Delhi District Court
(Originally Filed By The Jay ... vs M/S Usha Company on 30 April, 2010
IN THE COURT OF SHRI HARISH DUDANI,
ADDITIONAL DISTRICT JUDGE-15 (CENTRAL) : DELHI
Suit No.247/08/91
Usha International Limited
19, Kasturba Gandhi Marg,
New Delhi - 110 001
(Originally filed by The Jay Engineering Works Ltd.
23, Kasturba Gandhi Marg,
New Delhi - 110 001)
..........Plaintiff
Versus
1. M/s Usha Company
Station Road,
Jodhpur,
Rajasthan
2. M/s Manohar Lal & Sons
Station Road,
Jodhpur,
Rajasthan
3. Surinder Kumar Jaggi
Station Road,
Jodhpur,
Rajasthan
4. Manmohan Kumar Jaggi
Station Road,
Jodhpur,
Rajasthan
5. Smt. Madhu Jaggi
Station Road,
Jodhpur,
Rajasthan
6. Smt. Ram Rakhi Jaggi
Station Road,
Jodhpur,
Rajasthan ..........Defendants
(Suit against defendant no. 6 abated vide order dated 06.08.2009)
Suit No. 247/08/91 1
Date of Institution of Suit : 23.01.1991
Date of Decision : 30.04.2010
JUDGEMENT
1. The suit was filed by The Jay Engineering Works Ltd., 23, Kasturba Gandhi Marg, New Delhi. Thereafter, an application u/s 151 CPC was filed to change the name of the plaintiff as Usha International Limited which was allowed by my ld. Predecessor vide order dated 11.08.2009 and the name of the plaintiff was allowed to be changed as Usha International Limited.
2. This is a suit for permanent injunction restraining infringement of registered trade marks, copyrights, passing off, unfair competition, rendition of accounts of profits, delivery up etc. filed by the plaintiff.
3. The plaintiff has filed the abovenoted suit stating therein that the plaintiff is a company incorporated under the Indian Companies Act, 1913 and Shri Deepak Gupta who is the Deputy General Manager of the plaintiff is authorised and competent to sign and verify the plaint and institute these proceedings. The plaintiff has been manufacturing and/or selling various products including sewing machines and electric fans under the trade mark USHA and the said trade mark USHA has been used by the plaintiff in respect of sewing machines since the end of the year 1936 and in respect of electric fans since the year 1944. The plaintiff is the registered proprietor of the following amongst numerous other Trade Marks in India :-
Suit No. 247/08/91 2Trade Mark Registration Date of Class Goods No. Registration USHA 3058 4.8.42 7 Sewing Machines USHA 195536 20.4.60 7 Sewing Machines (Logo) and parts thereof USHA 128504 21.3.47 11 Electric Fans and regulators USHA 195537 20.4.60 11 Fans (Electric) (Logo) (The aforesaid registrations are hereinafter collectively called 'the Registrations' or "the trade marks" as the context requires).
4. It is stated in the plaint that the aforesaid registrations are all valid, subsisting and in full legal force having been renewed from time to time. The trade mark USHA (logo) consists of the word USHA written in bold letters upon a background of four contiguous blocks, one for each letter and the said logo is unique and is an original artistic work within the meaning of Section 2(c) of the Copyright Act, 1957. The plaintiff is the owner of copyright in the said artistic work by virtue of Copyright Registration Nos. A-5348/70 and A-25186/79. On account of the extensive campaign launched by the plaintiff, the said trade mark USHA acquired a vast and enviable reputation and in the course of time, the plaintiff expanded its range of products and started using the said trade mark USHA in relation to electric fans, regulators, hot air units, hurricane lanterns, fuel injection equipment etc. The trade mark USHA has now become a household name and is associated and identified by the public and general consumers with the products. The plaintiff manufactures and/or markets various models of sewing machines under Suit No. 247/08/91 3 the trade mark USHA and these models are given different names like ROOPA, EXCELLA, STREAMLINE, LINK etc. and the plaintiff's goods are inter alia associated, remembered and ordered by reference to the mark USHA. The plaintiff has been extensively advertising the aforesaid goods under the trade mark USHA in various printed and audio visual media specially television. The plaintiff has also been participating in various international Trade Exhibitions and International Fairs for the global promotion of their products both under the trade mark USHA. On account of the vast product range, colossal publicity exceeding Rs.20 crores and sales exceeding Rs.750 crores in the past decade, extensive network for sales and after sales service. By reason of the constant endeavour for excellence and virtually a fanatic adherence to quality standards, an impeccable goodwill and reputation for the USHA products all over the world has been created and the trade mark USHA has become a household name in the cities, towns and villages in the country with a USHA retail outlet in almost every market and is inextricably associated with the business of the plaintiff. Because of the quality of the goods, a goodwill is attached to the trade mark USHA. The plaintiff is the owner of the goodwill in its trade mark in India which is of substantial value. The plaintiff is likely to suffer substantial damage to its property in the goodwill by reason of any other party selling goods which are falsely described by the trade mark USHA.
5. It is stated in the plaint that the defendant no. 1 M/s Usha Company, Jodhpur claims to be the manufacturer of sewing Suit No. 247/08/91 4 machines and fans. The defendant no. 2 M/s Manohar Lal & Sons is the dealer of defendant no. 1's goods and the correct constitution of the defendants is not known to the plaintiff till after discovery in this action. Sometime in 1977, the plaintiff came across an advertisement in a Hindi newspaper called "Tarun Rajasthan" dated 15th May, 1977 released by defendant No. 2 entitled "Usha Company (Regd.) Usha Ki Kiran Sewing Machines and Fans". A legal notice was sent by the advocates for the plaintiff to the defendant no. 2 on 22nd June, 1977 calling upon it to desist from using the mark Usha Ki Kiran or any mark deceptively similar thereto in respect of the goods with immediate effect. On 6th September, 1977, the advocates for defendant no. 2 wrote to the advocates for the plaintiff denying that they had put out any advertisement or that they were the proprietors/owners of the infringing mark and informed that they were merely dealers of sewing machines and fans which they purchased from M/s Usha Company. On 14th September, 1977 the advocates for the plaintiffs sent a reminder to the defendant no. 2 to comply with the conditions of the notice dated 22nd June, 1977. On the same date a legal notice was also sent to M/s Usha Company. By their letter dated 8th October,, 1977 the advocates for defendant no. 1 wrote to the advocates for the plaintiff that they were seeking clear instructions from their clients and would revert back soon but after this no response was received from the said defendant despite a reminder being sent to it on 29th December, 1977. Thereafter, the plaintiff applied to the Registrar of Trade Marks, Bombay for a search of marks relating to the word USHA. The search showed that M/s Suit No. 247/08/91 5 Usha Company had applied for the registration of the mark USHA KI KIRAN under No. 324061 in respect of fans. The plaintiff's advocates requested the Registrar of Trade Marks not to accept the said mark as the plaintiff was the registered proprietor of the mark USHA under No. 128504 and 195537 for fans and the word USHA was wholly contained in the mark under application No. 324061. On 11th June, 1980, defendant no. 1 applied for the registration of the mark USHA KI KIRAN in Class 7 of the Trade Marks Act in respect of sewing machines and parts thereof. The proposed user by the said defendant was advertised in Trade Marks Journal No. 865 and its application No. 362755 was accepted for registration by the Registrar of Trade Marks. Application No. 362755 was opposed by the plaintiff vide opposition No. DEL/4447 and evidence was filed in support of the notice of opposition and taken on record by the Registrar. However, at the hearing the applicant i.e. Defendant no. 1 in the present case informed the Registrar of its decision to withdraw the said application thereby recognising and admitting the plaintiff's exclusive right to the use of the trade mark USHA.
