
given details of the projects undertaken by the plaintiff during the financial year
2009-10, 2015-16 and total revenue generated out of those projects. It is the case of
the plaintiff that the plaintiff and its partners have also showcased their productions
at various national and international events described in paragraph 8 of the plaint.
4. it is the case of the plaintiff that the plaintiff has been continuously trading under
the brand name and trademark "Black Ticket Films" and has been operating a website
"www.blackticketfilms.com" since April, 2010. The said website has been
continuously promoting the "Black Ticket Films" brand and has provided its clients,
both present and potential, details as to its portfolio and how to contact it. The
plaintiff relied upon the digital platforms for its trade and also brand name and
gained many new clients through this website.
5. It is the case of the plaintiff that in the month of June, 2015, the plaintiff came to
learn of a web-page being hosted using the Facebook platform under the name of
"Black Ticket Films". The said web-page however, did not give any details of the
persons behind it, except an email ID, blackticketfilm@gmail.com. The plaintiff
through its partners sent a letter to the said email ID informing that they have been
using the trade name and brand name "Black Ticket Films" since the year 2009 and
that unknown persons attached to this web-page were guilty of passing off their
brand name and goodwill.
6. The plaintiff did not receive any response through the said email ID. It is the case
of the plaintiff that the said web-page appeared to be promoting one Tamil language
movie by the name of "Meendum Oru Kadhal Kathai" alleged to be produced by a
"Black Ticket Films". It is the case of the plaintiff that the plaintiff has no relation to
that production nor was it even aware of the said film prior to describing the said
web-page. The plaintiff was not able to identify those individuals behind the said film
and the alleged production house of "Black Ticket Films".
7. It is the case of the plaintiff that when the plaintiff began process of registration of
its trademark "Black Ticket Films", the plaintiff came across another application for
registration of their trademark "Black Ticket Films" by the defendant No. 2, which
trademark the defendant No. 2 had adopted only in the month of November, 2014.
On 2nd September, 2015, the plaintiff through its advocate sent a legal notice to the
defendant No. 2 setting out the rights over the trademark "Black Ticket Films". The
defendant No. 2 through his advocate, sent interim reply on 18th September, 2015.
The defendants sent a detailed reply on 29th September, 2015. The plaintiff replied
to the said letter dated 15th October, 2015 and once again reiterated that the
defendant No. 2 was guilty of passing off the trademark as his own. There was no

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 reply by the defendant No. 2 to the said letter dated 15th October, 2015.
8. It is the case of the plaintiff that in the month of November, 2015, the plaintiff was
alerted by his client of the website by the domain name "www.blackticketfilms.in".
The clients of the plaintiff were confusing this website with that of the plaintiff and
were thus calling and making enquiries as to whether the plaintiff was responsible for
the new production of "Meendum Oru Kadhal Kathai" which appeared to be the only
cinematographic film being promoted on this website. The plaintiff came to know that
the said website was registered by the defendant No. 1. The plaintiff accordingly
concluded that the defendant Nos. 1 and 2 were working in concert and passing off
the trademark of the plaintiff and were responsible for the production of
cinematographic film "Meendum Oru Kadhal Kathai" false under the trademark of the
plaintiff.
9 . The plaintiff accordingly filed a suit on 21st December, 2015 against the
defendants inter-alia praying for an order and decree of permanent injunction against
the defendants for passing off their trade name "Black Ticket Films" in any manner or
using it in any way in the course of their trade and for various reliefs including a
decree for damages in the sum of Rs. 50,000/-. The plaintiff was granted leave to
amend the plaint on 11th January, 2016 by this Court. The plaintiff accordingly
carried out the amendment to the plaint on 14th January, 2016. The plaintiff added
paragraphs 32-A to 32-F to the plaint.
10. The plaintiff also filed a Leave Petition under clause XII of the Letters Patent
bearing Leave Petition (Lodging) No. 295 of 2015 on 21st December, 2015. By an
order dated 15th January, 2016, this Court granted leave to the plaintiff under clause
XII of the Letters Patent. The plaintiff filed Notice of Motion No. 311 of 2016 inter-
alia praying for an injunction against the defendants from using the brand name
"Black Ticket Films" in any manner and from releasing the film "Meendum Oru Kadhal
Kathai" or any other film under the brand name "Black Ticket Films" and for other
reliefs. On 20th January, 2016, learned counsel for the defendants made a statement
before this Court that as and when his clients shall be entitled to release the film,
they would give a minimum notice of seven days to the plaintiff before releasing the
film.
11. This Court accepted the said statement and did not consider to grant any ad-
interim relief as on the date of the said order and directed the defendants to file
affidavit in reply and directed the plaintiff to file rejoinder to the said affidavit in
reply. The defendants thereafter filed affidavit in reply on 4th March, 2016 raising
various issues, including the issue of jurisdiction. On 18th March, 2016, this Court
recorded the statement of the defendants through their learned counsel that since the
time the plaintiff noticed, the defendants had not used the expression or name in
question viz. "Black Ticket Films". This Court accepted the statement as an
undertaking to the Court and continued the same till the next date of hearing.
1 2 . The defendants thereafter filed Notice of Motion (Lodging) No. 1181 of 2016
inter-alia praying for revocation of the leave granted by this Court under clause XII of
the Letters Patent. By an order dated 6th October, 2016, passed by this Court in the
said notice of motion (numbered as Notice of Motion No. 1205 of 2016), this Court
framed two preliminary issues under section 9-A of the Code of Civil Procedure,
1908. This Court recorded that the plaintiff had invoked the jurisdiction of this Court
on the basis that they apprehended that the defendants would use the infringing mark
to release the motion picture under the banner with infringing mark in Mumbai. This

