Delhi High Court
Travellers Exchange Corporation ... vs Celebrities Management Private ... on 31 January, 2019
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 31st January, 2019.
+ CS(COMM) 51/2016
TRAVELLERS EXCHANGE CORPORATION
LIMITED & ORS ..... Plaintiffs
Through: Mr. J. Sai Deepak, Ms. Sangeeta
Goel Mr. Mohit Goel, Mr. Abhishek
Kotnala & Mr. Ashutosh Nagar,
Advs.
Versus
CELEBRITIES MANAGEMENT
PRIVATE LIMITED ....Defendant
Through: Mr. Sudhir Chandra, Sr. Adv. with
Mr. Abhishek Puri, Ms. Surbhi
Gupta & Mr. Yasharth Misra, Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
IA No.5793/2016 (of defendant u/O VII R-10 CPC)
1. The legal question for adjudication is, whether what has been held in
Indian Performing Rights Society Vs. Sanjay Dalia (2015) 10 SCC 161 is
only qua Sections 62 of the Copyright Act, 1957 and 134 of the Trademarks
Act, 1999 or also interprets Section 20 of the Code of Civil Procedure, 1908
(CPC) and applies to determination of territorial jurisdiction under Section
20 of the CPC in relation to suits under the said Acts.
2. I have in order dated 27th November, 2017 in CS(OS) No.971/2011
titled Anandji Virji Shah Vs. Eros International Media Ltd. held that
Sections 62 and 134 supra are in addition to Section 20 of the CPC and
CS(COMM) No.51/2016 Page 1 of 9
even if the Court would not have territorial jurisdiction under Section 134
but has jurisdiction under Section 20 of the CPC, the Court would retain
territorial jurisdiction to entertain the suit. The same view, according to the
counsel for the plaintiffs, has also been taken in Burger King Corporation
Vs. Techchand Shewakramani 2018 SCC OnLine Del 10881.
3. The contention of the senior counsel for the applicant/defendant
however is that Anandji Virji Shah and Burger King Corporation supra
are contrary to Sanjay Dalia supra, particularly to paras 6&7 thereof
containing submissions of the parties therein and paras 14, 15, 18, 19, 21,
22, 25, 26 & 52 thereof returning findings thereon. The said paragraphs
have been read by both the counsels, with the senior counsel for the
applicant/defendant contending that on the basis of what was for
adjudication therein and held therein, this Court does not have territorial
jurisdiction and the counsel for the plaintiff contending that the jurisdiction
of this Court is invoked under Section 20 of the CPC, as stated on and
recorded in the order dated 15th November, 2018.
4. The senior counsel for the applicant/defendant otherwise does not
controvert, that if Section 20 of the CPC were to apply and it were to be
held that what was for interpretation in Sanjay Dalia supra does not apply
to Section 20 of the CPC, this Court would have territorial jurisdiction.
5. Before proceeding to meet the controversy, I may record that it is
also the contention of the senior counsel for the applicant/defendant that the
view taken in Anandji Virji Shah and Burger King Corporation supra by
benches of Single Judges of this Court, is contrary to the view taken in
CS(COMM) No.51/2016 Page 2 of 9
Louis Vuitton Malletier Vs. Kapil Pahuja MANU/DE/0318/2018 by
another learned Single Judge of this Court. However, a reading of the said
judgment shows that the territorial jurisdiction of this Court therein was
invoked only under Section 134 of the Trademarks Act and not under
Section 20 of the CPC, which does not even find mention in the judgment,
save in the quoted paragraph of Sanjay Dalia supra. It thus cannot be said
that there are conflicting views of Co-ordinate Benches of this Court.
6. I may add that I have in Millenium & Copthorne International Ltd.
vs. Aryans Plaza Services Pvt. Ltd MANU/DE/1854/2018 and in EIH Ltd.
vs Sahana Realty 2018 (75) PTC 154 also held that a suit for infringement
can be instituted in the Court within whose territorial jurisdiction cause of
action arises, under Section 20 of the CPC.
7. Before proceeding further, the factual position may be summarised.
This suit for permanent injunction restraining infringement and passing off
and for ancillary reliefs has been filed by three plaintiffs, of which plaintiffs
No.1&2 namely Travellers Exchange Corporation Limited and Travelex
Holdings Limited are foreign companies having no office in India, save for
having a constituted attorney who also is a resident of Faridabad and the
plaintiff No.3 namely Travelex India Private Limited is an Indian Company
which has its registered office at Mumbai. The defendant also has its
registered office at Mumbai. The territorial jurisdiction of this Court is
invoked pleading that the defendant, using the impugned mark, is carrying
on business within the territorial jurisdiction of this Court and thus cause of
action for the suit has accrued at Delhi.