6. It is stated in the plaint that sometime in October, 1985 the plaintiff applied for the registration of its mark USHA vide application No. 444893. The examination report of the Trade Marks Registry revealed that there were three pending marks relating to the word Usha, two of which were proposed to be used by Usha Company i.e. Defendant no. 1. These marks were reported to be USHA KI KIRAN under application no. 362755 already under opposition and USHA Suit No. 247/08/91 6 RANI under application no. 423440. The trade mark attorneys of the plaintiff immediately sent a letter to the Registrar of Trade Marks clarifying that the applicant objected to the applications in the name of Usha Company and that the same should not be allowed. Sometime near the end of 1989 the advocates for the plaintiff came to know through an official search report that M/s Usha Company had again filed an application for the registration of the mark USHA KI KIRAN vide application no. 503285 in respect of sewing machines and parts thereof earlier that year thereby exhibiting its malafides and dishonest intentions to continue to encash on the goodwill and reputation of the plaintiff in clear violation of the plaintiff's statutory rights.
7. It is further stated in the plaint that on 16th January, 1990 the advocates for the plaintiff sent a notice to defendant no. 1 calling upon it to cease its illegal trade activities. Thereafter, a reminder was sent to the said defendant on 30th August, 1990. However, no response was received to the said notice and reminder by the advocates for the plaintiff. Instead, on 18th and 22nd September, 1990 the plaintiff received copies of the caveat applications filed by the defendant no. 1 in the District Court of Jodhpur and in the High Court and District Court of Delhi respectively. Hence, the plaintiff has been compelled to file the present suit against the defendants despite its best efforts to bring about an amicable settlement without resorting to litigation. The defendant no. 1 has adopted the name USHA as an essential and dominant feature of its trading style knowing fully well the reputation and goodwill attached to the plaintiff's trade mark USHA. In Suit No. 247/08/91 7 addition, the defendant no. 1 has also adopted the misleading trade marks USHA KI KIRAN and USHA RANI in connection with and upon sewing machines of its manufacture of which the word USHA is the essential predominant and key component. However even if the defendants were to call their machines by names other than those complained of while retaining their trade name i.e. Usha Company, deception and confusion would still arise since the purchasing public and the trade are likely to order goods, recognise and associate the defendants goods only with reference to the trade mark USHA. The chances of deception and confusion are increased manifold by the fact that the defendant no. 2 who is a dealer of defendant no. 1's goods, displays prominently on its shop the name USHA written in the unique and distinctive logo style of the plaintiff, the copyright in which vests with the plaintiff. Thus, by the use of the marks USHA KI KIRAN and USHA RANI and the firm name Usha Company of which the mark USHA forms an essential, predominant and key feature, the defendants have infringed the registered trade marks of the plaintiffs. The defendants have used in the course of trade, the above trade marks which are identical with and/or deceptively similar to the plaintiffs trade mark in relation to sewing machines and electric fans in respect of which the trade mark USHA is registered in the plaintiff's favour and the reproduction by the defendants of the word USHA in the stylised manner in which the plaintiff depicts its trade mark USHA amounts to infringement of copyright registration Nos. A-5348/70 and A- 25186/79. The defendants are passing off their goods and business as the goods and business of the plaintiff. The Suit No. 247/08/91 8 misrepresentation made by the defendants is not only likely to cause immense loss to the business and goodwill of the plaintiff but also substantial damage to the consuming public who will be confused, deceived and misled into purchasing inferior quality goods under the belief that they are actually purchasing the goods of the plaintiffs. It is also stated that this Court has the jurisdiction to entertain and try the present suit by virtue of section 62(2) of the Copyright Act as the plaintiff is carrying on business at Delhi. The goods of the defendants are also being sold at Delhi although in a clandestine manner and without issuance of any cash memos, hence, the cause of action has also arisen at Delhi. The defendants have advertised in the Tarun Rajasthan, a publication that has circulation in Delhi. The defendants trade mark application no. 362755 was advertised in the Trade Marks Journal No. 865 dated 16.06.1985 which has a circulation in Delhi and the plaintiff opposed the mark before the Trade Marks Registry at New Delhi under opposition no. DEL/4447. It is prayed that a decree for permanent injunction restraining the defendants, their associate companies, their proprietor or partners as the case may be, their servants, agents, officers or each of them from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in household appliances including sewing machines and electric fans bearing the trade mark/trade name USHA or the mark USHA KI KIRAN or USHA RANI or the name USHA company or any other mark or name of which the trade mark USHA forms a part, amounting to infringement of registered trade mark nos. 3058, 195536, 195537 and 128504, a decree for permanent Suit No. 247/08/91 9 injunction restraining the defendants, their associate companies, their proprietor or partners as the case may be, their servants, agents, officers or each of them from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in household appliances including sewing machines under trade mark USHA represented in unique artistic style of the USHA trade mark logo of the plaintiff or any other style deceptively similar thereto as may amount to infringement of copyright registration nos A- 5348/70 and A-25186/79, a decree of permanent injunction restraining the defendants, their associate companies, their proprietor or partners as the case may be, their servants, agents, officers or each of them from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in household appliances including sewing machines and electric fans under the trade mark/trade name USHA or the mark USHA KI KIRAN or USHA RANI or the name USHA company or any other mark or name of which the trade mark USHA forms a part or from doing any other thing as is likely to lead to passing off of the defendants goods or business as the goods or business of the plaintiff and for a decree of permanent injunction restraining the defendants, their associate companies, their proprietor or partners as the case may be, their servants, agents, officers or each of them from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in household appliances including sewing machines and Electric Fans bearing the trade mark/trade name USHA or the mark USHA KI KIRAN or USHA RANI or the name USHA company or any other mark or name of which the trade mark USHA forms a part or from Suit No. 247/08/91 10 doing anything as is likely to amount to an act of unfair competition aimed at causing loss, damage or injury to the plaintiffs business or reputation be passed in favour of the plaintiff and against the defendants.. It is also prayed that an order for rendition of accounts of profits illegally earned by the defendants, through the use of the impugned mark and a decree be passed in favour of the plaintiff in the sum of the amount so ascertained and an order for delivery-up of all impugned goods bearing the trade mark or the trade name USHA whether in the finished or unfinished form, stationery articles, wrapping and packing material, advertising material, blocks, dies etc., for purpose of destruction or erasure alongwith costs of the suit be passed in favour of the plaintiff and against the defendants.