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 Court recorded that the motion picture has indeed being released through under the
different banner/mark. This Court accordingly granted an opportunity to the plaintiff
to lead evidence on the limited preliminary issues.
13. Pursuant to the liberty granted by this Court, one of the partner of the plaintiff
Ms. Rintu R. Thomas was examined as a witness, who filed her affidavit in lieu of
examination dated 15th October, 2016 along with compilation of documents
comprising of 9 documents. This Court marked those nine documents in evidence as
Exhibit P-1 to P-9 respectively making it clear that those documents were not
necessarily to be led in evidence at the trial of the suit unless otherwise specifically
ordered. The said witness was cross-examined by the defendants through their
learned counsel. The defendants through their learned counsel made a statement
before this Court that the defendants did not wish to lead evidence in the matter on
28th February, 2017.
1 4 . Mr. Arsiwala, learned counsel for the plaintiff invited my attention to various
averments made in the plaint, annexures thereto, the defence including the issue of
jurisdiction raised by the defendants and various orders passed by this Court from
time to time. He submits that the defendants had been operating the website by using
the trade name of the plaintiff. The plaintiff apprehended that the defendants would
launch the product in Mumbai. The plaintiff accordingly filed Quia Timet action
against the defendants based on the apprehension of the plaintiff.
15. Learned counsel placed reliance on the judgment of the Delhi High Court in case
of Mars Incorporated v. Kumar Krishna Mukerjee & Ors. MANU/DE/1784/2002 and
more particularly paragraphs 14 to 19 and submits that since the plaintiff was under
the threat of infringement or passing off of its trademark "Black Ticket Films" from
the defendants, the plaintiff was entitled to file a suit for injunction and other reliefs
to restrain threat of infringement upon its trade mark even before the defendants
would factually commit infringement of the trade mark or of passing off of the
trademark of the plaintiff. He submits that under section 134 of the Trademarks Act,
1999, has no applicability to an action in passing off under the civil Law. Section 20
of the Code of Civil Procedure, 1908 would not attract to this Court being one of the
Chartered High Court which is governed by Letters Patent.
16. Learned counsel for the plaintiff placed reliance on the judgments of the Delhi
High Court in case of (i) M/s. Jawahar Engineering Co. & Ors. v. M/s. Javahar
Engineers Pvt. Ltd. MANU/DE/0412/1983 : AIR 1984 Del. 166 and in particular
paragraphs 10 and 11, (ii) Bristol Myers Squibb Company & Anr. v. V.C. Bhutada &
Ors. MANU/DE/3672/2013 and in particular paragraphs 15, 16, 20, 23, 28 and 31 to
33 in support of the submission that the Court has ample powers to grant injunction
even in case of threaten breach. He also relied upon the judgment of the Delhi High
Court in case of Teva Pharmaceutical Industries Ltd. & Ors. v. Natco Pharma Limited
MANU/DE/1373/2014 and in particular paragraphs 16 to 21 on the similar issue of
Delhi High Court in case of M/s. Allied Blenders & Distillers Pvt. Ltd. v. Prag Distillery
Pvt. Ltd. & Anr. MANU/DE/0498/2017 and in particular paragraph 13 and the
judgment of the Delhi High Court in case of Pfizer Products, Inc. v. Rajesh Chopra &
Ors. MANU/DE/0708/2006 and in particular paragraph 12 thereof.
17. It is submitted that the website of the defendants was within the jurisdiction of
this Court, the suit thus filed by the plaintiff is maintainable in this Court on that
ground also. Learned counsel for the plaintiff invited my attention to the deposition
made by the plaintiff in the affidavit in lieu of examination in chief dated 15th

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 October, 2016 and in particular paragraphs 3 to 8 and would submit that the plaintiff
has garnered the goodwill in the city of Mumbai due to commercial activities in
Mumbai. The plaintiff has been doing the business with the clients based in Mumbai
since May, 2009. The cinematographic products of the plaintiff has been screened and
showcased in Mumbai on several occasions since 2009.
18. It is submitted that the plaintiff has produced several invoices issued upon the
clients in Mumbai by the plaintiff to prove that the plaintiff has been doing the
business in Mumbai. The plaintiff also produced a certificate under section 65-B of
the Evidence Act, 1872 in support of the printouts of purchase orders received from
the clients by the plaintiff in Mumbai by email. He invited my attention to various
exhibits annexed to the affidavit in lieu of examination in chief which are already
marked exhibits by this Court, including Exhibit P-6 to P-8. He submits that the said
movie was ultimately released in Mumbai with a different name.
19. Learned counsel for the plaintiff invited my attention to the cross-examination of
the witness examined by the plaintiff and more particularly in reply to questions 11,
13 and 20. He submits that the deposition of the witness of the plaintiff that the
plaintiff has garnered the goodwill in Mumbai was not shattered in cross-
examination. He submits that the goodwill of the plaintiff was accordingly proved by
the witness examined by the plaintiff. The defendants also did not challenge the
purchase order and other documents produced by the witness of the plaintiff by
leading oral and documentary evidence. It is submitted by the learned counsel that at
the time of filing of the suit, the plaintiff had apprehended the infringement and
trademark of the plaintiff which apprehension was proved in view of the release of
the said film in Mumbai.
20. Learned counsel for the plaintiff invited my attention to paragraphs 11 and 12 of
the affidavit in lieu of examination in chief deposing on the common industry practice
to heavily market the productions using digital media such as the internet and social
media and also deposing categorically that the websites and web-pages such as those
which were created by the defendants were done with the express purpose of enticing
customers to either purchase tickets to watch the film in a theatre or to purchase a
digital version of the film. He submits that that was no cross-examination of the
witness on the said deposition and more particularly about the common practice of
the industry. He submits that no evidence has been admittedly led by the defendants.
21. It is submitted that though the plaintiff has an office in Delhi and the defendants
are having office in Tamil Nadu, since the plaintiff conducts business also in Mumbai
and has garnered the goodwill at Mumbai which is proved by the plaintiff by leading
oral and documentary evidence and the website of the defendant No. 1 was accessed
in Mumbai, the suit was within the purview of clause XII of the Letters Patent and
upon this Court granting leave under clause XII of the Letters Patent, this Court has
jurisdiction to entertain, try and dispose of the suit. He submits that the defendants
have not given any reasons as to why leave already granted under clause XII of the
Letters Patent in favour of the plaintiff should be revoked.
22. Mr. Mitra, learned counsel appearing for the defendants on the other hand invited
my attention to the cause title of the plaint and submits that admittedly the plaintiff
has its office at New Delhi. The defendants have their office at Chennai. The plaintiff
does not have any office in Mumbai. He invited my attention to paragraph 32 of the
plaint alleging that the defendants had been promoting their film "Meendum Oru
Kadhal Kathai" through internet, including within the jurisdiction of this Court and

