TMI Blog2014 (12) TMI 1327X X X X Extracts X X X X X X X X Extracts X X X X ..... tus of the trademark. The situs would depend upon the facts of each case and the factor that connect the trademark to that place. Thus, the fact that the situs of the registration of trademark is with the Trademark Registry at Chennai by itself would not be sufficient to give rise to cause of action to institute the suit in the Madras High Court, though it may be a factor to be taken into account, among the bundle of facts, for purposes of determining the situs of the cause of action. There is little doubt that the principles of forum conveniens, though not applicable to civil proceedings, have a role to play insofar as the consideration of grant of leave or revocation thereof under Clause 12 of the Letters Patent is concerned. This is irrespective of the fact as to what expression is used - in considering an application for grant of leave or revocation thereof, the appropriateness or suitability of the forum would be material and to that extent, principle akin to forum conveniens would apply. Appeal disposed off. - O.S.A. No. 111 and 112 of 2008 - - - Dated:- 4-12-2014 - Sanjay Kishan Kaul, C.J., M. Sathyanarayanan and Pushpa Sathyanarayana, JJ. For the Appellant ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... product under the Trade Mark 'DUROFLEX', the Certificate of Registration has been issued at Chennai, from where the appellant issued a legal notice and the reply of the respondent was received, declining to discontinue the use of the Trade Mark. Since the respondent was carrying on business outside the jurisdiction of the Court, it is stated to be on account of abundant caution that the appellant filed Application No. 323 of 2007, seeking leave to sue under Clause-12 of the Letters Patent. This application has been dismissed by the impugned order of the learned Single Judge dated 29.08.2007, which has been assailed in the present appeal. 2. The impugned order is predicated on the principle of forum conveniens. The learned Single Judge took note of the fact that there was no allegation of any sale of goods within the jurisdiction of this Court and analysed the plea of the appellant based on the factum of registration of the Trade Mark at Chennai. After referring to various judicial pronouncements, the learned Single Judge opined that the question whether merely because the Office of the Trade Mark Registrar is situated in Chennai would amount to registration of the Trade ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ench, in view of the conflict of views and it was so done by framing the following questions to be answered: (i) Whether the situs of the Trade Mark Registry in Chennai and the name being on its register would itself give rise to cause of action to institute a suit in the Madras High Court (ii) Whether the principles of forum conveniens or analogous principles apply to consideration of an application for leave to sue under Clause 12 of the Letters Patent in case part of cause of action arises at Chennai It is the aforesaid two legal questions that have arisen for our consideration. 5. We may note that the connected appeal also arises from the orders passed on the same date by the learned Single Judge in a suit preferred by the appellant, but against 'M/s. Duro Flex Sittings System' which has been based at Pune and the grievance is against the Trade Mark Label 'Duroflex/Duro Flex Sittings System', with the cause of action paragraph almost identically worded and the impugned order being identical except for the aforesaid factum of distinction. Thus the questions of law were framed in both the appeals. The First Question 6. The learned counsel for ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... registration act like assigning, revocation etc. would take place only at this Registry. It was conceded that though the Register of Trade Marks all over India is kept at Mumbai, the appropriate Trade Mark registry where the mark is registered is the situs of the Trade Mark. 9. Learned counsel sought to derive strength from the pronouncement of the Division Bench of this Court in S.B.S. Jayam and Co. v. Gopi Chemical Industries Limited, India, referred to supra, wherein the right of a plaintiff to the registered Trade Mark is held to be a proprietary right and therefore it is a property. It is transferable under Sections 36 and 37 of the Trade and Merchandise Marks Act, 1958. It is movable property as per Section 3(36) of the General Clauses of Act, 1987. Thus, the only question was whether the situs of such property can be said to be at Madras. In view of the branch Offices, including the one at Madras having independent territorial jurisdiction, regarding the powers conferred under the said Act, it was observed that there could be no doubt that the situs of the property in the Mark was at Madras. The aforesaid view is stated to have been followed in a number of cases as under: ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... er the said Act, there could be no doubt that the plaintiff's registration of Trade Mark at Madras Office would imply that the situs of the property in the registration of Trade Mark is deemed to be at Madras. (d) Ramu Hosieries, represented by M. Murugeshan v. Ramu Hosieries, represented by Pandela Ramu and another reported in (1999 PTC (19) 183 (DB)), wherein it was held that even though the alleged offending Mark had not come to Madras, the facts of registration here would give rise to one part of the cause of action arising at Madras. The jurisdiction of a Civil Court in relation to movable property has to be determined with reference to the cause of action. The right or interest in a Trade Mark can only be in relation to a movable property having regard to the definition under the General Clauses Act. The Trade Mark had been admittedly put to use, exploited and registered at Madras. Therefore, the cause of action in the suit can be taken to have arisen where the property was situated or where it was marketed or exploited and registration assumes all significance, because in a suit for infringement of a Trade Mark, the plaintiff has to establish the cause of action by sh ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e effectively dealt with within the jurisdiction. 