8. The suit was filed against 6 defendants but during the pendency of the proceedings, defendant no. 6 expired and vide order dated 06.08.2009 suit against defendant no. 6 stood abated. The defendants have filed WS and have contested the suit. In the WS, defendants have taken objections that the plaintiff has no cause of action against the defendants as the trade mark USHA KI KIRAN is different and is distinctive of the defendants as against the trade mark USHA of the plaintiff. The English translation of the word USHA KI KIRAN is "RAY OF DAWN" and to emphasise the same the defendants have so designed the trade mark USHA KI KIRAN by depicting the device of rising sun behind the mountains. The trade mark USHA KI KIRAN was honestly adopted by the defendants' predecessors. The first impression which the purchaser gets is that the marks are Suit No. 247/08/91 11 absolutely different as the meaning of the word USHA KI KIRAN with device of rising sun is "RAY OF DAWN" while the first impression of the mark 'USHA' of the plaintiff would give the name of female. The trade mark of the defendants is distinctive of the defendants. It is stated that the trade mark USHA KI KIRAN was honestly adopted by Shri Narinder Kumar Jaggi as a matter of giving affection to the children of his elder brother, he himself being unmarried. It is stated that the name of daughter of Shri S. K. Jaggi is Kumari Usha and the name of his son is Master Kiran Kumar and the word 'KI' has been added in between these two pronouns as stated above to mark it a maxim which in English language means "RAY OF DAWN". The suit of the plaintiff is barred by the limitation as the cause of action if any arose in favour of the plaintiff on 15th May, 1977 when the plaintiff is stated to have come across the advertisement of the defendants and on 22nd June, 1977 when the plaintiff is stated to have sent the notice to the defendants through M/s L. S. Dawar & Co. It was the same trade mark USHA KI KIRAN for which the notice was issued by M/s L. S. Dawar & Co. to the defendants basing their claim on the registration of the trade mark USHA in respect of sewing machines, which is also base for the present suit. Admittedly the present suit has been filed by the plaintiff after more than 13 years of the admitted knowledge of the trade mark USHA KI KIRAN by the defendants, though, in fact the mark USHA KI KIRAN has been in use continuously since 1973 as explained above. The present suit of the plaintiff suffers from great delay and unexplained latches and acquiescence. The defendants and their predecessors have been using the Suit No. 247/08/91 12 trade mark USHA KI KIRAN continuously since the year 1973 to the knowledge of the plaintiff. The plaintiff have even admitted the knowledge in the plaint at least since 15th May, 1977 when the plaintiff is stated to have come across the advertisement or the defendants and as per the own admission the notice dated 22nd June, 1977 was sent by the plaintiff. It is stated that the trade mark USHA KI KIRAN was adopted by M/s Jaggi Sewing Machine Co. of which Shri Narinder Kumar Jaggi was the sole proprietor. He used the trade mark continuously and openly since 1973 till October, 1976. On 20.10.1976 the aforesaid Shri Narinder Kumar Jaggi assigned the trade mark alongwith the goodwill of the business in favour of defendant no. 1 firm. The defendant no. 1 has since then been continuously using the trade mark openly, extensively and giving wide publicity through various mass media including advertisement in local newspapers, hoardings etc. etc. and no suit whatsoever been filed by the plaintiff earlier. It is stated that this Court has got no jurisdiction to entertain and try the preset suit. The provisions of Section 62(2) of Copyright Act are not attracted as there is no infringement of copyright by the defendants. The defendants have never sold the sewing machine or for that matter any goods whatsoever in Delhi or at any place beyond the State of Rajasthan. There is no circulation of Tarun Rajasthan in Delhi. It is merely a local newspaper which is not even sold beyond the Jodhpur Division and in any case not out of Rajasthan. The trade mark application no. 362755 was admittedly withdrawn by the defendant on 07.02.1989 and there was no application under no. 362755 pending as on the date of filing of suit. The opposition Suit No. 247/08/91 13 proceedings under no. DEL/4447 were completed on 23.02.1989. The fresh application no. 503285 of the defendants is pending with the Registrar of Trade Marks Ahmedabad. The present suit has been filed by the plaintiff in Delhi only to harass the defendants.
9. It is stated in the WS that the trade mark USHA RANI with device of queen in between the words USHA and RANI are different and distinct from the trade mark USHA of the plaintiff. The word Usha has been taken as the name of the daughter of the one of the partners of defendant no. 1 firm. In order that it be distinct from the trade mark USHA of the plaintiff the defendants have adopted the device of queen placed in between these two words. The defendant no. 1 is holding the registration of copyright in the distinctive label of USHA KI KIRAN and the label of Usha Rani under nos. A- 18283/77 and A-47869/85 respectively which the defendants are using in respect of sewing machine for State of Rajasthan and the said registration is valid, subsisting and in force. No rectification/cancellation petition whatsoever is pending against the said registered copyright. Even the plaintiff have not challenged the said registration. No allegation of misrepresentation on the part of the defendants have been made by the plaintiff nor has it been pleaded by the plaintiff. The plaintiff is not the owner of and proprietor of the trade mark USHA and/or there is a trafficking in the trade mark Usha, it being used by various companies besides Usha has been registered by various companies for various goods. The present suit has not been properly valued for the purpose of court fee and jurisdiction and no proper court fee Suit No. 247/08/91 14 has been paid in respect of the relief claimed. The suit has not been signed, verified and filed by the proper and authorised person. It is stated that the suit is liable to be dismissed.
10. The plaintiff has filed replication to the WS of defendants. In the replication, the plaintiff has reiterated the contents of the plaint and has controverted the allegations of defendants as alleged in the WS. It is denied that the trade marks USHA KI KIRAN of the defendants and USHA of the plaintiff are different. The plaintiff's trade mark USHA forms an essential and key feature of the defendants trade mark and its use is likely to lead to confusion or deception amongst the purchasing public and the trade as to the origin of the defendants' goods. It is denied that the suit of the plaintiff is barred by limitation. It is also denied that the suit of the plaintiff suffers from delay, unexplained latches and acquiescence. It is denied that this Court has no jurisdiction to entertain and try the present suit. It is denied that defendant no. 1 is the owner of any copyright as alleged. It is further denied that the mark USHA has been registered by various companies for various goods.
11. From the pleadings of the parties, following issues were framed on 08.01.1992 :-
1. Whether the Court has got the jurisdiction to try the present suit?
2. Whether the defendants are guilty of infringement of Trade Mark USHA of plaintiff by using the trade mark USHA KI KIRAN with the device of rising sun behind the mountains and also by using the trade mark USHA RANI with device of queen of playing cards in between Suit No. 247/08/91 15 the words USHA and RANI?
3. Whether the plaintiff are the proprietors of the trade mark USHA by their user as well as by virtue of its registration, if so, its effect?
4. Whether the defendants are passing off their goods under the trade marks USHA KI KIRAN (label) and USHA RANI (label) as detailed in issue No. 2?
5. Whether the defendants can be restrained from using the registered copyright Nos. A-18283/77 and A-
47869/85?
6. Whether the defendants are the honest and concurrent users of the trade marks USHA KI KIRAN and USHA RANI with pictorial devices, if so, its effect?
7. Whether there is trafficking in trade mark USHA of the plaintiff, if so, its effect?
8. Whether the trade mark USHA is being used by others for various goods and is also registered for various goods in favour of various other persons, amounting to publici juris?
9. Whether the suit is barred by time?
10. Whether the suit is barred on account of delay in the institution of the same as alleged in the written statement, if so, its effect?