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 further alleged that part of cause of action has arisen within its jurisdiction and
therefore, this Court will have jurisdiction to try this suit upon this Court granting
leave under Clause XII of the Letters Patent. He also invited my attention to
paragraphs 32-A to 32-E of the plaint and would submit that the plaintiff has
improved its case by amendment that the plaintiff has many clients within the
territorial jurisdiction of this Court and has been regularly conducting screening in
Mumbai of its films.
2 3 . It is also further alleged in the plaint that the uses of the trademark of the
plaintiff by the defendants is within the jurisdiction of this Court and that the website
of the defendants contains various links by which the prospective clients of the
plaintiff can be misled and enticed to enter into the commercial relationship with the
defendants. It is alleged by the plaintiff that the defendants have and/or are in
process of entering into the distributionship agreements for link broadcasting of their
film in Mumbai. He submits that the case of the plaintiff now is that the website of
the defendants can be accessed in Mumbai. He submits that the issues were framed
by this Court on the basis of such averments made in the plaint.
24. Learned counsel for the defendants invited my attention to paragraph 19 of the
affidavit in lieu of examination in chief filed by the witness of the plaintiff deposing
that the website of the defendants was accessible in Mumbai. He also placed reliance
on the answers given by the witness of the plaintiff in the cross-examination and in
particular to questions 8 and 24 to 27 and would submit that the said witness has
given the names of the three persons, who had alleged to have alerted to the
existence of the web-page of the defendants. The plaintiff however, did not examine
any of those persons named in question No. 8. The witness herself has not seen the
web-page of the defendants in Mumbai. He submits that the entire pleadings as well
as the evidence of the plaintiff was based on hearsay.
2 5 . It is submitted by the learned counsel for the defendants that the so called
apprehension of the plaintiff canvassed before this Court was not pleaded in the
application filed under clause XII of the Letters Patent. In support of this submission,
learned counsel invited my attention to paragraph 3 of the leave petition filed by the
plaintiff. He also invited my attention to paragraph 18 of the affidavit in lieu of
examination in chief of the plaintiff's witness alleging the apprehension for the first
time in affidavit of evidence. He submits that the plaintiff has tried to improve its
case in the affidavit of evidence.
2 6 . Learned counsel for the defendants submits that in reply to question 5, the
witness of the plaintiff has admitted that the office of the plaintiff is in New Delhi.
The plaintiff had taken printouts from the personal computer. The witness admitted
that the locations where the printouts were taken by the witness were different. The
invoices were printed in Delhi, whereas the other documents in Mumbai. The witness
clarified that the computer referred by her in evidence meant her laptop. He submits
that the alleged apprehension of the plaintiff has not been proved by the plaintiff.
27. It is submitted by the learned counsel for the defendants that though according
to the plaintiff it came to the knowledge of the plaintiff in the month of June, 2015 of
a web-page being hosted using the Facebook platform under the name of "Black
Ticket Films", the plaintiff admittedly filed the suit in the month of December, 2015
i.e. after expiry of six months. He submits that the defendants have already filed the
caveats before Madras and New Delhi High Courts and served a copy thereof upon the
plaintiff in the month of June, 2015 itself. He submits that the witness examined by

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 the plaintiff has admitted in reply to questions 11 to 15 that the caveats were served
upon the plaintiff in the month of June, 2015. He invited my attention to the email
dated 1st June, 2015 addressed by the plaintiff to the defendants and would submit
that there was no correspondence between the parties thereafter.
28. It is submitted by the learned counsel for the defendants that the defendants
have applied for registration of its trademark on 15th June, 2015 i.e. prior in point of
time of the application made by the plaintiff for registration of the trademark "Black
Ticket Films". He also invited my attention to the legal notice dated 2nd September,
2015 issued by the plaintiff and the reply given by the defendants on 18th
September, 2015 and 29th September, 2015. He submits that there was no
settlement possible between the parties. He also invited my attention to the reply of
the plaintiff given on 15th October, 2015. He submits that though the defendants had
filed caveats in the Courts at New Delhi and Madras, the plaintiff has filed this suit in
this Court with a view to snatch interim orders from this Court. The plaintiff has not
explained the delay of six months in filing this suit.
29. Learned counsel appearing for the defendants invited my attention to paragraph
8 of the plaint and the alleged event shown in clause-M and would submit that
though the alleged goodwill of the plaintiff was affected at Hyderabad and several
other places, the plaintiff has deliberately filed this suit at Mumbai. He submits that
though according to the plaintiff, it has also goodwill in South India, the suit is filed
in this Court. He submits that the case of the apprehension under Quia Timet action is
deliberately created by the plaintiff.
30. Insofar as the submission of the plaintiff in support of the uses of domain name
of the defendants is concerned, learned counsel for the defendants placed reliance on
the judgment of the Delhi High Court in case of Banyan Tree Holding (P) Limited v. A.
Murali Krishna Reddy & Anr., MANU/DE/3072/2009 : 2010 (42) PTC 361 (Del.) (DB)
and in particular paragraphs 7, 8, 38, 42, 43, 45, 57 and 58 and would submit that
the alleged transaction referred to and relied upon by the plaintiff is a trap
transaction. He submits that the onus is on the plaintiff to show that the plaintiff has
suffered damages in Mumbai due to the alleged apprehension of infringement of
trademark of the plaintiff. He submits that the plaintiff has not shown any damages
alleged to have been suffered in Mumbai in any pleading nor any proof is shown that
the damages are suffered by the plaintiff at Mumbai.
31. It is submitted by the learned counsel for the defendants that the website of the
defendants is a passive website and no hyper link is available in the website for
placing any orders on the said website. He invited my attention to page 175 of the
compilation of documents and would submit that ticket of the movie in the Cinema
Movietime Cubic Mall is not booked from the website of the defendants but has been
booked on "bookmyshow.com" who is professional ticket selling organization.
32. It is submitted by the learned counsel for the defendants that mere accessibility
of movie website of the defendants by the plaintiff in Mumbai will not confer the
jurisdiction of this Court. The damages, if any, suffered by the plaintiff would be only
at Delhi since the office of the plaintiff is located in Delhi. The plaintiff does not have
any office in Mumbai, which fact is admitted by the witness examined by the plaintiff
in her cross-examination.
33. It is submitted by the learned counsel for the defendants that since the plaintiff
has willfully filed the suit in Mumbai though this Court has no jurisdiction to

