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TMI Blog2014 (1) TMI 1657X X X X Extracts X X X X X X X X Extracts X X X X ..... dly, the Defendants do not carry on business nor do they have any place of business within the jurisdiction of this Court. In view thereof, the Plaintiffs are, by the present Petition, seeking leave under Clause XIV of the Letters Patent for combining the cause of action for passing off with the cause of action for infringement. 4. According to the Plaintiffs, in the present case, on identical facts, the Plaintiffs are entitled to claim both the reliefs i.e. in respect of the cause of action for infringement and passing off. It is submitted that what is of paramount consideration for the Court is whether the grant of such leave is necessary to avoid multiplicity of proceedings. It is submitted that once this Court is satisfied that it has jurisdiction in respect of the cause of action for infringement of trademark, in order to avoid multiplicity of proceedings this Court should grant leave under Clause XIV of the Letters Patent to combine the cause of action for passing off with the cause of action for infringement of trademark. It is therefore submitted on behalf of the Plaintiffs that this is a fit case to grant leave under Clause XIV of the Letters Patent to avoid multiplicity ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the suit, the registered proprietor actually and voluntarily resides or carries on business or personally works for gain. It is submitted that what Section 134 (2) of the Act does is that it renders the "accrual of cause of action" within the jurisdiction of such Court wholly irrelevant and a registered proprietor is entitled to maintain an action for infringement at a place where he or she voluntarily resides or carries on business or personally works for gain, notwithstanding the fact that no cause of action may have arisen within the jurisdiction of such Court. But for Section 134 (2) of the Act, it would have been incumbent for the registered proprietor to sue only at the place where the actual infringement took place. However, Clause XIV of the Letters Patent does not render 'cause of action' within jurisdiction irrelevant. In fact, Clause XIV of the Letters Patent specifically contemplates the accrual of the cause of action within the jurisdiction of this Court. As such, recourse to Clause XIV of the Letters Patent cannot be taken in a case where the entire cause of action arises outside the jurisdiction of the concerned Court. Therefore, while a suit for infringemen ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Hon'ble Supreme Court in the case of Kusum Ingots & Alloys Ltd. vs. Union of India 9 to contend that even if a small part of the cause of action has arisen within the territorial jurisdiction of a particular High Court, the High Court is not bound to entertain the action and it would be sufficiently empowered to refer the said action to the Court where substantially the cause of action has arisen, as it would be more convenient to adjudicate the matter in that Court. 8. The Defendants have also fairly pointed out the judgment of a Learned Single Judge of this Court in the case of Hindustan Unilever Ltd. vs. Ashique Chemicals10, which has taken a contrary view to the aforesaid view taken by the Delhi High Court. However, according to the Defendants, the said case is clearly distinguishable. It is submitted that the view in Hindustan Unilever (supra) was rendered in the context where it was argued that a suit in respect of infringement is required to be filed only where the cause of action has arisen if the Plaintiffs also carry on business at such a place. However, the Defendants in the present case have not canvassed the said proposition. What the Defendants have canvassed bef ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... other such similar ground". It is also submitted that this Court even in the case of Jagdish Gopal Kamath 10. and others vs. Lime and Chilli Hospitality Services P. Ltd. 11 has held that while all circumstances under which leave under Clause XIV should be declined cannot be listed, hardship to the Defendant and/or other similar grounds are recognized as circumstances in which leave under Clause XIV may be refused. It is therefore submitted on behalf of the Defendants that in the facts and circumstances of the present case, leave under Clause XIV of the Letters Patent ought not to be granted. 11. The Learned Senior Advocate appearing for the Plaintiffs in his rejoinder refuted the above submissions advanced on behalf of the Defendants. Relying on the decision of the Division Bench of this Court in Arte Indiana (supra), more particularly on the observations in paragraphs 6, 7 and 8 thereof, it is submitted that there is no requirement of law that the cause of action for infringement ought to have arisen within the jurisdiction of this Court as a precondition for grant of leave under Clause XIV of the Letters Patent. It is submitted that this Court may have jurisdiction to grant r ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s Patent. 12. I have considered the submissions advanced on behalf of the Plaintiffs as well as the Defendants. I have also considered the case law relied upon by the Advocates for the parties. 13. The Learned Advocate appearing for the Defendants has submitted that what Section 134 (2) of the Act does is that it renders the "accrual of cause of action" within the jurisdiction of such Court wholly irrelevant and a registered proprietor is entitled to maintain an action for infringement at a place where he or she voluntarily resides or carries on business or personally works for gain, notwithstanding the fact that no cause of action may have arisen within the jurisdiction of such Court. But for Section 134 (2) of the Act, it would have been incumbent for the registered proprietor to sue only at the place where the actual infringement took place. However, Clause XIV of the Letters Patent does not render 'cause of action' within jurisdiction irrelevant. Clause XIV of the Letters Patent specifically contemplates the accrual of the cause of action within the jurisdiction of this Court. As such, recourse to Clause XIV of the Letters Patent cannot be taken to in