11. Whether the plaintiff is entitled to the relief claimed in para 34 of the plaint?
12. Whether the suit has been properly valued and proper court fees has been paid?
13. Whether the plaint has been signed, filed and verified by proper and authorised person?
12. The plaintiff examined Shri R. K. Gupta, Constituted Attorney as PW-1 and PE was closed on 01.04.2005.
Suit No. 247/08/91 1613. Defendants examined Shri Surender Kumar Jaggi as DW-1 and Shri Narender Kumar Jaggi as DW-2 and DE was closed on 01.09.2005.
14. I have heard the ld. Counsel for parties and carefully perused the record. My findings on the specific issues are as under :-
15. Issue No. 1In para 5 of PO of WS, the defendants have taken the objection that this Court has no jurisdiction to entertain and try the present suit. The defendants have pleaded that they never sold the sewing machines or any other goods whatsoever in Delhi or at any place beyond the State of Rajasthan and the defendants are not residing in Delhi and no cause of action has arisen in Delhi. The contention of ld. Counsel for the defendant is that the present suit was filed in the year 1991 and provisions of Trade and Merchandise Marks Act, 1958 are applicable to this case as the present shit has been filed prior to enactment of Trade Marks Act, 1999. The contention of ld. Counsel for the defendant is that the Trade and Merchandise Marks Act, 1958 did not provide for the place of trial as provided by Section 134 of the Trade Marks Act, 1999, hence, the suit in respect of infringement of trade mark and passing off shall be governed by provisions of Section 20 of CPC.
16. The contention of ld. Counsel for the plaintiff is that Section 159 (4) of the Trade Marks Act, 1999 provides that Suit No. 247/08/91 17 notwithstanding anything contained in other provisions of this Act, any legal proceeding pending in any court at the commencement of this Act may be continued in that court as if this Act has not been passed and on account of provisions of Section 159(4) of Trade Marks Act, 1999, the provisions of the new Act i.e. Trade Marks Act, 1999 shall apply. Section 159(1) of the Trade Marks Act, 1999 provides that the Trade and Merchandise Marks Act, 1958 is hereby repealed. A bare reading of Section 159(4) of Trade Marks Act, 1999 provides that any legal proceeding pending in any Court at the commencement of the Trade Marks Act, 1999 may be continued in that Court if the Trade Marks Act, 1999 had not been passed. The provisions of Section 159(4) of Trade Marks Act, 1999 clearly show that the proceedings already continuing under the Trade and Merchandise Marks Act, 1958 shall continue as if the Trade Marks Act, 1999 has not come into existence which amply prove that the cases filed prior to enactment of the Trade Marks Act, 1999 shall be governed by the provisions of the Trade and Merchandise Marks Act, 1958. However, ld. Counsel for the plaintiff has contended that in the present suit apart from relief in respect of infringement of trade mark, the plaintiff has also claimed relief in respect of violation of copyright and the same is governed by provisions of Section 62(2) of the Copyright Act, 1957, hence, this Court has the territorial jurisdiction to try the present suit.
17. The contention of ld. Counsel for the defendants is that although in the present suit, the plaintiff has joined causes of action in respect of infringement of trade mark and copyright Suit No. 247/08/91 18 but this Court has no jurisdiction to try the reliefs as sought in respect of infringement of trade mark and ld. Counsel for the defendant has relied on decision in Dhodha House & Patel Field Marshal Industries vs. S. K. Maingi & P. M. Diesel Ltd., 2006 (32) PTC 1 (SC) wherein the Hon'ble Supreme Court examined question of extent of jurisdiction of civil Court to determine a lis regarding infringement of the provisions of Copyright Act, 1957 and Trade and Merchandise Marks Act, 1958. In this case the Hon'ble Supreme Court held :
"19. Cause of action, as is well-settled, is a bundle of facts which are necessary to be proved in a given case. Cause of action, it is trite, if arises within the jurisdiction of the court concerned empowers the court to entertain the matter.........."
20. The jurisdiction of the District Court to determine a lis under the 1957 Act as also the 1958 Act must, thus, be instituted where the whole or a part of cause of action arises. Sub- section (2) of Section 62 of the 1957 Act provides for an additional Forum therefor in the following terms :
"(2) For the purpose of 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 institution of the suit or other proceeding, the person instituting the suit or other proceeding or, where there are more than one such persons, any of them actually and voluntarily resides or carries on business or personally works for gain."
21. Admittedly, no such additional Forum had been created in terms of the provisions of Suit No. 247/08/91 19 the 1958 Act."
18. In Dhodha House's case (supra), the Hon'ble Supreme Court held that the objects and reasons for engrafting the provisions of Section 62(2) of Copyright Act, 1957 was to enable the authors to file a suit for violation of the Copyright Act, 1957 at the place where they reside. It was further held that in terms of sub-section (1) of Section 62, suit can be instituted and the proceedings can be initiated in respect of matter arising out of the said chapter for infringement of the copyright in any work or the infringement of any other right conferred thereunder and does not confer jurisdiction upon a District Court where the plaintiff resides, if a cause of action arises under the Trade and Merchandise Marks Act, 1958. The Hon'ble Supreme Court held that :
"24. Order II Rule 3 of the Code provides that the plaintiff may unite in the same suit several causes of action against the same defendant, or the same defendants jointly. The said order contemplates uniting of several causes of action in the same suit. By necessary implication, a cause of action for infringement of Copyright and a cause of action for infringement of Trade Mark or a cause of action of passing off would be different. Even if one cause of action has no nexus with another, indisputably Order II Rule 3 may apply. However, by reason of application of Order II Rule 3 of the Code ipso facto would not confer jurisdiction upon a court which had none so as to enable it to consider infringement of trade mark under the 1957 Act as also the 1958 Act.
25. It is trite law that a judgment and order passed by the court having no territorial jurisdiction would be nullity."Suit No. 247/08/91 20
19. Ld. counsel for the defendants has also relied upon decision in The Jay Engineering Works Ltd. vs. Ramesh Aggarwal, 2006 (33) PTC 561 (Del.) which was a composite suit under the Trade and Merchandise Marks Act, 1958 claiming infringement of trade mark based on right in the trade mark and passing off and Copyright Act, 1957 for infringement of registered and unregistered copyright and Designs Act, 2000 for infringement of registered design. The Hon'ble Court observed :
"8. At this juncture, it may pertinently be pointed out that the defendant is not disputing the jurisdiction of this Court under Section 62 (2) of the Copyright Act, 1957 (though the infringement of copyright is naturally disputed), but seeks to anchor its case on the judgment delivered by the Apex Court in 2006 (32) PTC 1 (SC) Dhoda House and Patel Field Marshal Industries v. S. K. Maingi and P. M. Diesel Ltd. The contention of the defendant is that the plaintiff in the jurisdiction paragraph, as set out above, has claimed jurisdiction of this Court on the basis of a wrong view of law that : "Since the suit based on copyright is available in this Hon'ble Court, the plaintiffs are entitled to sue the defendant in this Hon'ble Court for passing off as well as infringement of trademarks and registered design". This proposition of the plaintiff, the defendant asserts, is contrary to the law laid down by the Hon'ble Supreme Court in the case of Dhoda House (supra)."
