TMI Blog2008 (5) TMI 614X X X X Extracts X X X X X X X X Extracts X X X X ..... S.B. Sinha and Lokeshwar Singh Panta, JJ. JUDGMENT Leave granted. 2. Appellant is a manufacturer of a product known as Dabur Red Tooth Powder or Dabur Lal Dant Manjan . In the year 1993, it had allegedly adopted a unique colour combination and arrangement of features which was subsequently changed in December 1999. 3. Respondent herein is also said to be manufacturer of a tooth powder known as Sujata . It is said to have infringed the copy right of the appellant. A suit was filed by the appellant against the respondent in the Delhi High Court. Paragraph 7 of the plaint reads thus : 7. In December 1999, the plaintiff adopted a new carton while retaining the conical shape and white cap for their product which is described here in below : On one column has the words RED TOOTH POWDER within a yellow blurb. Immediately below the blurb is an oval shaped picture of a family with a yellow background. Above these two features there is a legend within a blurb mentioning the fact that this is a new pack. The column immediately next to it contain the same features in the Devnagri script. A third column sets out the details including Composition, Weight, MRP and Ma ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ) contending that as the defendant is resident of Andhra Pradesh, the Delhi High Court had no jurisdiction. 7. By reason of the impugned judgment and order dated 22.5.2006, a learned Single Judge of the High Court accepted the said contention of the respondent. 8. An intra court appeal preferred thereagainst has been dismissed by a Division Bench of the said Court holding that the matter is covered by the decision of this Court in Dhodha House v. S.K. Maingi, [(2006) 9 SCC 41]. It was stated : The learned Single Judge has also held that so far as the aforesaid relief relating to passing off is concerned, Delhi court does not have any territorial jurisdiction as the respondent/defendant is from Andhra Pradesh and there is no documentary evidence to show that the respondent was selling goods in Delhi. We agree with the aforesaid findings and conclusions recorded by the learned Single Judge. Accordingly, we find no merit in the submissions of the counsel appearing for the appellant that the composite suit of infringement of copyright and passing off would lie in the same forum. We also do not find any error in the judgment of the learned Single Judge as in our considered opi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... it who may not otherwise be in a position to file a suit at different places where his copyright was violated. Parliament while enacting the Trade and Merchandise Marks Act in the year 1958 was aware of the provisions of the 1957 Act. It still did not choose to make a similar provision therein. Such an omission may be held to be a conscious action on the part of Parliament. The intention of Parliament in not providing for an additional forum in relation to the violation of the 1958 Act is, therefore, clear and explicit. Parliament while enacting the Trade Marks Act, 1999 provided for such an additional forum by enacting sub-section (2) of Section 134 of the Trade Marks Act. The court shall not, it is well settled, readily presume the existence of jurisdiction of a court which was not conferred by the statute. For the purpose of attracting the jurisdiction of a court in terms of sub-section (2) of Section 62 of the 1957 Act, the conditions precedent specified therein must be fulfilled, the requisites wherefor are that the plaintiff must actually and voluntarily reside to carry on business or personally work for gain. 10. Learned counsel would contend that the jurisdiction of th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... them actually and voluntarily resides or carries on business or personally works for gain. Sub-section (2) of Section 27 of the 1958 Act reads :- 27. No action for infringement of unregistered trade mark. (1) . . (2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof. Sub-section 2 of Section 106 of 1958 Act reads :- Section 106 - Reliefs in suits for infringement or for passing off.- (1) .. (2) Notwithstanding anything contained in subsection (1), the court shall not grant relief by way of damages (other than nominal damages) or an account of profits in any case-- (a) where in a suit for infringement of a trade mark, the infringement complained of is in relation to a certification trade mark; or (b) where in a suit for infringement the defendant satisfies the court-- (i) that at the time he commenced to use the trade mark complained of in the suit he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was on the register or that the plaintiff was registered user using by way of permitted ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... order for the delivery-up of the infringing labels and marks for destruction or erasure. 