Calcutta High Court
Raja Udyog Pvt. Ltd vs Raja Food Industries on 27 January, 2016
Author: Harish Tandon
Bench: Harish Tandon
IN THE HIGH COURT AT CALCUTTA
ORDINARY ORIGINAL CIVIL JURISDICTION
ORIGINAL SIDE
G.A. 2514 of 2014
With
C.S. 122 of 2014
G.A. 1950 of 2014
RAJA UDYOG PVT. LTD.
-VS-
RAJA FOOD INDUSTRIES
CORAM: HON'BLE MR. JUSTICE HARISH TANDON
For the Petitioner Mr. Ranjan Bachawat, Sr. Adv.,
Mr. S. Bose, Adv.,
Mr. P.R. Sinha, Adv.,
Mr. Gautam Kr. Ray, Adv.,
For the Respondent Mr. Debnath Ghosh, Adv.
Judgment on 27/01/2016
Harish Tandon, J.:
A point which is more or less settled is sought to be unsettled in the present application for revocation of the leave granted under Clause 12 and Clause 14 of the Letters Patent respectively.
2. The plaintiff filed the instant suit as registered owner of the trade mark alleging the infringement and passing off and prayed for decree for perpetual injunction against the Defendant. A leave under Clause 12 was sought as the Defendant is carrying on the business outside the jurisdiction of this Court. Such leave was granted. A further leave under Clause 14 of the Letters Patent was also sought and as the said provision mandates the issuance of show-cause, the Defendant was heard and the leave under the said clause was also granted on 8th July, 2015.
3. The contention of the Defendant / Applicant in this application is that Section 134(2) of the Trade Marks Act, 1999 though permits the suit based on infringement of the registered trade mark or relating to any right arising there from, to be instituted in Court of District Judge having jurisdiction within the local limits of whose jurisdiction the person instituting the suit actually or voluntarily resides or carrying on business or personally works for gain at the time of such institution and not in case of a passing off arising out of the use by the Defendant of any trade mark which is identical with or deceptably similar to the plaintiff's trade mark whether registered or unregistered. The said provision is sought to be interpreted by the Defendant / Appellant to mean that in case of a passing off, if admittedly the Defendant neither resides within the jurisdiction nor carries on any business therein, the same should be instituted before the Court within whose jurisdiction either the cause of action partly or wholly arises. In other words, it is sought to be contended that unless the ingredients of Section 20 of the Code of Civil Procedure is satisfied, the suit is incompetent before the Court if based on passing off.
4. The second limb the submission is that the composite suit alleging infringement of registered trade mark and passing off is incompetent if the Court lacks jurisdiction in respect of anyone of the causes of action. The argument is further advanced taking aid of Section 28 of the Act that the Defendant is also a registered owner of the trade mark and therefore the case of infringement is not maintainable. To buttress the aforesaid submission, the Defendant / Appellant relies upon the decision of the Bombay High Court in case of Priti Kiran Rajendra Katole -Vs- Harsha Katole reported in AIR 2014 Bombay Page 21. On the point of maintainability of the composite suit based on distinct causes of action whether the Court inherently lacks jurisdiction in respect of one of such causes of action, the reliance is placed upon the judgment of the Delhi High Court in case of Dharampal Premchand Ltd. -Vs- Golden Tobacco Products reported in 2007(34) PTC 633(Delhi) and of the Supreme Court in case of Paragon Rubber Industries & Ors. -Vs- Pragathi Rubber Mills & Ors. Reported in 2014(57) PTC Page 1(SC).
5. On the other hand, it is submitted on behalf of the plaintiff that there is no legal bar in institution of composite suit based on the infringement of registered trade mark and passing off in the Original Side of the Calcutta High Court even if the cause of action for passing off falls outside the jurisdiction of the Court in view of Clause 14 of the Letters Patent provided the leave is given by the High Court. According to the learned Advocate, the support can be lend to a co-ordinate decision of this Court in case of ITC Limited -Vs- Godfray Phillips India Ltd. Reported in AIR 2014 Calcutta Page 19 and a decision of the Bombay High Court in case of S.A.B Miller India Ltd. -Vs- M.R. Beer Products Pvt. Ltd. Reported in 2014(58) PTC 571 (Bombay).