"15. As stated at the outset, there is no dispute that for the relief of infringement of Copyright, this Court is vested with jurisdiction by virtue of Section 62(2) of the Copyright Act, in as much as the plaintiff admittedly has its registered office in Delhi and carries on business and works for gain in Delhi. There is no quarrel thus far. The contention of the Suit No. 247/08/91 21 defendant, however, is that in view of the law laid down by the Apex Court in Dhodha House (supra), this Court has no territorial jurisdiction in respect of the cause of action pertaining to infringement of trade mark, infringement of design and passing off, which part of the cause of action will be governed by Section 20 of the CPC. The defendant is from Hyderabad from where it is manufacturing and exporting its products to the Middle East. It neither resides nor carries on business in Delhi.
"29. In view of the aforesaid discussion, it must be held that the ratio of the decision of the Supreme Court in Dhoda House (supra) is squarely applicable. So far as the reliefs pertaining to infringement of trademark, design and passing off are concerned, this court will have no jurisdiction to entertain the present suit. Needless to state that for the relief against infringement of copyright, this court has the jurisdiction. Accordingly, it will be open to the plaintiff to file a fresh suit in the court of competent jurisdiction so far as the reliefs for infringement of trademark, design and passing off are concerned."
20. In Dabur India Limited vs. K. R. Industries, 2008 (37) PTC 332 (SC) it was held :
"19. In Dhodha House (supra) this Court was concerned with the correctness of judgments of the Allahabad High Court in Surendra Kumar Maingi vs. M/s Dodha House, [AIR 1998 Allahabad 43] and the decision of the Delhi High Court in : P. M. Diesels Ltd. v. M/s Patel Field Marshal, [AIR 1998 Delhi 225]
20. It was clearly held that a judgment passed by a court having no territorial jurisdiction is a nullity. As regards the cause of action under the 1957 Act and a cause of Suit No. 247/08/91 22 action under the 1958 Act and or a passing off action, it was held that sub-section (2) of Section 62 would confer jurisdiction on a court where the plaintiff resides. The cause of action in respect of others was stated to be where the defendant resides. It was also noticed that in a given case the petition under the 1957 Act or 1958 Act may be overlapping, holding :-
"44. The territorial jurisdiction conferred upon the court in terms of the provisions of the Code of Civil Procedure indisputably shall apply to a suit or proceeding under the 1957 Act as also the 1958 Act. Sub-section (2) of Section 62 of the 1957 Act provides for an additional forum. Such additional forum was provided so as to enable the author to file a suit 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."
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 Suit No. 247/08/91 23 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."
21. As per the plaint filed by the plaintiff, the plaintiff is a company incorporated under the Indian Companies Act, 1913 and having its registered office at 23, Kasturba Gandhi Marg, New Delhi and all the defendants are based at Jodhpur, Rajasthan. By way of present suit, the plaintiff has prayed for decree of permanent injunction thereby restraining the defendants from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in household appliances including sewing machines and electric fans bearing the trade mark USHA or the mark USHA KI KIRAN or USHA RANI or the name of its trade mark USHA amounting to infringement of registered trade mark nos. 3058, 195536, 195537 and 128504 of the plaintiff and for restraining the defendants from dealing in household appliances including sewing machine under the mark USHA, represented in the unique, artistic style of USHA trade mark logo of the plaintiff or any other style deceptively similar thereto as to amount to infringement of the copyright registration Nos. A-5348/70 and A-25186/79. The plaintiff has also prayed for decree of permanent injunction thereby restraining the defendants from passing off their goods or Suit No. 247/08/91 24 business as the goods and business of the plaintiff and rendition of accounts, delivery up of all impugned goods bearing the trade mark/trade name USHA.
22. The plea of the plaintiff is that they have been using the trade mark USHA (logo) consisting of the word USHA written in bold letters upon a background of four contiguous blocks, one for each letter and the said logo is unique and is original artistic work within the meaning of Section 2(c) of the Copyright Act, 1957 and the plaintiff is owner of the copyright in the said artistic work by virtue of copyright registration nos. A-5348/70 and A-25186/79.
23. This is a composite suit filed by the plaintiff under the Trade and Merchandise Marks Act, 1958 and the Copyright Act, 1957. In order to bring the suit within the territorial jurisdiction of this Court as regards the reliefs claimed in respect of Trade and Merchandise Marks Act, 1958 is concerned, the plaintiff was required to prove that the suit has been filed in terms of Section 20 of CPC which reads as under :
20.Other suits to be instituted where defendants reside or cause of action arises.--Subject to the limitations aforesaid, every suit shall be instituted in a Court within the local limits of whose jurisdiction-
(a)the defendant, or each of the defendants where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain; or
(b)any of the defendants, where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, Suit No. 247/08/91 25 or personally works for gain, provided that in such case either the leave of the Court is given, or the defendants who do not reside, or carry on business, or personally work for gain, as aforesaid, acquiesce in such institution; or
(c)the cause of action, wholly or in part, arises.
24. As per the plaint, the defendants are based at Jodhpur, Rajasthan. In order to prove that part of cause of action as regards the reliefs in respect of Trade and Merchandise Marks Act, 1958 is concerned, the plaintiff examined Shri R. K. Gupta as PW-1 who adduced evidence by way of affidavit Ex.PW1/A. In para 13 of his affidavit, PW-1 Shri R. K. Gupta has stated that some time in the year 1977 the plaintiff came across an advertisement in the Hindi newspaper Tarun Rajasthan dated 15.05.1977 released by defendant no. 2 entitled "Usha Company (Regd.) Usha Ki Kiran Sewing Machines and Fans" and in para 17 of his affidavit Ex.PW1/A, PW-1 has stated that on 11.06.1980 defendant no. 1 applied for the registration of the mark USHA KI KIRAN in Class 7 of the Trade and Merchandise Marks Act, 1958 in respect of sewing machines and parts thereof and the said application was advertised in Trade Marks Journal no. 865 and the plaintiff opposed the application and, thereafter, defendant no. 1 informed the Registrar of its decision to withdraw the said application. In his affidavit which was filed in the form of evidence, PW-1 Shri R. K. Gupta has not stated that the defendants have been selling their goods under the infringing trade mark in Delhi. PW-1 Shri R. K. Gupta stated in the cross-examination that the present suit has been filed against the defendants for infringement of trade mark USHA in respect of sewing machines and USHA Suit No. 247/08/91 26 logo for sewing machines. PW-1 thereafter further stated in the cross-examination that he cannot say whether defendants were selling its goods under the trade mark USHA KI KIRAN or USHA RANI in Delhi as he was not connected with the marketing and thereafter he further stated in the cross-examination that he cannot say that defendants have never sold the goods in Delhi. PW-1 has further stated in cross-examination that he does not know whether any person from the plaintiff company has ever bought any article sold under the trade mark USHA RANI & USHA KI KIRAN in Delhi. PW-1 further stated in cross- examination that he does not know any dealer selling goods under the trade mark USHA KI KIRAN and USHA RANI in Delhi. PW-1 stated in cross-examination that he has not come across any advertisement in respect of trade mark USHA RANI & USHA KI KIRAN in Delhi excluding the publication in Trade Marks Journal. The plaintiff has not adduced any evidence to the effect that the defendants were selling their goods under the infringing trade mark in Delhi or the same were available in Delhi for sale. The plaintiff has not examined any witness who could depose that defendants were manufacturing or selling their goods under the trade mark which was deceptively similar to the trade mark of the plaintiff in Delhi. The plaintiff has not adduced any evidence to the effect that the defendants carried on any business activity which could bring the suit in respect of Trade and Merchandise Marks Act, 1958 within the territorial jurisdiction of this Court.
