TMI Blog2014 (1) TMI 1657X X X X Extracts X X X X X X X X Extracts X X X X ..... aintiff. The contention of the Defendants that their mark consisting of the words "Ultra Tuck" is registered is, as submitted by the Plaintiffs, irrelevant inasmuch as it is a settled position of law that the suit for infringement is maintainable even in a case where the defendants' mark is registered. In the present case to avoid multiplicity of proceedings, it would be appropriate to grant leave under Clause XIV of the Letters Patent and allow the Plaintiffs to combine the cause of action for passing off along with the cause of action for infringement. - 369 OF 2013 - - - Dated:- 18-1-2014 - S.J. Kathawalla,J For The Appellant : Dr. Virendra V. Tulzapurkar For The Respondent : Mr. Rashmin Khandekar along with Mr. Rahul Dhote JUDGMENT: 1. The Petitioners ( Plaintiffs ) have filed the present Suit, inter alia, for infringement of its registered trademarks being UltraTech Cement and/or marks, the essential feature whereof is 'UltraTech', as more particularly set out in the Plaint, and for passing off. 2. For the sake of convenience, the Petitioners shall hereinafter be referred to as the Plaintiffs and the Respondents as the Defenda ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... basis that the cause of action in relation to infringement of copyright arose within the territorial jurisdiction of this Court, the said judgment is not an authority on the proposition as to when cause of action is said to arise within jurisdiction , as there is no discussion whatsoever about the same. It is submitted that it is trite law that a judgment is an authority only for what it decides and not for what can be deduced therefrom. In support of this contention, the Defendants have relied on the decision of the Hon'ble Apex Court in the case of Union of India v. Chajju Ram3. It is therefore submitted that in the present case no cause of action whatsoever has arisen within the jurisdiction of this Court. The cause of action even in respect of infringement has occurred only in Haryana, Punjab and Himachal Pradesh where the products of the Defendants are available and where the alleged actual infraction of the Plaintiffs' right has taken place. In support of this contention, the Defendants have relied on the judgments in the case of Unichem 1 1928 BLR Vol. (31) 7 2 1999 Vol. (103) 3 BLR 188 3 AIR 2003 SC 2339 KPPNair 4 Petition No. 369 of 2013 Laboratories Pvt. Ltd. v ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ction for infringement and passing off, this Court should give deference to the scheme and/or principle and/or policy contained in Section 20 of the CPC. It is submitted that Section 20 of the CPC mandates that where a corporation has a subordinate office and the cause of action arises at such place, it is only the Court at such place which will have jurisdiction. Admittedly, the Plaintiffs have a subordinate office in Punjab and/or Haryana and/or Himachal Pradesh. Accordingly, the Courts in Punjab and/or Haryana and/or Himachal Pradesh are the Courts in which the present Suit ought to have been filed. It is further submitted that the provisions of the CPC can serve as guidelines so long as they are not directly inconsistent with any other applicable provisions. In support of these contentions, the Defendants have relied on the judgments of the Hon'ble Supreme Court in the case of M/s. Patel Roadways Ltd. vs. M/s. Prasad Trading Company6 and in the case of Sarguja Transport Service vs. State Transport Appellate Tribunal, Gwalior and others 7. The Defendants have also relied on the judgment of the Division Bench of the Delhi High Court in 6 1992 (94) BLR 882 7 AIR 1987 SC 88 K ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... pra) were not considered in the case of Hindustan Unilever (supra). It is submitted that in any event, this Court is not obliged to take the view taken by the Learned Single Judge in the case of Hindustan Unilever's (supra). 9. The Learned Advocate for the Defendants has further submitted that by an order dated 12th December, 2013, this Court accepted the undertaking on behalf of the Defendants that they shall not use the labels at Exhibit-H to the Plaint and that they will only use its mark Ultra Tuck as registered. It is submitted that admittedly, the Defendants are the registered proprietors of the mark 'Ultra Tuck', and therefore no reliefs in respect of infringement of trademark can be granted to the Plaintiffs. It is submitted that at the time of arguments of the present application, the Defendants offered to undertake not to use the impugned mark at Exhibit-H to the Plaint as the Defendants had already stopped the use of the said label and hence the Plaintiffs could seek no further reliefs in respect of infringement. However, the Plaintiffs insisted on continuing proceedings even in respect of passing off only before this KPPNair 8 Petition No. 369 of 2013 C ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Letters Patent is the avoidance of multiplicity of proceedings. It is therefore submitted that the Defendants' contention in paragraph 4 of their written submissions that no cause of action whatsoever has arisen within the jurisdiction of this Court is untenable. The reliance on the judgments referred to in that paragraph relating to cause of action are totally irrelevant and it is clear that this Court has jurisdiction to grant relief for infringement and the said position is conceded by the Defendants across the Bar. It is also submitted that the submission of the Defendants that their mark consisting of the words Ultra Tuck is registered is irrelevant inasmuch as it is a settled position in law that the suit for infringement is maintainable even in the case where the Defendants mark is registered. In support of its contention, the Plaintiffs have relied on the decision of this 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 13th January, 2012 and the unreported decision of this Court in Chamber Summons No. 1319 of 2012 in Suit No. 604 of 2010 dated 29 th May, 2013 (S.Narendraumar ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... granted leave under Clause XIV of the Letters Patent. 14. Section 134 (2) of the Act enables the registered proprietor of a trademark to institute a suit for infringement in a District Court within the local limits of whose jurisdiction at the time of institution of the suit, the registered proprietor actually and voluntarily resides or carries on business or personally works for gain. Plaintiff No.1 has its Registered Office and Plaintiff No.2 has its Corporate Office within the jurisdiction of this Court. It is therefore submitted on behalf of the Plaintiffs that this Court has jurisdiction to try and entertain the present Suit in respect of infringement. However, admittedly the Defendants do not carry on business nor do they have any place of business within the jurisdiction of this Court and therefore, 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. 