10. Per contra, learned counsel for the respondent canvassed that the jurisdiction of a Court in a suit relating to Trade Mark infringement is provided for under Section 134(2) of the Trade Marks Act, 1999, read along with the relevant provisions of the said Code and the Letters Patent as the case may be. 11. The relevant provisions of the Trade Marks Act, 1999, the Code of Civil Procedure and the Patents Act, 1970, are extracted hereunder: Section 134 of Trade Marks Act 134. Suit for infringement, etc., to be instituted before District Court - (1) No suit -.......... (2) For the purpose of clauses (a) and (b) sub-section (1), a 'District Court having jurisdiction? shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally wo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... lk Syed Abdul Wajid reported in (1963) 3 S.C.R. 22), wherein it was held that the situs of certain shares (which are movable) is the place where the registered office of the company is situated, that being the place where the shares can be effectively dealt with. This analogy is pleaded to be fallacious as the aforesaid case related to private international law where the situs of the property was to be fixed in order to determine what law would govern it. The Honourable Supreme Court thus applied the artificial legal fiction which was long established in common law principles in the case of shares, to determine its location for the purpose of taxation. This fiction was created for the purpose of taxation alone as the law of taxation was based on the location of assets. (Judgments referred to: Scottish and Australian Bank, Limited v. Commissioners of Inland Revenue; Royal Trust Company v. Attorney - General for Alberta, (1930) A.C. 144; Brassard v. Smith, 1925 AC 371; Kwok Chi Leung Karl v. Commissioner of Estate Duty, (1988) 1 WLR 1035; and Eri Beach Co., Limited v. Attorney General, AIR 1930 PC 10.) 13. It was thus submitted that this judicial fiction ought not to be resorted t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ade Mark occurs where the physical attributes of the Trade Mark had been created by a judicial fiction. Such layered creation of legal fiction had been disavowed by the Court of appeals in England, in the case of In Re Palmer, Decd.(A Debtor) reported in 1994 (3) W.L.R. 420. 16. In the conspectus of the observations in S.B.S. Jayam's case cited supra, it was submitted that the Court failed to consider that the Certificate of Registration of Trade Mark is always issued by the Trade Marks Registry, Mumbai, which is the Head Office and only a copy of the Register of Trade Mark is kept at each of the branch Offices of the Trade Mark Registry. Thus, the judicial fiction would create an extraordinary situation where in a civil suit for infringement of Trade Mark, the court in Mumbai has jurisdiction to try the suit, if there is no other connection between the said court and the parties or the subject matter. The plea thus advanced was, such a test ought to be eschewed as it would lead to unintended results. 17. The learned counsel submitted that a number of relevant factors need be taken into account to determine the location of a particular Trade Mark which connect that Trade ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... be granted under Clause -12 of the Letters Patent, whether the principles of forum conveniens would be applicable. Their difference in perspective on the issue is as to how these principles would apply. 21. Learned counsel for the appellant sought to contend that the duty of the Court is only to see the availability of a part of cause of action as per the averments in the plaint. In terms of Section 134 of the Trade Marks Act, if it is a deviation from the normal rule of jurisdiction, the plaintiff is entitled to file a suit, even if the defendant is not residing or carrying on business within the jurisdiction of that court. This is stated to be a premium given to the plaintiff in an infringement action where the plaintiff has gone through the process of registration by proving the bona fide adoption of the Trade Mark. This is thus an additional forum to the plaintiff. In the normal defence, it was submitted that a defendant is always put to inconvenience in such proceedings, even though the infringer is a business person who can afford litigation expenses. 22. In the context of the origination of the Letters Patent, reference was made to Full Bench Judgement of the Delhi Hig ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ave the plaintiff in the dark, as more than one court may have jurisdiction in the matter. So long as a particular court has the jurisdiction, the privilege is that of the plaintiff. 24. The learned counsel also referred to the Judgement in India TV Independent News v. India Broadcast Live and Others reported in 2007(35) PTC 177 (Del.), dealing with the jurisdiction of different courts in different countries, concluding that the plaintiff's choice of forum is usually not disturbed unless the balance of convenience is strongly in favour of the defendant. Thus, in determining whether a more appropriate forum exists, connecting factors, such as those effecting the convenience of the parties, expenses involved and the law governing the relevant transactions are to be looked into. The mere fact that a part of the cause of action has arisen within the jurisdiction of the Court may itself not be considered to be a determinative factor compelling the court to decide the matter on merits. In determining which of the available forums is the forum conveniens in a given matter, the convenience of all the parties had to be seen. 25. In Brooke Bond (India) Limited v. Balaji Tea (India) ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ether to refuse or not, it would be necessary to see on facts and not on assumptions who shall suffer the plaintiff or the defendant if the leave is granted or refused. 