25. The contention of ld. Counsel for the plaintiff is that the Suit No. 247/08/91 27 defendant had filed application for registration of trade mark in Delhi and subsequently the same was withdrawn by defendant no. 1 and filing of the application for registration of trade mark in Trade Marks Registry, New Delhi by the defendants would confer jurisdiction upon the Courts in Delhi to entertain the present suit. In para 17 of the plaint, it is stated that on 11.06.1980, defendant no. 1 applied for registration of trade mark USHA KI KIRAN in class 7 of the Trade Mark Act in respect of sewing machines and parts thereof and the same was advertised in Trade Marks Journal no. 865 and the said application was opposed by the plaintiff but the defendant no. 1 withdrew the said application. The question whether the filing of application for registration of trade mark would confer jurisdiction at the place where said application was filed was considered by the Hon'ble Supreme Court in the case of Dodha House (supra), and the Hon'ble Court was pleased to hold :
"32. A cause of action will arise only when a registered trade mark is used and not when an application is filed for registration of the trade mark. In a given case, an application for grant of registration certificate may or may not be allowed. The person in whose favour, a registration certificate has already been granted undisputably will have an opportunity to oppose the same by filing an application before the Registrar, who has the requisite jurisdiction to determine the said question. In other words, a suit may lie where an infringement of trade mark or copyright takes place but a cause of action for filing the suit would not arise within the jurisdiction of the court only because an advertisement has been issued in the Trade Marks Journal or any other journal, notifying the factum of filing of such an application."Suit No. 247/08/91 28
26. From the aforesaid discussions, it is clear that the plaintiff has failed to prove that any part of cause of action in terms of Section 20 of CPC has arisen in Delhi regarding reliefs of infringement of trade mark and passing off, as claimed in respect of the Trade and Merchandise Marks Act, 1958.
27. In order to bring the suit within the territorial jurisdiction of this Court, in para 32 of the plaint, the plaintiff has stated that this Court has jurisdiction to entertain and try the present suit by virtue of Section 62(2) of the Copyright Act, 1957 as the plaintiff is carrying on the business at Delhi. The contention of ld. Counsel for the plaintiff is that by way of present suit, the plaintiff has also sought relief of decree of injunction thereby restraining the defendants from dealing in household appliances including sewing machines under the trade mark USHA represented in the unique artistic style of USHA trade mark logo of the plaintiff or any other style deceptively similar thereto as may amount to infringement of copyright registration no. A-5348/70 and A-25186/79. Section 62 of the Copyright Act, 1957 reads as under:
62. Jurisdiction of court over matters arising under this Chapter -
(1) Every suit or other civil proceeding arising under this Chapter in respect of the infringement of copyright in any work or the infringement of any other right conferred by this Act shall be instituted in the district court having jurisdiction.
(2) For the purpose of 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, Suit No. 247/08/91 29 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 other proceeding or, where there are more than one such persons, any of them actually and voluntarily resides or carries on business or personally works for gain.
28. In para 1 of the plaint, the plaintiff has stated that they have registered office at 23, Kasturba Gandhi Marg, New Delhi. The plaintiff examined Shri R. K. Gutpa as PW-1 who adduced evidence by way of affidavit Ex.PW1/A and in para 1 of his affidavit, PW-1 has reiterated the contents of para 1 of the plaint by stating that the plaintiff has its registered office at 19, Kasturba Gandhi Marg, New Delhi - 01. The defendants have not rebutted that the plaintiff carries on business in Delhi. Accordingly, in view of Section 62(2) of the Copyright Act, 1957, this Court will have jurisdiction only to adjudicate the dispute between the parties regarding infringement of the copyright, as claimed by the plaintiff. This issue stands answered accordingly.
29. Issue No. 13In para 1 of the plaint, it is stated that Shri Deepak Gupta, Deputy General Manager of the plaintiff is authorised and competent to sign and verify the plaint and institute these proceedings. The contention of ld. Counsel for the plaintiff is that the plaintiff has filed on record copy of the attorney executed in favour of Shri Deepak Gupta by which he was autorised to sign and file the present suit. However, ld. Counsel for the defendant has contended that although Shri Deepak Gupta filed his affidavit in the form of evidence but Suit No. 247/08/91 30 he did not appear for examination and he has failed to prove the attorney executed in his favour. As per order dated 01.08.2001, ld. Counsel for the plaintiff had submitted that the plaintiff has filed affidavit of Shri Deepak Gupta by way of evidence on which he was to be cross-examined by the defendant, however, he has left the job of the plaintiff and plaintiff submitted that they would be filing affidavit of some other person. It is to be noted that although the plaintiff filed affidavit of Shri Deepak Gupta in the form of evidence but he was not examined by the plaintiff as a witness and in order to prove its case the plaintiff examined Shri R. K. Gupta as PW-
1.
30. PW-1 Shri R. K. Gupta adduced evidence by way of affidavit and in para 1 of his affidavit PW-1 has stated that Shri Deepak Gupta had signed and verified the plaint in capacity as Deputy General Manager of plaintiff company and he has since left and is no longer working with the plaintiff company and the power of attorney executed in favour of Shri Deepak Gupta by the plaintiff company is already filed with the suit and the same is Ex.PW1/1. As per para 3 of power of attorney of attorney Ex.PW1/1, Shri Deepak Gupta was was authorised to sign and verify all plaints, petitions, statements, applications, affidavits, declarations, memorandum of appeal and any other requisite documents. The contention of ld. Counsel for the plaintiff is that power of attorney Ex.PW1/1 by which Shri Deepak Gupta was authorised to file the suit is duly notarized and in view of Section 85 of the Indian Evidence Act, 1972, there is presumption in favour of said attorney. Section 85 of Indian Evidence Act, 1872 provides Suit No. 247/08/91 31 that the Court shall presume that every document purporting to be a power-of-attorney, and to have been executed before, and authenticated by, a Notary Public, or any court, Judge, Magistrate, Indian Consul or Vice-Consul, or representative of the Central Government, was so executed and authenticated. In Mars Incorporated represented by Power of Attorney Agent, Mr. A. Arulselvan v. Mares Confectioneries P. Ltd., MANU/TN/0469/2007 it was held that a suit for trade mark infringement cannot be dismissed only on technical view doubting validity of Power of Attorney in view of Section 85 of Evidence Act. The contention of ld. Counsel for the defendants is that by power of attorney Ex.PW1/1 on which reliance has been placed by the plaintiff Shri Deepak Gupta was authorised to sign and verify the plaint but the plaintiff has failed to prove that the plaint has been signed by Shri Deepak Gupta. The plaintiff examined Shri R. K. Gupta as PW-1. PW-1 stated in cross- examination that he does not remember when Shri Deepak Gupta left the plaintiff company and it is true that Shri Deepak Gupta left the company before 1996. PW-1 further stated in cross-examination that he and Shri Deepak Gupta have not worked together in the same department at any point of time. PW-1 stated in cross-examination that Ex.PW1/1 was not executed in his presence and resolution on the basis of which Ex.PW1/1 was executed in favour of Shri Deepak Gupta was also not passed in his presence. PW-1 stated in cross-examination conducted on 01.04.2005 that the plaint was not filed by Shri Deepak Gupta in his presence. The contention of ld. Counsel for the defendants is that PW-1 has not worked with Shri Deepak Gupta and in Suit No. 247/08/91 32 the circumstances, the plaintiff has failed to prove that the plaint was signed by Shri Deepak Gupta. It is to be noted that although the defendants have taken the plea that the plaint has not been signed by Shri Deepak Gupta and although PW-1 stated in cross-examination that he and Shri Deepak Gupta have not worked together in the same department at any point of time and PW-1 also stated that the plaint was not signed by Shri Deepak Gupta in his presence but no suggestion was given to PW-1 in the cross- examination to the effect that he does not identify signatures of Shri Deepak Gupta as during the course of his official duties he has not seen or received any document signed by Shri Deepak Gupta and on that account he is not in a position to identify the signatures of Shri Deepak Gupta on the plaint also. Accordingly, this issue is decided in favour of the plaintiff and against the defendants.
