PARKER HANNIFIN FRANCE SAS Vs. MAN MOHAN TALWAR

JUDGEMENT

(1.) The appellant brought Civil Suit No. 3 of 18th June, 2013 which is pending and is being tried by the learned Additional District Judge, Gurgaon. The suit is for permanent injunction for infringement of trademark and to enforce the protections of Sections 27(2), 28, 29 read with Sections 134 and 135 of the Trade Marks Act, 1999 (for short "the Act"). The secondary relief is for rendition of accounts against the defendants. The appellant as plaintiff sought grant of an interim injunction against the defendant-respondents invoking order 39 Rule 1-2 CPC read with Section 151 CPC to restrain them ad interim from marketing and selling of products by the defendants under their brand name 'Legris' and 'Parker' of which they had Global trademarks. It is pleaded that the appellant company is incorporated under the laws of France with its registered office as given in the cause title. The company was founded in 1918 and over a long period of time achieved annual sales exceeding $ 13 billion as at in the year 2012. It claims to be the world's leading diversified manufacturers of motion and control technologies and systems providing precision engineered solutions for a wide variety of mobile industrial and aerospace markets. In the year 2008, the appellant company acquired the company know as 'Legris SAS\ Accordingly, the appellant acquired sole proprietorship and ownership of various intellectual property rights (I PR) including the trademark "LEGRIS". On December 31st, 2010, Legris SAS merged with the appellant. The merger documents have been placed on record and marked Annexure A-2 (colly). The appellant and Legris SAS stand unified. It is pleaded that the trademark "LEGRIS" was adopted and is being worldwide since 1963 when the merging company started its operations in France. The appellant company registered the trademark "LEGRIS" in a large number of countries across the world including India. The products offered in the markets under the brand name "LEGRIS" are sold/used in India extensively since 1984. Over the years, it has acquired in India, a tremendous goodwill and reputation. In order to cement its goodwill and reputation, it opened its first subsidiary in India under the name Legris India Holding (P) Limited and registered the company on September 05, 2000 with the Registrar of Companies. The appellant also registered a sister concern called Legris India Private Limited on February 20, 2001 with the Registrar of Companies.

(2.) It is pleaded that the appellant entered into an exclusive distributorship agreement with the first respondent/defendant for the territory of Faridabad, Haryana on April 26, 2003 to distribute the products of the appellant in India. On acquisition of Legris SAS in 2008, the distributorship agreement was terminated by the appellant in order to do their business directly with the consumers of its products. The appellant holding proprietorship of "LEGRIS" and "PARKER" trademarks discovered after termination of distributorship agreement with the first respondent that the respondent/defendant had registered the trademark "LEGRIS" with the Trade Marks Registry as it own. It was in May, 2012 that the proprietor of the respondents was found by the appellant to be committing infringement and trademark violations of the appellant's exclusive trademark "LEGRIS" and thus addressed a Cease and Desist letter to the first respondent on 9th May, 2012 putting them on notice to withdraw the trademark registration No. 1798503 in Class II; to cease and desist from using the trademark "LEGRIS" or any other identical or similar mark for any kind of products or services; and calling upon the respondents to give undertaking to the appellant acknowledging the appellant's ownership over the trademark "LEGRIS" and to agree to refrain from future unauthorized use or registration of the appellant's IPR in any manner, whatsoever. In response, the first respondent in his letter dated 15th May, 2012 admitted registration and use of mark but refused to refrain from selling the products under the mark "LEGRIS".

(3.) The appellant filed the rejoinder. Arguments were heard and the injunction was extended till 17th July, 2013, on which date, the remaining arguments on the stay application were heard and the orders were reserved on 23rd July, 2013 extending the ad-interim injunction till the next date of hearing. The matter was then adjourned to 26.7.2013 when the impugned order was passed vacating ad-interim injunction granted to the appellant and the application was rejected on the ground of lack of jurisdiction. The learned Additional District Judge in the impugned order has reasoned that "in the absence of any substantive proof regarding the branch office or actual business activities carried on by the plaintiff in Gurgaon, the allegations of the defendants that plaintiff neither works in Gurgaon nor personally works for gain, cannot be dismissed summarily."