29. A number of Judgments were referred to in the context of Section 62 of the Copy Right Act, 1957, as under : (i) In Brooke Bond (India) Limited v. Balaji Tea (India) Pvt. Ltd., reported in (1993) 2 MLJ 132), the Division Bench has observed, 'Section 62 of the Copyright Act permits a deviation from the general law. But then, that gives a discretion to the litigant to decide the forum. It is his choice and not the choice of the Court. No exception can be taken if his discretion is not to the liking of the Court.' (ii) In Smithline Beecham Plc and another v. Sunil Singhi and another reported in 2001 (PTC) (Del) 321, it has been observed by the learned Single Judge, 'Section 62 of the Copyright Act makes an obvious and significant departure from the norm that the choice of jurisdiction should primarily be governed by the convenience of the Defendant. This shift is with considerable wisdom, since the violation of statutorily protected rights should expose the transgressor/pirator with inconvenie ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ationship between the registered mark and the plaintiff alone would be required for granting leave and in case an application for revocation on leave is filed, the parties' inconvenience, ill-motive, bad faith and mala fide intention, if any, would be grounds for revocation of leave. Thus, granting leave is the rule and not an exception. The parties in such litigation, more specifically defendants, are business people and the appropriate registry would be the place where they have to assail and seek cancellation of registration. Thus, there can be no question of any inconvenience, if leave is granted and suit is filed within jurisdiction of the Court, keeping in mind the intention of the legislature for the reasons enunciated aforesaid. 32. On the other hand, learned counsel for the respondent sought to contend that the scope of ordinary original civil jurisdiction of the High Court of Madras in relation to suits is determined by Clause-12 of the Letters Patent and Sections 16, 17 and 20 of the Code of Civil Procedure are made inapplicable by Section 120 of the Code. Clause-12 was thus pleaded to be a sui generis clause, whereby the High Court assumes jurisdiction only after ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s is not the question, and notwithstanding that the cause has arisen within the local limits, the court may decline to leave to sue. The question of convenience cannot be thus excluded from consideration. This view was cited with approval in Madanlal Jalan v. Madanlal and others reported in AIR 1949 Cal. 495, where the Judge has held that the balance of convenience is a material consideration in the exercise of discretion under Clause 12 of the Letters Patent and has enunciated the following legal principles: a) that the application lies for revoking the leave granted under Clause 12 of the Letters Patent; b) that such an application should be made at an early stage of the suit and delay and acquiescence may be a bar to such an application; c) that if the application depends on difficult questions of law or fact, the Court should not revoke leave on a summary application but should decide the question at the trial; d) that if the defendant shows clearly that no part of the cause of action arose within jurisdiction, the leave should be revoked as a matter of course; e) that if only a part of the cause of action arose within jurisdiction, then it is a question of disc ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hairman of the company and the trust reposed in him as such Chairman and induced the proposed fourth defendant and the first defendant to terminate the agency of the plaintiff and give it to the third defendant company which was formed by the second defendant. Further, in the case now before us there are no circumstances which would show that the plaintiff has chosen this forum mala fide, nor can it be said that the forum chosen is such that if the court permits the suit to go on, the other party would be so handicapped in his defence that it would lead to injustice or that the balance of convenience is decidedly or overwhelmingly against the suit going on in the forum chosen by the plaintiff. (c) In Tuticorin Alkali Chemicals and Fertilizers Limited v. Cochin Silicate and Glass Industries reported in (1992) 1 LW 308), it has been held by the Division Bench, 'We do not say that in considering the balance of convenience as to the forum for instituting a suit, it would be necessary (like the principles of injunction) to see the ultimate injury that a party may suffer, but we do find support for our view and we state in no uncertain terms that in deciding whether to refuse lea ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... has to be revoked. (f) In Parameswari Veluchamy and two others v. R.T. Jayaraman and seven others reported in 2002(1) CTC 134, it was observed by the Division Bench, '.....Morever, considerations of convenience are very germane while determining the question of grant, refusal or revocation of leave. Almost all the properties, the documents relating thereto and the witnesses who have knowledge of the same are outside the city of Madras.' (g) In M/s. Murthy Hosiery Mills, represented by its Managing Partner, Miller R.T. Murthy and another v. The State Bank of India reported in (2011) 3 LW 376), the Division Bench referred to the Judgement of Honourable Supreme Court in Kusum Ingots and Alloys Ltd., v. Union of India and another (2004) 6 SCC 254 : 2004-4-L.W 310), wherein it was held that even if it was found that part of cause of action has arisen within the jurisdiction of the Court, the Court may refuse to exercise its discretionary jurisdiction on the principle of 'forum conveniens. 