15. Clause XIV of the Letters Patent, Bombay reads thus: KPPNair 12 Petition No. 369 of 2013 And we do further ordain that where plaintiff has several causes of action against a d ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Supreme Court in State of Kerala v. Mathai Verghese Ors. . The Apex Court was considering the interpretation placed on section 489-A of the Indian Penal Code by the High Court. The High Court had interpreted the words any currency note in the said section as Indian currency note . While reversing the decision of the High Court, the Supreme Court held that when the Legislature does not speak of currency notes of India, the Court interpreting the relevant provision of law cannot substitute the expression Indian currency note in place of the expression currency note as has been done by the High Court. 7. Faced with the aforesaid position, as this Court has territorial jurisdic- tion to entertain the Suit in respect of violation of copyright, learned Coun- sel for the respondent contends that this Court will have original jurisdic- tion only in respect of cases contemplated by Clause 12 and other cases would not be within the original jurisdiction of the Court. The contention cannot be accepted on the face of the clear and unambiguous language of Clause 14. 8. We are unable to accept the contention that the Suits pertaining to in- fringement of copyright would not be ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nt. This Court may have jurisdiction to grant relief for infringement of a trademark either when the Defendants' goods bearing the impugned mark are sold within the jurisdiction of this Court, or when the Defendants reside within the jurisdiction of this Court (Clause XII of the Letters Patent), or if the Plaintiffs carry on business or reside within the jurisdiction of this Court (Section 134 of the Act). It was admitted by the Defendants at the time of arguments that this Court has jurisdiction to grant relief for infringement, but had contended that the Court should not grant relief unless the Defendants' goods bearing the impugned mark are being sold within the jurisdiction of this Court. This contention cannot be accepted. Once it is found that this Court has jurisdiction to grant relief for infringement for any of the reasons set out hereinabove, the question of exercising discretion to grant leave under Clause XIV only if the Defendants' goods are sold within the jurisdiction of this Court, does not arise, and any consideration of that question will be contrary to the intent of the Legislature as stipulated in Clause XIV of the Letters Patent. 16. In view ther ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n contained in non-obstante clause by using the phrase notwithstanding anything contained in the C.P.C, 1908 (5 of 1908) or any other law for the time being in force is made with a view to give a overriding effect to the said provision. It is equivalent to saying that the provision would hold the field notwithstanding anything contained in the C.P.C or any other law for the time being in force. Moreover, by virtue of Section 120 of the C.P.C, the provisions of Section 20 are not applicable as far as High Court is concerned. Therefore, the scope of this section cannot be curtailed by reference to Section 20 of the C.P.C or Clause-12 of the Letters Patent. Therefore, in a case of infringement of trade mark or copyright covered by Section 134(2) of the Trade Marks Act or Section 62(2) of the Copyright Act, the question of plaintiff taking prior leave under Clause 12 of the Letters Patent does not arise and the plaintiff need not take leave of the Court under Clause 12 of the Letters Patent even if only a part of the cause of action or no part of the cause of action arose within the jurisdiction of this Court, if the plaintiff ordinarily resides or carries on business within the juri ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... taken away by the amendment. In this connection, the Defendant has relied upon Sections 28 (3), 29 (2) and 30 (2) (e) of the Act to contend that the Suit for infringement cannot lie and is barred by law. The Plaintiff, in response to the submission, has correctly submitted that this contention of the Defendant is based on a complete misreading of the Act. None of the aforesaid provisions incorporate any bar on filing of a suit for infringement in a case where the Defendant's mark is also registered. In fact, the Defendant's submission cannot be accepted in view of Section 124 of the Act which clearly states that in a suit for infringement of a trademark, where the Defendant raises a defence under Section 30 (2) (e) of the Act to the effect that the Defendant's mark is also registered and the Plaintiff pleads the invalidity of the Defendant's mark, the Court trying the suit shall, if any proceedings for rectification of the Register in relation to the Plaintiff or Defendant's trademark be pending before the Registrar or before the Appellate Board, stay the suit pending the final disposal of such proceedings. In Section 124 (5) of the Act, it is clarified that th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... clause XIV of the Letters Patent is 'avoiding multiplicity of litigation'; (iii) in the absence of proven mala fides/hardship, the argument that grant of leave will drag the Defendant from a forum where the Defendant is situated, to the Court from which Clause XIV is sought and that this is prejudicial/inconvenient to the Defendant, is fallacious and misconceived; (iv) leave may be declined considering undue hardship to the Defendant or such other similar ground/s; (v) leave may be declined if the suit as filed is on the face of it not maintainable and the same is nothing but an abuse of law/Court; (vi) the inquiry whether on facts the Plaintiff is entitled to grant of leave as sought for or not has to be minimal and not in detail, so as to ensure that observations made do not adversely affect the parties while considering the prayers for grant of interim relief or while deciding the suit; (vii) it is not possible to list all the circumstances under which leave under Clause XIV should be granted or declined. The Court has to use its judicial discretion and arrest any abuse of the process of a court without going into the merits of the case to the extent of v ..... X X X X Extracts X X X X X X X X Extracts X X X X
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