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 entertain, try and dispose of the suit, the plaint filed by the plaintiff deserves to be
dismissed and the plaint shall not be returned for filing in appropriate Court. He
submits that the forum shopping has been done by the plaintiff which can't be
permitted by this Court.
34. Mr. Arsiwala, learned counsel for the plaintiff in rejoinder invited my attention to
various averments made in the plaint and also to the prayer clauses A, B, C and F and
would submit that the plaintiff has not attempted to seek any injunction against the
defendants not to release the film. He submits that the plaintiff had applied for
registration of its trademark after July, 2015. The website of the defendants has been
operated in Mumbai. It was the apprehension of the plaintiff that the defendants
would sell the ticket in Mumbai. He submits that the amendment was allowed by this
Court on 11th January, 2016. Leave under clause XII of the Letters Patent is granted
on 15th January, 2016. In paragraphs 32-D and 32-E of the plaint, the plaintiff has
apprehended infringement of the trademark of the plaintiff which pleadings are more
than sufficient. In paragraph 32-E of the plaint, the plaintiff has also shown the
prejudice caused to the plaintiff in Mumbai. He also invited my attention to paragraph
1 of the plaint and would submit that even that paragraph would show that the action
of the plaintiff was as Quia Timet action. Learned counsel for the plaintiff placed
reliance once again on the judgments of the Delhi High Courts in M/s. Allied Blenders
& Distillers Pvt. Ltd. (supra) and also Teva Pharmaceutical Industries Ltd. (supra).
35. Insofar as the submission of the learned counsel for the defendants that there are
inconsistencies in the case of the plaintiff in the plaint before this Court is concerned,
it is submitted by the learned counsel for the plaintiff that the plaint has to be read as
a whole.
36. Insofar as the issue as to whether the website of the defendants is accessible in
Mumbai or not, learned counsel for the plaintiff invited my attention to paragraph 8
of the deposition of the witness of the plaintiff in the examination in chief and would
submit that neither there was any cross-examination on the said deposition of the
plaintiff by the defendants, nor any suggestion was put to the said witness that the
said deposition in paragraph 8 was false. He invited my attention to the deposition of
the witness in paragraph 6 of the affidavit in lieu of examination in chief in which the
witness has deposed as to when she was alerted to the existence of the web-page of
the defendants in Mumbai. He submits that there was no cross-examination of the
witness of the plaintiff on the said part of deposition of the plaintiff and thus the said
deposition of the plaintiff is deemed to have been admitted and proved. In support of
this submission, learned counsel for the plaintiff placed reliance on the judgment of
the Supreme Court in case of Sarwan Singh v. State of Punjab, MANU/SC/0868/2002
: 2003 CRI.L.J. 21 and in particular paragraph 8. He also placed reliance on the
judgment of this Court in case of Bhika Cullianji & Co. Bombay v. Avon Electric
Company, Bombay & Ors., MANU/MH/0571/1994 : 1995(1) Bom.C.R. 377 and in
particular paragraph 4 and would submit that since there was no cross-examination
of the witness on various parts of the deposition of the witness examined by the
plaintiff, it's amounts to an admission of those facts deposed by the witness of the
plaintiff and is proved.
37. Learned counsel for the plaintiff invited my attention to the cross-examination of
the plaintiff and more particularly in reply to questions 8, 23 to 27 and would submit
that the defendants did not put their case to the witness and on the contrary sought
further information from the witness in those questions. He submits that even if this
Court comes to the conclusion that any such suggestions were put to the witness of

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 the plaintiff, since the defendants has to prove their case independently by leading
evidence to the extent of their case put to the witness of the plaintiff and since no
evidence was led by the defendants, such deposition of the plaintiff has to be treated
as admitted and proved.
38. Insofar as the question as to whether the printout of the documents were taken
by the plaintiff in Mumbai or not, learned counsel for the plaintiff invited my attention
to the deposition of the witness of the plaintiff in paragraphs 7, and 9 to 11 of the
examination in chief and also to the cross-examination in reply to question No. 7. He
submits that the witness of the plaintiff has answered in the cross-examination that
the invoices were printed in Delhi, whereas the other documents in Mumbai from her
Laptop. He submits that there was no further cross-examination on the said issue and
thus it was proved that the printout was taken by the witness in Mumbai insofar as
some of the documents were concerned.
39. Insofar as the issue raised by the defendants that the plaintiff has deliberately
filed this suit in this Court with a view to snatch interim orders is concerned, it is
submitted by the learned counsel that since the plaintiff was likely to suffer damages
at Mumbai and the website of the defendants was accessible at Mumbai, substantial
part of cause of action had arisen at Mumbai and thus the plaintiff is entitled to file
the suit in this Court upon this Court granting leave under clause XII of the Letters
Patent, which is already granted. He submits that section 20 of the Code of Civil
Procedure, 1908 is not applicable to this Court. In support of this submission he
placed reliance on the judgment of the Supreme Court in case of Jindal Vijayanagar
Steel (JSW Steel Ltd.) v. Jindal Praxair Oxygen Co. Ltd., MANU/SC/3765/2006 :
(2006) 11 SCC 521.
40. Learned counsel placed reliance on the judgment of this Court in case of Air
India Limited v. Caribjetinc, MANU/MH/1438/2004 : (2004) 4 Bom.C.R. 53 and in
particular paragraphs 4, 6, 16 and 18 in support of the submission that the Court has
to read the averments made in the plaint as a whole and not any particular paragraph
thereof to decide the issue of jurisdiction. He submits that it is not in dispute that
ultimately the said movie was released in Mumbai. He submits that though the
plaintiff could have filed the suit in different Courts and also at Mumbai, it is a choice
of the plaintiff to file the suit in this Court in view of the fact that substantial part of
cause of action had arisen in Mumbai after obtaining leave from this Court under
clause XII of the Letters Patent.
4 1 . Insofar as the submission of the learned counsel for the defendants that the
plaintiff has not shown any proof that the plaintiff has garnered goodwill in Mumbai
is concerned, learned counsel for the plaintiff invited my attention to paragraph 3 of
the affidavit in lieu of examination in chief of the witness of the plaintiff and would
submit that it was clearly deposed by the said witness that the goodwill was garnered
in Mumbai by the plaintiff. He submits that the said witness has also produced
various invoices issued at Mumbai. The purchase orders were raised upon the plaintiff
at Mumbai. He submits that there was no further cross-examination by the defendants
of the said witness and more particularly on the deposition about goodwill after
question No. 13. The suggestion put to the witness in question No. 14 was denied by
the said witness. He submits that the onus was thus shifted upon the defendants
which the defendants failed to discharge by leading any evidence before this Court.
4 2 . Insofar as the issue of delay raised by the defendants is concerned, it is
submitted by the learned counsel for the plaintiff that for the purpose of issue of