37. Learned counsel concluded by submitting that even if the doctrine of forum conveniens is understood in the private international law context, it may not strictly apply in dom ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e rise to a cause of action to institute the suit in this Court' 41. The first line of case law discussed in paragraph 10 aforesaid enumerated from Herald Charles Pinto's case (supra), gives an affirmative answer to this question predicated on a reasoning that the plaintiff has to establish his proprietary right in the trademark which is alleged to have been infringed, which can only be done by showing that it is registered with the Registrar of trademarks at Chennai. The right for interest in the trademark, which is a movable property, has thus been held to have come into being at Chennai and in an infringement action qua the trademark, the failure to establish this fact would be fatal (Premier Distilleries Pvt. Ltd. case (supra)). The second part of the reasoning also seeks to draw strength from the fact that any objection to registration was required to be filed at Chennai, as also any application for revocation thereof. 42. On the other hand, learned counsel for the respondents sought to question the very basis on which the judgment in S.B.S. Jayam's case (supra) was delivered, as it sought to follow the law laid down by the Hon'ble Supreme Court in R. Vis ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... round for invoking the jurisdiction of the Delhi High Court as the trademarks did not allow registration of a trademark within the jurisdiction of a Court to be a ground for filing in that Court and thus, the registration could at best be construed to be part of cause of action, but would be insufficient to grant leave to institute the suit before the Court. We agree with the proposition. 46. If we look at the provisions of Section 134 of the Trade Marks Act, they seek to carve out an exception to the principles enunciated to the Exception to Section 20 of the Code of Civil Procedure, to the extent by giving an advantage to the plaintiff to have the right to sue at the place of its location or where it carries on business. This is a provision beneficial to the plaintiff. The scope of the Section cannot be expanded to give benefits to the plaintiff in matters of institution of suit which have not been conferred by the legislature. There is no conferment of rights on the basis of where the trademark is registered and if the legislative intent was so, it would have been accordingly provided. 47. Learned counsel for the respondents also thus rightly emphasised the very fundamenta ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... h the prior leave of the Court (Food Corporation of India case (supra)). Thus, what is to be seen in case of grant or refusal of leave or revocation of leave is the convenience of the parties or appropriateness of the jurisdiction. Balance of convenience was considered to be material for exercise of discretion under Clause 12 of the Letters Patent and thus, steps have been enunciated by the Calcutta High Court in Madanlal Jalan's case (supra). 51. A number of relevant passages from different judicial pronouncements on the principles of forum conveniens were referred to, which have been enunciated in paragraph 37 aforesaid. The principle of balance of convenience has been held to be an expansion of the doctrine of forum conveniens. In Seshagiri Row's case (supra), this Court held that having regard to the wordings of Clause 12 of the Letters Patent, despite part of cause of action arising within the local limits, the Court may decline leave to sue. The question of convenience could not thus be excluded from consideration. 52. In the aforesaid context, in Horlicks Ltd. case (supra), it has been rightly observed that it is appropriateness or suitability of forum which is ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ould include the existence of more appropriate forum, expenses involved, the law relating to the lis, verification of certain facts which are necessitous for just adjudication of the controversy and such other ancillary aspects. The balance of convenience is also to be taken note of. The principle of forum conveniens in its ambit and sweep encapsulates the concept that a cause of action arising within the jurisdiction of the Court would not itself constitute Court to entertain the matter. While exercising jurisdiction under Articles 226 and 227 of the Constitution of India, the Court cannot be totally oblivious of the concept of forum conveniens. The conclusion thus arrived at was that the principles of forum conveniens, though applicable to the international law as a principle of Comity of Nations, would apply to the discretionary remedy under Article 226 of the Constitution of India. 55. In yet another decision in Fathima Bathool v. MM. Zulaiha 2014-5-L.W. 579 : 2014 (6) C.T.C. 241, a Division Bench of this Court comprising two of us (S.K.K.,CJ. and M.S.N., J.) had occasion to consider an identical issue. In the aforesaid case, the leave to sue was revoked on the basis tha ..... X X X X Extracts X X X X X X X X Extracts X X X X
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