15. The question which was posed by the learned Single Judge is as under:- The next question, however, which is more important is whether the plaintiff can combine the two causes of action one under the Copyright Act and the second under the Act of 1958 in a situation where this court has the jurisdiction in so far as cause of action under the Copyright Act is concerned but has no territorial jurisdiction to entertain the cause of action relating to Act of 1958. 16. Noticing the provisions of Order II Rule 2 and 3 of the Code of Civil Procedure enabling the plaintiff to combine more than one cause of actions, it was opined that the said provisions relate to pecuniary jurisdiction. The said jurisdiction, however, can be exercised only in the event the court has otherwise jurisdiction in respect of the cause of action wherefor the action has been brought. 17. The learned Single Judge noticed some precedents and opined :- 13. Normally, I would have felt myself bound by the aforesaid two judgments which are not only of this court but relate to same subject matter, namely, joining of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ment in not providing for an additional forum in relation to the violation of the 1958 Act is, therefore, clear and explicit. 21. Noticing that whereas in Dhoda House (supra) the infringement complained of primarily was that of 1958 Act and not under the 1957 Act, in Patel Field Marshal (supra) the thrust was on the sale of products and/or advertisement by the appellant for registration of trade marks in the Trade Marks Journal and other local papers. The law was stated in the following terms :- 54. For the purpose of invoking the jurisdiction of a court only because two causes of action joined in terms of the provisions of the Code of Civil Procedure, the same would not mean that thereby the jurisdiction can be conferred upon a court which had jurisdiction to try only the suit in respect of one cause of action and not the other. Recourse to the additional forum, however, in a given case, may be taken if both the causes of action arise within the jurisdiction of the court which otherwise had the necessary jurisdiction to decide all the issues. 22. What would, however, be the nature of composite suit, was also be taken note of. The Court observed :- 55. In this case ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... urt will have the power to grant injunction as an incidental power. 25. If a person is found to be guilty of violation of copyright he will be bound to pay damages. For the purpose of quantification of damages, taking of the accounts may be necessary and it is in this behalf the Parliament thought it fit to use the word otherwise . Thus the power conferred by law within the meaning of sub-section (1) of Section 55 of 1957 Act qualifies the power of the court to grant remedies as envisaged thereunder if any other cause of action arose under a different Act. An action for passing off is common law right but the same does not determine the jurisdiction of the court. For exercising such jurisdiction, the provisions of the Code would be applicable. 1957 Act being a special law would, thus, prevail over the general law, viz., the Code. 26. Exphar Sa (supra) cannot be said to have any application in the instant case. The question which arose for consideration therein was as to whether the jurisdiction of a court under sub-section (2) of Section 62 of the 1957 Act is wider than that of the court specified under the Code of Civil Procedure and thus a person instituting a suit having an ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ns of sub-section (2) of Section 62 of the 1957 Act could not be invoked. 51. The plaintiff was not a resident of Delhi. It has not been able to establish that it carries on any business at Delhi. For our purpose, the question as to whether the defendant had been selling its produce in Delhi or not is wholly irrelevant (sic). It is possible that the goods manufactured by the plaintiff are available in the market of Delhi or they are sold in Delhi but that by itself would not mean that the plaintiff carries on any business in Delhi. 29. What then would be meant by a composite suit? A composite suit would not entitle a court to entertain a suit in respect whereof it has no jurisdiction, territorial or otherwise. Order II Rule 3 of the Code specifically states so and, thus, there is no reason as to why the same should be ignored. A composite suit within the provisions of the 1957 Act as considered in Dhoda House (supra), therefore, would mean the suit which is founded on infringement of a copy right and wherein the incidental power of the Court is required to be invoked. A plaintiff may seek a remedy which can otherwise be granted by the court. It was that aspect of the matter wh ..... X X X X Extracts X X X X X X X X Extracts X X X X
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