6. It is strenuously submitted that it is not open to the Court to consider the prayer for revocation of leave granted under Clause 14 of the Letters Patent after issuance of the show-cause and overruling the contention of the Defendant, as the Court cannot sit over its own judgment. On the leave under Clause 12 of the Letters Patent, it is submitted that the Court shall not look into any other statements / averments but should confine its scrutiny on the facts narrated in the plaint. It is, thus, submitted that if on meaningful reading of the averments made in the plaint, it cannot be said that the leave under Clause 12 granted by the Court was unwarranted and no clear case of such leave is made out therein, there is no illegality in revoking such leave. According to the plaintiff, leave under Clause 12 should not be revoked on an extraneous facts which do not appear from the plaint and relied upon a judgment of Supreme Court in case of Indian Mineral & Chemical Company -Vs- Deutsche Bank reported in 2004(12)SCC 376. The further reliance is placed upon a judgment of the Apex Court in case of Ramesh B. Desai & Ors. -Vs- Bipin Vadilal Mehta & Ors. Reported in 2006(5)SCC 638 in support of the contention that an application for revocation of a leave is in the nature of demurrer and the principles under Order VII Rule 11 of the Code of Civil Procedure should be applied.
7. Ordinarily the leave under Clause 12 of the Letters Patent is granted by the Court on presentation of the plaint on prima-facie satisfaction that the cause of action has arisen partly within and partly outside the jurisdiction of the Court. Normally, it is the matter between the plaintiff and the Court as the Defendant is not invited to make any submissions thereupon. It is distinct from Clause 14 of the Letters Patent which ordains the issuance of the show-cause before such leave is granted. It, therefore, does not take away the right of the Defendant who, after entering appears to take a stand that the circumstances constituting the cause of action do not fulfil the criteria enshrined under Clause 12 of the Letters Patent. Once, the revocation of leave under Clause 12 of the Letters Patent is taken out, it is ordinarily treated as demurrer and the Defendant should restrict to the pleadings made in the plaint and should not be allowed to travel beyond its periphery. It is in the nature of an exception taken under Order VII Rule 11 of the Code, which does not permit the Defendant to take external aid. The aforesaid proposition can be fortified from the observations made in Indian Mineral & Chemical Company (Supra) by the Supreme Court in the following:--
"11. The Division Bench could have held that what was alleged to be a part of the cause of action did not form part of the cause of action at all. This the Division Bench did not do. It was not open to the Division Bench to come to a contrary factual conclusion in respect of any of these three grounds. The appeal is, therefore, liable to be allowed on this ground alone."
8. In the subsequent judgment rendered in case of Ramesh B. Desai (Supra) it is held in clear terms that the Defendant should accept the statement made in the plaint to be true and if thereafter demonstrates that the leave under the said Clause was unwarranted, the Court can revoke such leave by applying the principles governing Order VII Rule 11(a) & (d) of the Code.
9. In case of Dharampal Premchand Ltd. (Supra), the suit for infringement of the trade mark "Baba", for breach of its copyright and for passing off was instituted in the High Court at Delhi. An application under Order VII Rule 10 of the Code of Civil Procedure was taken out alleging that though the suit for infringement of the copyright and the trade mark is competent but so far as the allegations against the passing off is concern, since none of the part of the cause of action arose within the jurisdiction of the Court the plaint is liable to be returned for presentation before the competent Court. The argument was advanced that if the plaint contains several causes of action and if one of such causes of action is beyond territorial jurisdiction of the said Court, it is open to the plaintiff either to abandon or relinquish the claim for which the cause of action is beyond the jurisdiction of the Court otherwise the plaint should be rejected. In the said report the application for amendment of the plaint was taken out by the plaintiff which was pending. Amidst the pendency of the amendment application the Trial Court returned the plaint and permitted the plaintiff to file a fresh suit before the competent Court.
10. In case of Paragon Rubber Industries (Supra) a suit was instituted before the District Court in Kottayam, Keral claiming reliefs both under Copyright Act, 1957 and Trade and Mercantile Marks Act, 1958. The essence of the suit as culled out therefrom was that the plaintiff therein alleged both the infringement of the copyright as well as the registered trade mark against the Defendant therein. The injunction application was taken out which ultimately reached before the Supreme Court. It was noticed that though Section 62(2) of the Copyright Act, 1957 permits the filing of the suit at the place where a plaintiff resides for violation of the copyright but such provision does not appear in the Trade and Mercantile Marks Act, 1958 and therefore a composite suit alleging the violation of the copyright and infringement of the trade mark is incompetent.
