India: Pfizer’s TM Suit Not Entertained: Lack Of Territorial Jurisdiction.

Last Updated: 10 March 2009

Jurisdiction being the most vital consideration while instituting a suit, the Lack of Jurisdiction is one of the first and vital contentions raised, as a ground for suits to be dismissed. The present matter of Pfizer Enterprises v. Dr. H.R. Manchanda 2009 (39) PTC 114 (Del.) dismissed Pfizer's plea with respect to the Delhi High Court's jurisdiction over the matter owing to lack of territorial jurisdiction. The suit deals with the infringement of a trademark as well as with passing off offence being committed by Dr. H.R. Manchanda, who averred the lack of jurisdiction in the present Court. Rendition of accounts and delivery up of goods was also prayed for by Pfizer.

Pfizer, a company organized under the laws of Luxembourg has its subsidiary, also party to the suit located in India since 1950. In addition to the large number of products available in the Indian market, 'Dalacin', a highly sought after antibiotic treats infections in different parts of the body caused by bacteria, which is the essential component of 'Dalacin C' and 'Dalacin T' is also marketed. It was stated that 'Dalacin C' was first adopted by the Upjohn Company in 1968 in India; (whose name was later changed to Pharmacia and Upjohn Company in 1996) and the mark later assigned to Pharmacia Enterprises SA in 2002, was subsequently renamed Pfizer Enterprises SARL, the first plaintiff.

The mark was averred to be fanciful and coined word with no denotative meaning being distinctive in nature. By virtue of priority in adoption, continuous and extensive use, and widespread advertisement, Pfizer was said to be the proprietor of the marks. However, both 'Dalacin C' and 'Dalacin T' are registered in India, Pfizer' subsidiary being the authorized user of the same. They aver that due to the extensive use and the reputation of Pfizer, the marks are exclusively identified with them.

'Clindamycin' the active ingredient in Dalacin is also manufactured by Pfizer's Indian subsidiary. Pfizer stated that they were shocked when they discovered from the website of the Defendants that they offered pharmaceutical compositions Clindamycin hydrochloride and Clindamycin phosphate under the mark 'Dalcinex', in capsule as well as injections form, just as Pfizer did. Pfizer alleged that use of the mark Dalcinex amounted to infringement and their attempt to dishonestly appropriate the goodwill amounted to passing off. The marks being phonetically and visually similar and put to use in relation to an identical product and therefore, would cause confusion in the minds of the public

Pfizer on the question of jurisdiction submitted that by virtue of Section 134(1) of the Trade Marks Act, 1999 Pfizer' and Dr. Manchanda' products being available for sale in Delhi. Dr. Manchanda and his co-parties however averred that none of the plaintiffs were registered proprietors of the trademarks within the meaning of section 2(i)(v) of the Act and hence no suit for infringement was maintainable. They also alleged the assignment deeds to be invalid and unreliable and that the registration of the mark Dalcinex which is pending since their year of manufacture 2004.

On the question of jurisdiction, Dr. Manchanda' counsel contended that the suit was not maintainable in this Court, since both the parties carried on business outside the jurisdiction of the Delhi High Court. It was further stated that no documentary evidence to support the availability of the product within the jurisdiction of this Court had been submitted. He also drew the attention of this Court to the fact that Pfizer had not averred or produced any document as to how Dr. Manchanda' product including the packaging has been procured in Delhi. It was submitted that the suit ought to be filed either in the place where the defendant resides and carries on business or the place at which the cause of action arises.

As regards the invalidity of the assignment deed, the same was said to be insufficiently stamped and invalid under section 45 of the 1999 Act. It was also submitted that copies of the certificates of renewal of trademark from the year 1982 did not bear the name of the proprietor on them. Pfizer was also stated to have insufficiently established the ingredients for an action of passing off. The Counsel also submitted that the mark had been coined using the alphabets of the generic salt, or ingredient and that no exclusive right could be asserted.

The Counsel contended that the sale of Dr. Manchanda' goods is something that cannot be denied. And that it was inconceivable that no business took place within the jurisdiction of this Court. The counsel for Pfizer relied upon the documents filed and submitted that the defendants are marketing their products and advertising through the Internet. It was submitted that the website can be accessed from Delhi and thus, this Court possesses jurisdiction. The Court stated that they needed to go through the contents of the plaint to decide whether the suit discloses a triable cause of action, and whether this court had jurisdiction or not.

The Court took into consideration Section 20 of the Code of Civil Procedure, 1908, Section 62(2) of the Copyright Act, 1957 and section 134 of the Trade Marks Act, 1999, for the adjudication of trademark disputes. They noted that the plaint showed that both the Indian Subsidiary of Pfizer and co-defendant had r offices in Mumbai and undeniably carry on their business in Mumbai too. However the plaint did not disclose either of them having their office in Delhi.

The Court noted that Pfizer was far from establishing neither that the defendants carried out the essential parts of their business from Delhi nor that their goods were in fact sold in Delhi. And that the allegation, therefore, that Pfizer has become aware of the infringing activities of the defendant, within territorial jurisdiction of this court, or that any cause of action arose within jurisdiction, are not even prima facie substantiated. Further, the Court stated that there is no purposeful direction of the web activities to the concerned geographical locale, in this case Delhi, to prima facie establish this Court's jurisdiction. The plaint was returned on account of clear lack of territorial jurisdiction.

© Lex Orbis 2009

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