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 jurisdiction, the plaintiff is not required to explain any delay at this stage and the
same can be explained by the plaintiff at the stage of pressing the reliefs in the notice
of motion. He submits that the defendants have not raised any plea of limitation in
the pleadings filed by the defendants.
43. Learned counsel for the plaintiff invited my attention to the answer given by the
witness of the plaintiff to question 20 in affirmative when he was asked whether the
plaintiff was involved in making and marketing Tamil film in India. He submits that
there was no further question asked to the said witness contrary to the said
deposition nor any suggestion was put to the said witness.
44. It is submitted by the learned counsel for the plaintiff that in paragraph 32-E of
the plaint and in paragraph 6 of the affidavit in lieu of examination in chief, the
plaintiff had made the averments and had deposed respectively that the damages
were likely to be suffered by the plaintiff in Mumbai. He submits that there was no
cross-examination on the said deposition of the witness of the plaintiff.
45. Learned counsel for the plaintiff distinguished the judgment of the Delhi High
Court Banyan Tree Holding (P) Ltd. (supra) relied upon by the defendants on the
ground that in the said judgment the Delhi High Court has dealt with section 20 of
the Code of Civil Procedure, 1908 which is not applicable to this Court. He submits
that the Delhi High Court had considered a commercial transaction in paragraph 42 of
the said judgment and did not consider the case of Quia Timet action invoked by the
plaintiff in this case. He submits that in that case the movie was not released.
4 6 . Learned counsel for the plaintiff invited my attention to paragraph 11 of the
affidavit in lieu of examination in chief deposing common practice to heavily market
the productions using digital media such as the internet and social media and
deposing that websites and web-pages created by the defendants are done with the
express purpose of enticing customers to either purchase tickets to watch the film in
a theatre or to purchase a digital version of the film. He submits that there was no
cross-examination on this part of the deposition of the witness of the plaintiff. He
submits that the plaintiff has thus proved the facts on all issues touching the issue of
jurisdiction and thus this Court has jurisdiction to entertain, try and dispose of this
suit.
47. It is submitted by the learned counsel for the plaintiff that the plaintiff has not
produced the ticket in the plaint to show trap transaction but has produced the said
ticket to show that the suit movie was ultimately released in Mumbai.
REASONS AND CONCLUSIONS :
48. I shall first decide the issue whether the material part of the cause of action in
the suit had arisen within the territorial jurisdiction of this Court and if so, leave
under clause XII of the Letters Patent was rightly granted by this Court to the plaintiff
to file the suit in this Court.
49. There is no dispute that in the cause title of the plaint, the address of the plaintiff
is shown as G-39A, 1st Floor, East of Kailash, New Delhi - 110 065. The address of
both the defendants are of Chennai, Tamil Nadu - 600 011. A perusal of the plaint
indicates that it is the case of the plaintiff in the plaint that the plaintiff had
undertaken several projects summarized in paragraph 5 of the plaint. The plaintiff has
also summarized the total revenue generated out of various projects undertaken by
the plaintiff during the financial years between 2009-10 and 2015-16 as on 15th

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 December, 2015. It is the case of the plaintiff that the plaintiff and its partners have
showcased their productions at various national and international events summarized
in paragraph 8 of the plaint, including in various parts of India.
50. The plaintiff has filed this suit on the premise that in the month of June, 2015,
the plaintiff came to learn of the web-page being hosted using the Facebook platform
under the name of "Black Ticket Films". The said page did not give any details of the
person behind it, except an email ID blackticketfilm@gmail.com. The plaintiff
thereafter sent an email letter to the said email ID informing that they had been using
the trade name and brand "Black Ticket Films" since the year 2009 and that the
persons attached to the said web-page were guilty of passing off of their brand name
and goodwill. There was no response to the said email. It is the case of the plaintiff
that during public search, it came across another application for registration of their
trade mark "Black Ticket Films" by the defendant No. 2.
5 1 . The plaintiff thereafter sent a legal notice on 2nd September, 2015 to the
defendant No. 2 setting out its alleged rights over the trademark "Black Ticket Films".
The defendant No. 2 replied to the said legal notice on 18th September, 2015 and
29th September, 2015 alleging that it had adopted the trademark "Black Ticket Films"
on 29th June, 2014. It is the case of the plaintiff that from a bare perusal of the web-
page being operated by the defendants, it is clear that they are passing off the
trademark of the plaintiff and have not utilized the plaintiff's trademarks for any
purpose other than the production of Tamil in cinematograph "Meendum Oru Kadhal
Kathai".
52. It is the case of the plaintiff that the plaintiff has garnered goodwill over the
course of this business. The plaintiff was granted liberty to amend the plaint.
Paragraphs 32-A to 32-E are added to the plaint pursuant to the said liberty granted
by this Court. It is the case of the plaintiff that the defendants were promoting their
film "Meendum Oru Kadhal Kathai" through various digital platforms that can be
accessed within the territory of this Court causing prejudices to the rights of the
plaintiff directly which is the prior adopter of the trade name "Black Ticket Films". It
is averred in the plaint that by promoting their film in the manner through their
website the defendants are attempting to entice the persons situated within the
jurisdiction of this Court to enter into a commercial transaction with them by way of
watching their film.
53. It is averred that the targeting customers in the metropolitan cities like Mumbai
is very important for any film production agency. Mumbai is more important as a
large part of the film industry is based out of it. It is averred that the defendants have
or are in the process of entering into distribution agreements etc., for the public
broadcast of their films in Mumbai. The plaintiff prayed for a decree of permanent
injunction against the defendants from passing off of their trade name "Black Ticket
Films" in any manner or using it in any way in the course of their trade. The plaintiff
has also prayed for a decree in the sum of Rs. 50,000/- as damages and has also
prayed for an order and direction against the defendant No. 1 for transfer to the
plaintiff's domain name "www.blackticketfilms.in".
5 4 . The defendants have filed the written statement in this suit raising various
issues, including the issue of jurisdiction. The plaintiff had applied for leave under
clause XII of the Letters Patent by filing Leave Petition (Lodging) No. 295 of 2015. By
an order dated 15th January, 2016, this Court granted the leave in favour of the
plaintiff under clause XII of the Letters Patent.