CS(COMM) No.51/2016 Page 3 of 9
8. The contention of the senior counsel for the applicant/defendant is
that since the registered office of the applicant/defendant is at Mumbai and
the cause of action if any of the plaintiffs, besides at New Delhi as claimed,
has also accrued at Mumbai, in terms of Sanjay Dalia supra, the suit could
have been filed at Mumbai alone and not in this Court.
9. The senior counsel for the applicant/defendant has with respect to the
paragraphs aforesaid of Sanjay Dalia supra emphasised (i) that the
Explanation to Section 20 of the CPC has been read by the Supreme Court
in Sections 62 and 134 supra; (ii) that what has been held by this Court in
Anandji Virji Shah and Burger King Corporation supra is what was also
canvassed before the Supreme Court on behalf of the plaintiffs but which
did not find favour; (iii) that it has been unequivocally held in para 19 that
if cause of action has also arisen to a corporation at the place where the
registered office or principal place of business of the corporation is, and
then the corporation has to institute a suit at the said place and not at any
other place and in accordance with the said dicta, this suit could have been
filed against the applicant/defendant at Mumbai only; (iv) that what has
been laid down by the Supreme Court is that there should be no harassment
of the defendant; (v) that since the plaintiff No.3 also has its registered
office at Mumbai, the plaintiffs could have filed the suit against the
applicant/defendant at Mumbai but have sued the applicant/defendant at
Delhi, to harass the applicant/defendant; (vi) that in para 21, it has been
held that the right of the plaintiff under Section 20 of the CPC to sue the
defendant where the cause of action has accrued is subject to the rider "in
case the plaintiff resides or has its principal place of business/carries on
CS(COMM) No.51/2016 Page 4 of 9
business or personally works for gain at a place where the cause of action
has also arisen, suit should be filed at that place not at other places where
the plaintiff is having branch offices, etc."; (vii) that what the Supreme
Court has held is, that Sections 62 & 134 supra and Section 20 of the CPC
read conjunctively, do not authorise a plaintiff to institute a suit at a
different place than the place where the plaintiff is ordinarily residing or has
its principal office and where the cause of action has also accrued; and,
(viii) that in para 26, it has been reiterated that "the right to remedy given is
not unbridled and is subject to the prevention of abuse of the aforesaid
provisions....".
10. Per contra, the counsel for the plaintiffs with reference to the
aforesaid paragraphs has highlighted (a) that the question before the
Supreme Court was, whether the Explanation to Section 20 of the CPC is to
be read into Sections 62 and 134 supra and not the other way round; (b) that
what was for consideration and interpretation before the Supreme Court
was only the provisions of the Trademarks Act and the Copyright Act and
not Section 20 of the CPC; (c) that in para 14, it has been unequivocally
held that Sections 62 and 134 supra provide an additional fora and/or an
additional remedy, indicating that what was already in existence i.e. Section
20 of the CPC was not for interpretation; (d) that the same is also reflected
in para 18 from the sentence "The very intendment of the insertion of the
provision in the Copyright Act and the Trademarks Act is the convenience
of the plaintiff" (e) that in para 21, it has been held that Sections 62 and 134
supra removed the impediment imposed under Section 20 of the CPC; (f)
that it has been reiterated in para 22 that Sections 62 and 134 supra create
CS(COMM) No.51/2016 Page 5 of 9
an additional forum; (g) that thus what has been held is applicable only qua
Section 62 of the Copyright Act and Section 134 of the Trademarks Act and
not to Section 20 of the CPC, jurisdiction of this Court whereunder is not
controverted; and, (h) that the Division Bench of this Court in Ultra Home
Construction Pvt. Ltd. Vs. Purushottam Kumar Chaubey (2016) 227 DLT
320 has also interpreted Sanjay Dalia supra as creating an additional forum
and conferring territorial jurisdiction in addition to that under Section 20 of
the CPC.
11. The senior counsel for the applicant/defendant in rejoinder has
argued that it is not open to the High Court to interpret a judgment of the
Supreme Court. However, on enquiry, whether the same would not halt the
entire adjudicatory process before the Courts other than the Supreme Court,
the senior counsel for the applicant/defendant states that he is not
contending so widely but his contention is that it is not open to the High
Court "to distinguish judgment of the Supreme Court on the ground that it
is not clear".