31. Issue Nos. 2, 3, 4, 6, 7, 8, 9 and 10Since all these issues involve common discussion of facts and law, hence, for the sake of brevity all these issues are being taken up together. In findings on issue no.1 above, it has been held that this Court has no territorial jurisdiction to entertain the present suit regarding infringement of trade mark and passing off as claimed under the provisions of Trade and Merchandise Marks Act, 1958. In para 13 of the plaint it is stated that in the year 1977 the plaintiff came across an advertisement in Hindi newspaper called Tarun Rajasthan datd 15.05.1977 in respect of USHA KI KIRAN sewing machines and fans and legal notice was sent to the defendants on 22.06.1977 calling them to desist from using Suit No. 247/08/91 33 the said mark USHA KI KIRAN or any mark deceptively similar thereto. In para 15 of the plaint, it is stated that on 14.09.1977, Advocate of the plaintiff sent reminders to defendant no. 2 to comply with the conditions of the notice dated 22.06.1977 and thereafter, the plaintiff applied to the Registrar of Trade Mark, Bombay for search of the mark relating to the word USHA. In para 16 of the plaint, it is stated that another notice dated 28.02.1980 was sent to defendant no. 2 with several reminders following it. In para 18 of the plaint, it is stated that sometime in October, 1985 the plaintiff applied for registration of its mark USHA vide application no. 444893 and the plaintiff came to know about two applications filed by the defendants bearing nos. 362755 and 423440. In para 19 of the plaint it is stated that the plaintiff came to know through official search report that defendants had again filed application for registration of trade mark USHA KI KIRAN. The contention of the defendants is that in para 13 of the plaint, the plaintiff has stated that they came to know about the use of trade mark USHA KI KIRAN by the defendants in the year 1977 and in subsequent paras of the plaint, the plaintiff has stated that thereafter they were issuing notices to the defendants and defendants did not stop user of the trade mark USHA KI KIRAN and the present suit was filed in the year 1990 and the suit is barred by time, latches and acquiescence. The plea regarding the suit being barred on account of time, latches and acquiescence has been taken in relation to the reliefs of infringement and passing off of the trade mark USHA which are the reliefs claimed under the Trade and Merchandise Marks Act, 1958. In view of findings on issue Suit No. 247/08/91 34 no. 1 above as this Court has no territorial jurisdiction to entertain the present suit regarding infringement of trade mark and passing off as claimed under the provisions of Trade and Merchandise Marks Act, 1958, hence, no findings are required to be given on all these issues. All these issues stand answered accordingly.
32. Issue No. 5In para 4 of the plaint, it is stated that trade mark USHA (logo) consists of word USHA written in bold letters in white upon a background of four contiguous blocks, one for each letter and the said logo is unique and is the original artistic work within the meaning of Section 2(c) of the Copyright Act, 1957. It is further stated in para 4 of the plaint that the plaintiff is the owner of copyright in the said artistic work by virtue of copyright registration nos. A-5348/70 and A- 25186/79. In para 23 of the plaint it is stated that reproduction by the defendants of the word USHA in the stylised manner in which the plaintiff depicts its trade mark amounts to infringement of copyright registration nos. A- 5348/70 and A-25186/79. In para 5 of PO of WS the defendants have pleaded that provisions of Section 62(2) of the Copyright Act, 1957 are not attracted as there is no infringement of copyright by the defendants. In para 8 of PO of WS, the defendants have stated that defendant no. 1 is holding registration of copyright in the distinctive label of USHA KI KIRAN and label of USHA RANI under nos. A- 18283/77 and A-47869/85 respectively which the defendants are using in respect of sewing machines for the state of Rajasthan and the said registration is valid, subsisting and in Suit No. 247/08/91 35 force.
33. Contention of ld. Counsel for the defendants is that in order to prove that there has been infringement of the copyright of the plaintiff, the plaintiff has to prove that the defendants have copied the artistic work of the plaintiff in substantial and material aspects and there are similarities in the artistic work of the defendants as that of the work of the plaintiff. Ld. Counsel for the defendant has contended that perusal of the mark of the plaintiff and defendants would show that there are total dissimilarities in the same as artistic work of the plaintiff consists of word USHA written in four contiguous blocks while the work of the defendants would clearly show that the words USHA KI KIRAN are written against mountain and rising sun and words USHA RANI have been written in peculiar artistic manner with capital U being bigger than the other alphabets of USHA and R being bigger than the other alphabets of RANI and in between USHA and RANI there is depiction of one queen. The contention of ld. Counsel for the plaintiff is that in both the works i.e. USHA KI KIRAN and USHA RANI, the word USHA which is substantial feature of the mark of the plaintiff has been used. However, ld. Counsel for the defendant has contended that for copyright infringement the similarity between the presentation and artistic work has to be seen and the Court is not to dwell into merits of the trade mark USHA. In Associated Electronic & Electrical Industries vs. Sharp Tools, AIR 1991 Kant 406, it was held :
26. .....................As rightly pointed out by the Copyright Board that there can be no copyright in the word or words, but the right Suit No. 247/08/91 36 can only be in the artistic manner in which the same is written, and in this case the works were totally dissimilar......................................
34. The contention of ld. Counsel for the plaintiff is that in the cross-examination, DW-1 has admitted that word USHA is the prominent feature of their mark. It is to be noted that in the cross-examination of DW-1, plaintiff had put question to the effect that it is correct that key feature of both these trade marks and trade style Usha Company is word USHA. The aforesaid suggestion was given by counsel for the plaintiff to DW-1 in the cross-examination from the perspective of the trade mark to the effect that word USHA forms the key feature of the trade mark of the defendants. It is to be noted that in findings on issue no.1 above, it has been held that this Court has no territorial jurisdiction to entertain the present suit regarding infringement of trade mark and passing off as claimed under the provisions of Trade and Merchandise Marks Act, 1958.
35. The defendants have filed on record their copyright registration being registration no. A-18283/77 dated 01.09.1977 Ex.DW1/2 and as per the same the work of the defendant which was registered by the Copyright office is mountain and rising sun against which the words USHA KI KIRAN are mentioned and vide registration no. A47869/85 dated 05.06.1985 Ex.DW1/3 the work of the defendants which is registered is USHA RANI and in between the words USHA and RANI, a picture of queen is drawn. The copyright certificate nos. A-5348/70 dated 24.03.1970 and A-25186/79 dated 03.09.1979 of the plaintiff are Ex.PW1/7 and Suit No. 247/08/91 37 Ex.PW1/8 as per which the work of the plaintiff which is registered is four contiguous blocks bearing alphabets USHA in block letters.