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 55. This Court framed two issues on 6th October, 2016 under section 9-A of the
Code of Civil Procedure, 1908 described in paragraph 1 of the aforesaid judgment.
56. The plaintiff examined Ms. Rintu R. Thomas as a witness, who filed her affidavit
in lieu of examination in chief on 15th October, 2016. In paragraph 3 of the affidavit,
the witness has deposed that the plaintiff firm which was registered on 6th May, 2009
has been doing business with the clients based in Mumbai since that time. The
witness has deposed that being a partner of the plaintiff's firm, she was personally
aware of this and deeply involved in the business activities of the plaintiff. She
deposed that cinematographic production of the plaintiff had been screened and
showcased in Mumbai on numerous occasions since 2009. The witness has given the
details of such screening in paragraph 4 of the affidavit. The witness also produced
the office copies of the invoices raised upon the clients by the plaintiff in Mumbai to
show that the plaintiff has been doing the business in Mumbai. The witness deposed
that the office copies were maintained in the ordinary course of business. The witness
had accessed to them and is personally aware of their contents.
57. It is further deposed that the purchase orders were maintained in the ordinary
course of business. The witness also produced a certificate under section 65-B of the
Evidence Act, 1872 in respect of the printouts taken by her from her personal
computer. The said witness further deposed that she had learnt of the web-page
being hosted on the Facebook platform claiming to be of "Black Ticket Films" which
was promoting cinematograph by name "Meendum Oru Kadhal Kathai" in Mumbai.
The said witness was alerted to the existence of the said web-page by her colleagues
and clients, who initially believed the said web-page belonged to the plaintiff in
Mumbai. Some of the persons who alerted her to the existence of the said web-page
were from Mumbai. The witness deposed that she had also personally accessed the
said web-page in Mumbai on one of her trips there and confirmed that the said web-
page was accessible in Mumbai.
58. The said witness deposed that she was personally aware of the contents of the
said web-page having seen by herself and confirmed that it claimed to be operated by
"Black Ticket Films" and was promoting a cinematograph by name "Meendum Oru
Kadhal Kathai". The witness has deposed that she personally took screen shots of it
during the time the web-page was accessible in Mumbai and stored the same on her
computer. The witness produced the printouts of the screen shots taken by her of the
said web-page. The witness of the plaintiff also deposed that the defendants were
running the website located at "http://www.blackticketfilms.in" which was registered
by the defendant No. 1 and was promoting cinematograph by name "Meendum Oru
Kadhal Kathai".
59. In paragraph 11 of the affidavit, the witness has deposed that she being involved
in the business of film production, she was aware that it was common practice to
heavily market the productions using digital media such as the internet and social
media. It is common industry practice for a producer to create websites for the
express purpose of using them to market their productions and entice persons to
watch their films either by purchasing a ticket or by purchasing a digital copy of the
film. It is specifically deposed that the websites and web-pages such as those which
were created by the defendants are done so with an express purpose of enticing
customers to either purchase tickets to watch the film in a theatre or to purchase a
digital version of the film. In paragraph 12 of the affidavit, it is deposed by the
witness that in view of the website and web-page created by the defendants, she
apprehended that the said cinematograph "Meendum Oru Kadhal Kathai" was already

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 publicly released in the city of Mumbai, claimed to be produced by "Black Ticket
Films".
60. On 18th March, 2016, when the Notice of Motion No. 311 of 2016 was taken up
for hearing, the defendants through its counsel made a statement before this Court
that they have not used the trademark "Black Ticket Films" since they received the
notice dated 2nd September, 2015 from the plaintiff. The defendants also gave an
undertaking not to use the said trademark till the hearing and final disposal of the
said Notice of Motion No. 311 of 2016.
61. The witness has further deposed in paragraph 14 that the defendants released
cinematograph "Meendum Oru Kadhal Kathai" in Mumbai and other parts of the
country on 26th August, 2016 under a different banner i.e. different production
house. It is deposed that the witness personally checked theatre listings in Mumbai
and can confirm that the said cinematograph "Meendum Oru Kadhal Kathai" was
widely distributed in the city of Mumbai. It was screened in Mumbai on 1st
September, 2016 at (i) Movietime Cubic Mall, Chembur, and (ii) PVR Nirmal Lifestyle,
Mulund.
62. The witness has deposed that by using online platform "bookmyshow.com" she
purchased the ticket for the said cinematograph "Meendum Oru Kadhal Kathai" for
screening on 1st September, 2016. The witness has produced the printout of the SMS
received by her confirming of purchase of ticket for screening of "Meendum Oru
Kadhal Kathai" on 1st September, 2016.
63. In paragraph 18 of the affidavit, the witness has deposed that not only did the
plaintiff have an apprehension that the defendants were about to release
cinematograph within the jurisdiction of this Court, the said apprehension was proved
to be correct. It is further deposed by the witness that the apprehension of the
plaintiff that the defendants were about to pass off their film as that of the plaintiff in
the city of Mumbai was proved and correct.
64. In paragraph 19 of the affidavit, the witness has deposed that since the website
and the web-page was operated by the defendants claiming to belonging to "Black
Ticket Films" were accessible in Mumbai and were enticing potential customers in
Mumbai to watch their film, this Court has jurisdiction to entertain, try and hear the
present suit.
6 5 . On 19th October, 2016, this Court marked nine documents produced by the
plaintiff as Exhibits P-1 to P-9 respectively and made it clear that the hearing was for
limited purpose of preliminary issue and those documents were not necessarily to be
led in evidence at the trial of the suit unless otherwise specifically ordered.
66. The witness examined by the plaintiff was cross-examined by the learned counsel
for the defendants. Learned counsel for the plaintiff invited my attention to various
portions of the cross-examination of the witness examined by the plaintiff. Insofar as
the issue of jurisdiction raised by the defendants is concerned, a perusal of the
answers given by the witness to questions 8 to 13, 20 and 21 indicates that there was
no cross-examination on the deposition of the witness examined by the plaintiff on
the aspect of as to when the witness of the plaintiff had accessed to the website of
the defendants at Mumbai. The plaintiff had garnered the goodwill in the city of
Mumbai due to the commercial activities in India and has been doing the business
with the clients based in Mumbai since 2009. Various cinematograph products of the
plaintiff had been screened and showcased in Mumbai on several occasions since