12. I have bestowed thought to the contentions.
13. There is nothing in Sections 134 and 62 supra to indicate that the
same are in supersession of or derogation of Section 20 of the CPC. On the
contrary, both are "...notwithstanding anything contained in the Code of
Civil Procedure, 1908". A non obstante clause is used to preclude any
interpretation contrary to the stated object or purpose. The stated object of
Sections 134 and 62 supra is to enable a plaintiff suing for infringement of
trade mark or copyright to sue where the plaintiff actually and voluntarily
CS(COMM) No.51/2016 Page 6 of 9
resides or carries on business or personally works for gain, in variance with
the scheme of Section 20 requiring the suit to be instituted where the
defendant resides or carries on business or personally works for gain.
Supreme Court, in Geeta Vs. State of U.P. (2010) 13 SCC 678 reiterated
that a non-obstante clause gives a overriding effect over anything contained
in the relevant existing law which is inconsistent with the new enactment.
Varadarajulu Vs. State of Tamil Nadu (1998) 4 SCC 231 and Madhav
Rao Scindia Vs. Union of India (1971) 1 SCC 85 holding that when the
non obstante clause does not refer to any particular provision of the statute
which it intends to override but refers to the provisions of the statute
generally, it is not permissible to hold that it excludes the whole Act and
stands alone by itself, were also reiterated. The judgment, in that case, of
the High Court interpreting the non obstante clause as totally obliterating
the Act in entirety, was set aside. Thus, Sections 134 and 62 cannot be read
as obliterating Section 20 of the CPC or overriding Section 20 of the CPC
in terms whereof this Court admittedly has territorial jurisdiction.
14. The matter is put beyond any doubt by the dicta of Division Bench of
this Court in Intas Pharmaceuticals Limited Vs. Allergan Inc. AIR 2007
Del 108 unequivocally holding that Section 134 supra is in addition to
provisions of CPC. The said dicta was noticed in Sanjay Dalia supra and it
was held that the question posed in Sanjay Dalia was different from as was
for adjudication in this judgment. It was not held that what was held by the
Division Bench of this Court was not correct. For this reason alone, the
contention of senior counsel for defendant / applicant cannot be accepted.
CS(COMM) No.51/2016 Page 7 of 9
15. I have re-read Sanjay Dalia supra including with reference to the
paragraphs aforesaid which were highlighted by senior counsel for
applicant /defendant and am unable to agree with the contention of the
senior counsel for the applicant/defendant. A reading of the judgment does
not indicate that the territorial jurisdiction of the Courts under Section 20 of
the CPC in respect to suits under the Copyright Act and Trademarks Act
was for consideration. What was for consideration was only the conferment
of territorial jurisdiction in addition to Section 20 of the CPC, by Sections
62 and 134 supra. It is for this reason only that repeatedly the expression
"additional remedy", "additional jurisdiction" and "additional forum" find
mention in the judgment including in the paragraphs which are highlighted.
16. Thus, in my view, what has been held in Sanjay Dalia supra is
applicable only if territorial jurisdiction is invoked by invoking Sections 62
or 134 supra and not if the territorial jurisdiction of the Court is invoked
under Section 20 of the CPC, as the plaintiffs are doing in the present case
and territorial jurisdiction of this Court whereunder is not in dispute.
17. Qua the last contention aforesaid of the senior counsel for
applicant/defendant, it is not the contention of counsel for plaintiffs that
judgment of the Supreme Court is not clear. Else, the Supreme Court itself
has repeatedly held that a judgment is a precedent on what was for
adjudication and what has been adjudicated and no more. What I have held
above is that the question, whether the ambit of Section 20 of CPC is
curtailed in relation to suits under Trade Marks Act and Copyright Act was
not for adjudication in Sanjay Dalia. Otherwise, I have disagreed with the
said contention.
CS(COMM) No.51/2016 Page 8 of 9
18. No merit is thus found in the application.
19. Dismissed with costs of Rs.50,000/- to the counsel for plaintiffs.
IA No.1152/2017 (of the plaintiffs u/S 124 of the Trademarks Act, 1999)
20. After some arguments, the counsel for the plaintiffs withdraws the
application with liberty to apply again, after seeking amendment of the
plaint.
21. Dismissed as withdrawn with liberty aforesaid.
CS(COMM) 51/2016
22. Needless to state that it will be open to the defendant to take such
pleas as may be available to it as to the application for amendment and/or to
the fresh application, if any filed by the plaintiffs under Section 124 of the
Trademarks Act.
23. List for framing of issues, if any and for consideration of the
application for interim relief on 9th April, 2019.
RAJIV SAHAI ENDLAW, J.
JANUARY 31, 2019 „bs‟..
(corrected & released on 9th February, 2019) CS(COMM) No.51/2016 Page 9 of 9