36. Section 2(m) of the Copyright Act, 1957 provides that infringing copy means in relation to a literary, dramatic, musical or artistic work a reproduction thereof otherwise then in the form of a cinematographic film. Section 14 (a) of the Copyright Act, 1957 reads as under :-
14. Meaning of copyright.- For the purposes of this Act, "copyright" means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely :-
(a). in the case of a literary, dramatic or musical work, not being a computer programme,-
(i) to reproduce the work in any material form including the storing of it in any medium by electronic means;
(ii) to issue copies of the work to the public not being copies already in circulation;
(iii) to perform the work in public, or communicate it to the public;
(iv) to make any cinematograph film or sound recording in respect of the work;
(v) to make any translation of the work;
(vi) to make any adaptation of the work;
(vii) to do, in relation to a translation or an adaptation
of the work, any of the acts specified in relation to the work in sub-clauses (i) to (vi);
37. Section 51 of the Copyright Act, 1957 envisages when copyright in work shall be deemed to be infringed. In particular Cl.(b) states that copyright shall be deemed to be infringed when any person.-
(i) makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, or Suit No. 247/08/91 38
(ii) distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright, or
(iii) by way of trade exhibits in public, or
(iv) imports into India, any infringing copies of the work.
38. Section 52 of the Copyright Act, 1957 enumerates the act, which shall not constitute an infringement of copyright.
39. In Associated Electronic & Electrical Industries vs. Sharp Tools (supra), it was held :
23. One of the surest test to determine whether or not there has been a violation of copyright is to see if the reader, spectator, or the viewer after having read or seen both the works would be clearly of the opinion and get an unmistakable impression that the subsequent work appears to be a copy of the first. In other words, dealing with the question of infringement of copyright of the applicant's work by the respondent's work.
40. Ld. Counsel for the plaintiff has relied on decision in Hindustan Pencils Ltd. vs. Alpha Cottage Industries & Others, 2001 PTC 504 (CB)(Goa) and has contended that the defendants have copied work of the plaintiff in substantial manner. Ld. Counsel for the defendants has contended that a visual examination of the copyright work of the plaintiff and Suit No. 247/08/91 39 the defendants would reveal that there is no similarity between the same what to talk of substantial similarities and has further contended that the facts of Hindustan Pencils Ltd. vs. Alpha Cottage Industries & Others (supra), as relied upon by the ld. Counsel for the plaintiff are not applicable to the facts of the present case as in the present case the artistic work of both the parties is different.
41. In Hindustan Pencils Ltd. vs. Alpha Cottage Industries & Others (supra), it was held that the similaritiy between the artistic work of the petitioner and the respondent are fundamental and substantial in material aspects of the mode of expression, i.e. it is in a red colour with black lines and the design of "Natraj" which would establish beyond doubt that it is a copy of the petitioner's work. However, in the present case the artistic work of the plaintiff which is registered vide certificates Ex.PW1/7 & Ex.PW1/8 consist of four contiguous blocks and in each block alphabets USHA are mentioned in capital letters while the artistic work of the defendants which is registered vide certificates Ex.DW1/2 & Ex.DW1/3 would clearly show that the works USHA KI KIRAN have been written against mountain and rising sun and in between the words USHA and RANI, picture of queen is depicted. The artistic work of the plaintiff as per Ex.PW1/7 & Ex.PW1/8 and that of the defendants as per Ex.DW1/2 & Ex.DW1/3 are totally dissimilar in font, design and style and there is no similarity between the two works and one who sees both the works cannot say that the work of defendants is a copy of work of plaintiff.
Suit No. 247/08/91 4042. The contention of the ld. Counsel for the defendant is that the artistic work in respect of USHA KI KIRAN which is registered vide Ex.DW1/2 and USHA RANI as registered vide Ex.DW1/3 is the original artistic work created by Shri Surender Kumar Jaggi DW-1 and he is the author of the said work. DW-1 Shri Surender Kumar Jaggi adduced evidence by way of affidavit and in para 5 of his affidavit, he has stated that they have registered for copyright of artistic label of the mark USHA KI KIRAN vide registration no. A-18283/77 Ex.DW1/2 and copyright of the artistic label of the mark USHA RANI vide registration no. 47869/85 Ex.DW1/3 and the plaintiff has not filed any cancellation petition against the same. It is to be noted that aforesaid copyrights of the defendants in respect of work of USHA KI KIRAN and USHA RANI are registered vide Ex.DW1/2 & Ex.DW1/3 since 01.09.1979 and 05.06.1985 but no petition for cancellation of the same has been filed by he plaintiff till date. If plaintiff was aggrieved that the defendants have copied work of the plaintiff and have obtained wrongful registration, in that case it was open for the plaintiff to have filed appropriate petition for cancellation of the certificates Ex.DW1/2 and Ex.DW1/3 but the plaintiff has not adopted this course.
43. In Hindustan Pencils Ltd. vs. Alpha Cottage Industries & Others (supra), reliance was placed on decision in R. G. Anand vs. M/s Delux Films, AIR 1978 SC 1613 wherein it was held that that in order to be actionable the copy must be a substantial and material one which at once leads to the conclusion that the defendant is guilty of an act of piracy. However, comparison of the works of the parties which are Suit No. 247/08/91 41 registered vide Ex.PW1/7 & Ex.PW1/8 and Ex.DW1/2 & Ex.DW1/3 would show that there is no similarity between the two works. As the plaintiff has failed to prove that the defendants have infringed copyright of the plaintiff, hence, defendants cannot be restrained from using the copyright nos. A-18283/77 and A-47869/85. This issue is accordingly decided in favour of the defendants and against the plaintiff.
44. Issue No. 12In para 33B of the plaint, the plaintiff has stated that the suit for the purpose of court fees and jurisdiction for the decree of permanent injunction restraining infringement of copyright is valued at Rs.200/- and court fees of Rs.20/- is affixed thereto. Section 7(iv)(d) of the Court Fees Act, 1870 provides that amount of court fee payable to obtain injunction shall be according to the amount at which relief sought is valued in the plaint. In terms of Section 7(iv)(d) of the Court Fees Act, 1870, it is held that the suit has been properly valued for the purpose of court fees and jurisdiction. This issue is accordingly decided in favour of the plaintiff and against the defendants.
45. Issue No.11 In findings on issue no. 1 above, it has been held that this Court has no territorial jurisdiction to entertain the present suit regarding regarding relief of infringement of trade mark and passing off, hence, it is open for the plaintiff to file a fresh suit in a Court of competent jurisdiction so far as the reliefs of infringement of trade mark and passing off are concerned. In findings on issue no. 5 above, it has been held Suit No. 247/08/91 42 that the plaintiff has failed to prove that the defendants have committed infringement of copyright of the plaintiff. Accordingly, the plaintiff is not entitled to reliefs as prayed. The suit of the plaintiff stands disposed of accordingly. Parties are left to bear their own costs. Decree sheet be prepared accordingly. File be consigned to record room.
(Announced in the open Court (HARISH DUDANI) on 30th April, 2010) ADDL. DISTT. JUDGE-15 (CENTRAL) DELHI Suit No. 247/08/91 43