11. Upholding the contention of the Defendant that the composite suit based on more than one causes of action can only be maintained if both the causes of action arise within the jurisdiction of one Court, the observations in Paragraph 19 of the said judgment can be profitable take note of which runs thus:--
"We see no conflict in the ratio of law laid down in the aforesaid two cases. In both the cases, it has been held that for the purpose of invoking the jurisdiction of the court in a composite suit, both the causes of action must arise within the jurisdiction of the Court which otherwise had the necessary jurisdiction to decide all the issues. However, the jurisdiction cannot be conferred by joining two causes of action in the same suit when the court has jurisdiction to try the suit only in respect of one cause of action and not the other. In Dabur India (Supra) the ration in Dhodha House has been explained. In Dhodha House, the law was stated in the following terms:
"54. For the purpose of invoking the jurisdiction of a court only because two causes of action joined in terms of the provisions of the Code of Civil Procedure, the same would not mean that thereby the jurisdiction can be conferred upon a court which had jurisdiction to try only the suit in respect of one cause of action and not the other. Recourse to the additional forum, however, in a given case, may be taken if both the cause of action arise within the jurisdiction of the court which otherwise had the necessary jurisdiction to decide all the issues.
55. In this case we have not examined the question as to whether if a cause of action arises under the 1957 Act and the violation of the provisions of the Trade Marks Act is only incidental, a composite suit will lie or not, as such a question does not arise in this case."
12. The aforesaid reports which in my opinion are distinguishable as Clause 14 of the Letters Patent applicable to Calcutta High Court was neither placed nor noticed. The Clause 14 reads:--
"Joinder of several causes of action: And We do further ordain that, where plaintiff has several causes of action against a defendant, such causes of action not being for land or other immovable property, and the said High Court shall have original jurisdiction in respect of one of such causes of action, it shall be lawful for the said High Court to call on the defendant to show cause why the several causes of action should not be joined together in one suit, and to make such order for trial of the same as to the said High Court shall seem fit."
13. The said clause manifests that where the plaintiff has several causes of action against the Defendant and if the High Court at Calcutta have Original Jurisdiction in respect of one of such causes of action it can permit the joinder of such causes of action subject to inviting the Defendant by show-cause and affording an opportunity to make submissions thereupon. The object underlining the said provision is to avoid multiplication of proceedings recording of same evidence by the same set of witnesses and to avoid the conflicting decisions. Though, Order II Rule 3 of the Code achieves the same object but the distinction can be noticed from the language employed therein. The joinder of several causes of action is permissible under Order II Rule 3 of the Code against the common Defendant or the Defendants provided the Court before which such suit is instituted have jurisdiction in respect of all such causes of action. The language of Clause 14 of the Letters Patent is distinct as it contemplates the composite suit based on different causes of action if one of such causes of action arises within jurisdiction of the High Court in its Original Jurisdiction. Both the provisions viz. Order II Rule 3 and Clause 14 of Letters Patent have common objects but have its applicability on a different field. The Co-ordinate Bench in ITC Limited (Supra) have exhaustively dealt with the above aspect in these words:--
"15. On a plain reading of Clause 14 of the Letters Patent, it appears that if the plaintiff has several causes of action against the defendant and if such causes of action is not in relation to any land or other immovable property and if the High Court is having original jurisdiction in respect of one of such causes of action, it shall be lawful for the High Court to call on the defendant to show cause by the several causes of action should not be joined together in suit. The very purpose is to save costs, time, avoid multiplicity of proceedings and conflicting decisions. The said clause is in pari materia with Order 2, Rule 3 of the Code of Civil Procedure. The aforesaid provision enables the joinder of several causes of action in one subject to certain restrictions. A party should not be vexed twice. The defendant is unable to show that if all the causes of actions are united, it would cause a real inconvenience or that the said causes of action cannot be conveniently tried. It is needless to mention that several causes of actions can be combined provided they are intimately connected so as to justify their being included in one suit. The plaintiff is entitled to maintain a suit for infringement in this Court is not in dispute. The question arises if the plaintiff could unite the action of passing off along with its claim or infringement under Clause 14 of the Letters Patent. That of the two several issues, this High Court has jurisdiction to try action for infringement is a relevant consideration to examine if the plaintiff should be permitted to unite along with infringement action, an action, for passing off. The learned Counsel of the defendant has referred to Paragraphs 25 and 27 of the Plaint and argued that causes of action pleaded in the said paragraphs would clearly show that the plaintiff is alleging passing off which has no nexus to the other part of the pleadings concerning infringement. The action for infringement and passing off are independent and the Court should not untie cause of action to grant leave under Clause 14 of the Letters Patent is the other objection. The suit was filed without any express prayer for passing off although necessary averments are present for obtaining leave under Clause 14 of the Letters Patent. The plaintiff in order to establish its claim in respect of infringement action would be required to produce evidence which would be common to both infringement