a case where th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he same as to the said High Court shall seems fit". The key words in Clause XIV are "..... and the said High Court shall have original jurisdiction in respect of one of such causes of action.....". The clause merely requires the High Court to have jurisdiction. The clause does not state or even suggest that the cause of action ought to have arisen within the jurisdiction of the High Court. Such words viz. "cause of action ought to have arisen within the jurisdiction of the High Court", cannot be read into Clause XIV of the Letters Patent. The Defendants' contention that Clause XIV mandates that at least one cause of action should have arisen within the jurisdiction of this Court, requires this Court to read words into Clause XIV of the Letters Patent which is impermissible. The Division Bench of this Court in its decision in M/s. Arte Indiana (supra) relied on the decision of the Hon'ble Supreme Court in the case of State of Kerala vs. Mathai Verghese 12 and held that when Clause XIV does not require that one of the causes of action should have arisen within the jurisdiction of this Court, it would not be permissible to read such a requirement in that Clause. The Defendan ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the liability of the appellant at Rs. 4,80,000/-, which was later reduced to Rs. 1,74,000/-. The amount was not paid. The Bank moved for sale of the charged properties. The order was passed in favour of the Bank. On the application for execution having been taken out in Au- gust 1957 to execute the Decree passed in 1953, the judgment debtor ob- jected to the execution on the ground that it is time-barred under Article 183 of the old Limitation Act. Article 183 of the old Limitation Act, inter alia, provided that the period of limitation for the application to enforce the judgment, decree or order of any Court established by Royal Charter in exercise of its Ordinary Original Civil Jurisdiction was 12 years. It was contended on behalf of the debtor that the decree passed by the Court in 1953 was an order passed by the Court under the Banking Companies Act of 1949, and it was not in exercise of Ordinary Original Civil Jurisdiction. In the light of this controversy, the Division Bench of the Madras High Court discussed the meaning of the expression "ORDINARY ORIGINAL CIV- IL JURISDICTION" and the test formulated by the Division Bench of the Madras High Court is as follows : "The ex ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... use of action within the jurisdiction of this Court or recourse to Clause XIV of the Letters Patent cannot be taken to in a case where the entire cause of action arises outside the jurisdiction of the concerned Court cannot be accepted. The case law relied upon by the Defendants in support of the above contentions is also not relevant in the facts and circumstances of the present case. There is no doubt that this Court has jurisdiction to grant relief of infringement and is therefore also empowered to grant leave under Clause XIV of the Letters Patent to the Plaintiff. 17. The submission advanced on behalf of the Defendants that this Court should give deference to the scheme and/or principle and/or policy contained in Section 20 of the Civil Procedure Code also cannot be accepted. The decisions relied on by the Defendants in support of their reliance on Section 20 of the CPC are irrelevant for deciding the present issue. In fact, the Hon'ble Division Bench of the Madras High Court (Coram: A.P. Shah, C.J. & F.M. Ibrahim Kalifulla, J.) has in the case of Wipro Limited and another vs. Oushadha Chandrika Ayurvedic India (P) Limited and others 13, after referring to the findings of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... his Court in Notice of Motion No. 50 of 2012 in Suit No. 2727 of 2011 (M/s. Siyaram Silk Mills Ltd. vs. M/s. Shree Siyaram Fab Pvt. Ltd.) dated 13 th January, 2012. Paragraphs 10 and 11 of the said judgment are relevant and reproduced hereunder: "10. Section 124 expressly recognizes the right to file an action for infringement even if the defendants' mark is registered. Whether or not the Plaintiff has challenged the defendants' registration as yet or not is not relevant. Section 124 establishes that the legislature did not intend prohibiting the filing of a suit for infringement merely because the defendants' mark is also registered. Section 124 in fact expressly recognizes the right to file such an action. This is clear from the fact that section 124 provides that such an action may be stayed, if it otherwise satisfies the provisions thereof. If it were not so, the Act would have provided for a bar to the filing of such an action. 11. Even in the absence of Section 124, it would make no difference. Once it is held that this Court has jurisdiction to entertain such an action, the Court can always adjourn the hearing of the application for interlocutory reliefs or ev ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ant's mark is also registered. In fact, the said provision clearly contemplates that a suit can be filed and would lie. The course of action to be adopted in KPPNair 20 Petition No. 369 of 2013 such a suit is also provided for. 8. The response of the Defendant to Section 124 of the Act, viz. that it does not confer any jurisdiction upon and/or enable the Court to entertain a suit for infringement against the registered Proprietor of the allegedly offending mark, runs contrary to the fundamental principle that the jurisdiction of a Court is not excluded unless barred. As correctly submitted on behalf of the Plaintiff, the Defendant has not disclosed any bar to the filing of a suit for infringement in circumstances where the Defendant's mark is also a registered mark. Consequently, the contention of the Defendant that the Suit for infringement was barred and therefore the cause of action for passing off, which at the time of the filing of the Suit was outside Mumbai, cannot be clubbed with the suit for infringement, cannot be accepted". 19. As correctly submitted by the Plaintiffs, the paramount consideration for granting leave under Clause XIV of the Letters Patent is the ..... 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