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 2009. The documents including the invoices produced by the plaintiff which were
issued in Mumbai were not disputed or challenged by the defendants in the cross-
examination. The defendants also did not dispute the certificate under section 65-B of
the Evidence Act, 1872 in support of the printouts of the purchase orders received
from the clients by the plaintiff in Mumbai by email produced by the plaintiff on
record which were marked as Exhibits P-6 to P-8.
67. Insofar as the issue as to whether the plaintiff had garnered any goodwill in
Mumbai or not is concerned, a perusal of paragraph 3 of the affidavit in lieu of
examination in chief of the witness examined by the plaintiff clearly indicates that it
was deposed by her that the goodwill was garnered in Mumbai by the plaintiff. A
perusal of the entire cross-examination indicates that there was no cross-examination
on the said deposition of the said witness by the defendants. On the contrary in reply
to question 13, when the witness was asked that if the plaintiff was based in Delhi
and the defendants were in Chennai, why was the suit filed in Mumbai, the witness
deposed that because the plaintiff has a goodwill in Mumbai and they were releasing
a feature film in Mumbai as the Mumbai is one of the key market in feature films, the
suit was filed by the plaintiff in Mumbai. The plaintiff has thus proved that it has
garnered goodwill in Mumbai.
6 8 . Insofar as the submission of the learned counsel for the defendants that
admittedly the plaintiff does not have office in Mumbai and the defendants have office
in Chennai and since the plaintiff is involved in making and marketing Tamil film in
several parts of India, the suit could not have been filed in Mumbai by the plaintiff is
concerned, a perusal of the answers given by the witness of the plaintiff to questions
5, 6, 8, 13, 19, 20 and 24 to 27 and the question asked in re-examination to the said
witness by inviting her attention to pages 8 to 11 of Exhibit P-1, the witness
confirmed that the purchase orders were from Fulford (India) Limited, Mumbai.
Learned counsel for the defendants could not dispute that the web-page of the
defendants was accessible at Mumbai. In my view, there is thus no substance in the
submission made by the leaned counsel for the defendants that no part of cause of
action had arisen at Mumbai and thus on that ground the leave granted by this Court
under clause XII of the Letters Patent shall be revoked by this Court.
69. The witness examined by the plaintiff had specifically deposed in the examination
in chief on the aspect that she had personally accessed the web-page of the
defendants in Mumbai in paragraphs 6, 8, 12, 14 and 19. There was no cross-
examination of this witness on the said deposition and the same remained
uncontroverted and is thus deemed to have been proved.
7 0 . A perusal of the cross-examination of the witness examined by the plaintiff
indicates that though the learned counsel for the defendants had put various
suggestions to the said witness, the defendants admittedly did not enter the witness
box to prove the case of the defendants.
71. Insofar as the submission of the learned counsel for the defendants that though
the witness of the plaintiff had given the names of three persons in reply to questions
8 and 24 to 27 who had alleged to have altered the witness about the existence of the
web-page of the defendants in Mumbai, the plaintiff had not examined any of those
persons is concerned, a perusal of the deposition of the said witness indicates that it
was her deposition that she had herself accessed to the said web-page in Mumbai and
had deposed based on the personal knowledge and not on hearsay. There was no
cross-examination of the witness on this deposition. Examination of other witnesses

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 at this stage was thus not warranted.
72. The Supreme Court in case of Sarwan Singh (supra) and this Court in case of
Bhika Cullianji & Co. Bombay (supra) has held that if there was no cross-examination
of the witness on any part of the deposition of the witness examined by the plaintiff,
it amounts to admission of those facts deposed by the witness and the other party. In
my view, since there was no cross-examination of the witness examined by the
plaintiff on various parts of examination in chief and more particularly on the aspect
of substantial part of cause of action having arisen within the jurisdiction of this
Court, website and web-page of the defendants was accessed in Mumbai, the plaintiff
has garnered goodwill in Mumbai and is carrying on business in Mumbai, and in view
of the fact that though few suggestions were put to the witness but no independent
evidence was led by the defendants to prove the case of the defendants before this
Court, the evidence of the plaintiff has to be treated as admitted and proved. The
principles laid down by the Supreme Court in Sarwan Singh (supra) and by this Court
in case of Bhika Cullianji & Co. Bombay (supra) applies to the facts of this case. I am
respectfully bound by the same.
73. Insofar as the issue raised by the defendants of so called apprehension of the
plaintiff canvassed before this Court was not pleaded in the application filed under
clause XII of the Letters Patent is concerned, in my view the averments made in the
application under clause XII of the Letters Patent have to be read with the averments
made in the plaint. A perusal of the plaint clearly indicates that the action of the
plaintiff in filing this suit as Quia Timet action was to prevent the anticipated action
on the part of the defendants which would have caused damages to the plaintiff
financially as well as could have affected the goodwill and reputation of the plaintiff
in Mumbai. This Court in case of Air India Limited (supra) has held that the Court has
to read the averments made in the plaint as a whole and not any particular paragraph
thereof to decide the issue of jurisdiction. The defendants does not dispute that
ultimately the said movie "Meendum Oru Kadhal Kathai" was released in Mumbai
though through different manner. In my view the jurisdiction of the Court has to be
decided on the basis of averments made in the plaint and not on the basis of the
averments made in the affidavit in reply or the written statement.
74. Insofar as the submission of the learned counsel for the defendants that since the
plaintiff was alleged to have been carrying on projects all over India, the plaintiff
could have filed the suit in any other Court outside Mumbai where the plaintiff was
alleged to have been affected or aggrieved is concerned, in my view since the
plaintiff was likely to be affected in Mumbai financially as well as in respect of the
goodwill and since substantial part of cause of action has arisen in Mumbai, it was
the choice of the plaintiff to file the suit in Mumbai as well as in other Courts also
wherever cause of action has arisen. The submission of the learned counsel for the
defendants is without any merit.
75. Insofar as the judgment of the Delhi High Court in case of Banyan Tree Holding
(P) Limited (supra) relied upon by the defendants is concerned, a perusal of the said
judgment indicates that in the said judgment, the Delhi High Court had dealt with
section 20 of the Code of Civil Procedure, 1908 which is not admittedly applicable to
this Court being a Chartered High Court. In the said judgment, the Delhi High Court
had conceded a commercial transaction and had not considered the case of Quia
Timet action which has been invoked by this Court in this case. In that matter, the
movie was not even released. In my view, the judgment of the Delhi High Court in
case of Banyan Tree Holding (P) Limited (supra) is thus clearly distinguishable in the