and passing off. A reading of the plaint would also show that the cause of action in respect of infringement as also passing off against the defendant are closely interlinked. The use of the defendant of the impugned mark is a pre-requisite for the plaintiff to succeed its claim for both infringement and for passing off of its trademark. In order to determine whether the defendant's mark is similar to the plaintiff's mark or an imitation of the plaintiff's mark, the same tests would have to be followed both in case of infringement and passing off. The defendant in any event would have to meet the case of the plaintiff based on infringement of the impugned mark and the cause of action in relation to passing cannot either cause embarrassment to the defendant or inconvenience. On the contrary, in my view, it would prevent multiplicity of proceedings and embarrassment by simultaneous investigations. It is settled law that plaintiff may not only join different causes of action against the same defendant or the same defendants as provided under Order 2, Rule 3 of the Code of Civil Procedure but he may also joint different causes of action against the defendants if he is able to bring his case with the purview of Order 2, Rule 3. In the instant case, Clause 14 which enables the plaintiff to join other causes of action if in respect of one of the causes of action, the Court has jurisdiction. The answer to the show cause really does not demonstrate that any inconvenience would be caused to the defendant in the event trial takes place in this Court. on the contrary, it would benefit both the parties in the event both the issues are decided by this Court and it would also avoid multiplicity of proceedings. This matter can be viewed from another angle. The Court has a power to consolidate suits in appropriate cases. Consolidation is a process by which two or more causes of action are united and treated as one cause. The main purpose is to save costs, time and avoid multiplicity of proceedings and convenience by treating them as one action. The jurisdiction to consolidate arises, inter alia, where there are two or more causes pending in the Court and it appears that some question of law or fact arises in both or of the suits or that the rights to relief claimed in the suits are in respect of or arise out of the same transaction or series of transactions or that for the some other reason, it is desirable to make an order directing consolidation of suits. The ultimate issue for the decision in the instant case would be factum of prior use of the mark by the plaintiff which would also be a relevant consideration and forming part of the evidence in establishing a claim based on passing off. The evidence that has to be led in cases of both the causes of action to a large extent would be common and there would be no embarrassment if the causes of action are tried together especially in the context the defendant would be obliged to defend its action on infringement in this Court. It is undisputed that in respect one causes of action, this Court has jurisdiction."
14. It is, therefore, aptly clear and leaves no manner of doubt that if one of the causes of action arises within the Original Jurisdiction of the High Court and other beyond such jurisdiction, a composite suit is competent subject to the strict compliance thereof. One striking feature can be noticed from the Clause 14 of the Letters Patent wherein the leave for such composite suit can only be granted after inviting the Defendant to show-cause before such order is passed. Admittedly, in the instant case the Court issued show-cause to the Defendant and by order dated 8th July, 2015 granted leave after overruling the objection of the Defendant. There is another aspect which this Court feels to take note of. If the leave under Clause 14 is granted after the Defendant is afforded an opportunity on issuing show-cause it is not open to sit as a Court of Appeal over the said decision. The Defendant cannot invite the Court to rewrite or revisit the order passed earlier by filing an application for revocation thereof. It is opposed to the principles of review which is permissible under the law and can be taken recourse to by an aggrieved Defendant.
15. So far as the plea of revocation of leave under Clause 12 of the Letters Patent is concern, the Apex Court in case of India Minerals and Chemicals Company (Supra) succinctly held--
"10. We are of the opinion that the learned Judges erred in revoking leave under clause 12 of the Letters Patent in view of the clear assertions made in the plaint, and the assertions in a plaint must be assumed to be true for the purpose of determining whether leave is liable to be revoked on a point of demurrer. In the plaint the jurisdiction of the High Court was claimed on the ground that:
(1) UCO Bank's branch, which was within the Court's jurisdiction, intimated the plaintiffs that the letter of credit had been issued by the respondent;
(2) the documents were presented by the plaintiffs to the said branch of UCO Bank; and payment was to be received by the plaintiffs from the said branch of UCO Bank."
16. The point of demurrer is to be determined in revoking leave under Clause 12 of the Letters Patent only when the Defendant treats the averments made in plaint to be true and correct and thereafter successfully demonstrates before the Court that there is a clear lack of averments warranting such leave to be granted by the Court. Therefore, the scrutiny should be confined to the averments made in the plaint and the Court should not venture to take external aid. The provisions under Clause 12 of the Letters Patent is pressed in action where part of the causes of action is within and the part thereof is outside the jurisdiction of the Court. The meticulous writing of the statements made in the plaint do not lead to a definite conclusion that the plaint is bereft of any such averment for invocation of Clause 12 of the Letters Patent nor it can be said with certainty that there was no pleading to grant leave under Clause 12 of the Letters Patent by the Court.
17. I, therefore, cannot accept the argument advanced by the Defendant that it is a fit case where the Court should revoke the leave granted under Clause 12 and Clause 14 of the Letters Patent.
18. Both the Applications are Dismissed.
19. There shall be no order as to costs.
(Harish Tandon,J.)