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 facts of this case and would not assist the case of the defendants.
7 6 . A perusal of the record indicates that though in the affidavit in lieu of
examination in chief, the witness of the plaintiff has deposed that the damages were
likely to be suffered by the plaintiff in Mumbai, there was no cross-examination on
the said deposition of the witness of the plaintiff by the defendants. There was no
further questions asked to the said witness though the said witness had answered
question 20 in the affirmative as to whether the plaintiff was involved in making and
marketing Tamil film in India nor any suggestion was put to the said witness. There
was also no cross-examination of the witness to the deposition made by the said
witness in paragraph 11 of the affidavit deposing about the common industry practice
which offered digital version of the production for purchase online, which is usually
available throughout India.
77. Learned counsel for the plaintiff in his rejoinder has clarified that the plaintiff
had not purchased the ticket annexed to the plaint to show trap transaction as
canvassed by the defendants but had produced such ticket to show that the said
movie was ultimately released in Mumbai.
78. The Supreme Court in the case of Kuldip Singh v. Subhash Chander Jain & Ors.,
MANU/SC/0206/2000 : (2000) 4 SCC 50 has quoted the judgment of the Chancery
Division in the case of Fletcher v. Bealey, (1885) 28 Ch D 688 with approval and also
Kerr on Injunctions with approval and was held that a Quia Timet action is a bill in
equity which action is a preventive in nature and a specie of precautionary justice
intended to prevent apprehended wrong or anticipated mischief and not to undo a
wrong or mischief when it has already been done. In such an action the Court, if
convinced, may interfere by appointment of receiver or by directing security to be
furnished or by issuing an injunction or any other remedial process.
79. The Chancery Division in the said judgment in the case of Fletcher v. Bealey
(supra) has explained the law as to actions Quia Timet and has held that there are at
least two necessary ingredients for a Quia Timet action. There must, if no actual
damage is proved, be proof of imminent danger, and there must also be proof that
the apprehended damage will, if it comes, be very substantial. It is held that it must
be proved that it will be irreparable, because, if the danger is not proved to be so
imminent that no one can doubt that, if the remedy is delayed, the damage will be
suffered.
80. It is held that if the damage does occur at any time, it will come in such a way
and under such circumstances that it will be impossible for the plaintiff to protect
himself against it, if relief is denied to him in a Quia Timet action. The Supreme
Court held that a nuisance actually in existence stands on a different footing than a
possibility of nuisance or a future nuisance. An actually existing nuisance is capable
of being assessed in terms of its quantum and the relief which will protect or
compensate the plaintiff consistently with the injury caused to his rights is also
capable of being formulated. In case of a future nuisance, a mere possibility of injury
will not provide the plaintiff with a cause of action unless the threat be so certain or
imminent that an injury actionable in law will arise unless prevented by an injunction.
The Court may not require proof of absolute certainty or a proof beyond reasonable
doubt before it may interfere; but a strong case of probability that the apprehended
mischief will in fact arise must be shown by the plaintiff.
81. In my view, the principles of law laid down by the Supreme Court in the case of

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 Kuldip Singh v. Subhash Chander Jain & Ors. (supra) referred to aforesaid makes it
clear as to when the Quia Timet action is permissible and the plaintiff is not required
to wait till the actual damage is actually caused or wrong is already done. I am
respectfully bound by the principles of law laid by the Supreme Court in the said
judgment.
82. The Delhi High Court has led down the following tests for injunctive relief in Quia
Timet action as under :
"28. The only tests for injunctive relief in Quia Timet Action are :- (i)
Whether it is likely to cause confusion or to deceive the purchasers as to
source or origin of the trade mark or the goods to be sold in future under the
said mark irrespective of the fact whether goods intended to be sold are
competitive goods or not; (ii) Whether the intention to use the infringed
trade mark is to trade or cash upon the reputation and goodwill of the
plaintiff earned over the years through extensive advertisement and huge
expenses; (iii) Whether there is likelihood of real or tangible damage or
injury to the plaintiff or reasonable probability if the same would take place.
In other words whether use of the trademark by the defendant is likely to be
associated with the plaintiff's trade mark or business; (iii) Whether the
hardship suffered by the plaintiff would be greater than that of the
defendants if injunction is not granted against the defendants. "
8 3 . The Delhi High Court in the said judgment considered that the plaintiff had
enjoyed the goodwill internationally and had acquired high reputation and enviable
goodwill in India which has developed painstakingly over the years through extensive
advertisements and quality of its goods. It is held that adoption of the trade mark
MARS by the defendants shows the intention and designs to misrepresent the public
and create confusion that they are associated with the plaintiff or have been
authorized by the plaintiff to use its mark. It is held that the apprehension of real and
tangible possibility that the defendants may start manufacturing in the good sector is
neither imaginary nor misplaced. It is accordingly held that all these factors lead to
the most ineluctable conclusion that injunction by Quia Timet Action is not only
appropriate but essential also as misconception of the defendants. The Delhi High
Court accordingly granted injunction against the defendants in the said Quia Timet
action initiated by the plaintiff. It is however made clear that this Court has not
expressed any views on the issue as to whether the plaintiff has made out any case
for grant of injunction or not and the same would be considered by the Court in the
notice of motion filed by the plaintiff.
84. Similar view which is taken by the Delhi High Court in case of Mars Incorporated
(supra) has been taken by the Delhi High Court in M/s. Jawahar Engineering Co. &
Ors. (supra), in case of Bristol Myers Squibb Company & Anr. (supra), in case of
Teva Pharmaceutical Industries Ltd. & Ors. (supra), in case of M/s. Allied Blenders &
Distillers Pvt. Ltd. (supra) and in case of Pfizer Products, Inc. (supra). It is clear that
such Quia Timet action is maintainable if the test led down in the Supreme Court and
Delhi High Court is satisfied. I am in respectful agreement with the principles led
down by the Delhi High Court in aforesaid judgments. The issue on merits whether
the plaintiff has made out the case for injunction or not can be considered by this
Court at the hearing of the notice of motion.
85. In my view, the defendants have though raised an issue of jurisdiction and has
disputed various averments made by the plaintiff on the issue of jurisdiction, the

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 defendants have not chosen to lead evidence on the issue of jurisdiction. On
consideration of the documentary as well as oral evidence led by the plaintiff, in my
view, the plaintiff has proved beyond reasonable doubt that substantial part of cause
of action in this action for Quia Timet has arisen within the territorial jurisdiction of
this Court based on the apprehension of the plaintiff and thus in the facts and
circumstances of this case, this Court had rightly granted leave under clause XII of
the Letters Patent on the application filed the plaintiff. This Court has thus jurisdiction
to entertain, try and dispose of the suit upon this Court having granted leave in
favour of the plaintiff. No case is made out by the defendants for revocation of the
leave and for dismissal of the suit or for return of the plaint to appropriate Court. In
my view since this Court has jurisdiction to entertain, try and dispose of the suit, the
question of revocation of leave or for dismissal of the suit or for return of the plaint
to appropriate Court does not arise.
86. Issue No. 1 framed by this Court is accordingly answered in negative. Insofar as
issue No. 2 is concerned, in my view, in view of the answer to issue No. 1 in the
negative, the question of revocation of leave does not arise and the said question is
answered accordingly.
87. The office is directed to place Notice of Motion No. 1205 of 2016 for hearing and
final disposal after two weeks.
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