Delhi High Court
P.M. Diesels Ltd. vs M/S. Patel Field Marshal on 10 March, 1998
Equivalent citations: AIR1998DELHI225, 1998(45)DRJ255, AIR 1998 DELHI 225, (1999) 37 ARBILR 93, (1998) 2 CURCC 585, (1998) 45 DRJ 255, (1998) 3 RECCIVR 124
Author: Y.K. Sabharwal
Bench: Y.K. Sabharwal
JUDGMENT Y.K. Sabharwal, J.
1. The application filed in the suit for grant of temporary injunction pending disposal of the suit has been dismissed by learned single Judge holding that the appellant/plaintiff has not been able to prima facie show the territorial as well as pecuniary jurisdiction of this court and, there- fore, irrespective of the merits or otherwise of its claim the plaintiff would not be entitled to temporary injunction. As a result of this conclusion the application (I.A. 4465/89) seeking temporary injunction has been dismissed by the impugned order and the order dated 30th June 1989 granting interim injunction in favour of the plaintiff has been vacated. Paras 29 and 30 of the plaint relevant for determining whether prima facie this court has territorial jurisdiction or not read as under:-
"29. The cause of action for the present suit in favour of the plaintiffs and against the defendants arose first of all in the year 1982 when the defendant No.1 applied for the registration of the trade mark MARSHAL and the plaintiffs served a notice on the defendant No.1 dated 23.7.82. The cause of action against arose when the plaintiffs came to know from the Trade Marks Journal No. 823 dated 16.9.83 that defendant No. 2 had applied for the registration of the trade mark (logo) PFMA in respect of the goods of the same type and the plaintiffs filed notice of opposition against the same. The plaintiffs did not think it proper to take any legal action at the court against the defendants in the matter and thought it before to wait till the decision of their opposition applications and hence the cause of action then arose on 30.4.1988 when the said applications of defendant No.2 were refused for registration by the Registrar of Trade Marks Bombay. The cause of action lastly arose in the month of June, 1989 when the plaintiff came to know from trade that the partners of the defendants were going to form a company under the Companies Act with the proposed name of the Company containing the word FIELD MARSHAL in their trading style of the Company. Thus the cause of action is continuous from day to day till the defendants are restrained from dealing in any way in the said goods under the impugned trade mark MARSHAL, using the logo PFMA and PFMI and the trading style PATEL FIELD MARSHAL AGENCIES and PATEL FIELD MARSHAL INDUSTRIES. The defendants have also violated the statutory right of plaintiff by imitating the label registered under copyright No.A-42691/1983.
30. That the goods of the parties bearing the impugned trade marks are also sold in the Union Territory of Delhi. The Trade Marks Journal No. 823 dated 16.4.83 and No. 876 dated 1.12.85 and Journal No. 933 dated 16.4.88 were published in India by the Trade Marks Registry in respect of applications of the defendants for registration of the impugned trade marks, including the Union Territory of Delhi. Therefore, this Hon'ble court has jurisdiction to entertain and try the present suit. Moreover, the jurisdiction of this Hon'ble Court is also attracted in view of Section 62(2) of the Copyright Act.
2. The plaintiff has valued the relied of rendition of accounts in the suit for the purposes of court fees at Rs. 200/- and the valuation for the purposes of jurisdiction has been fixed at Rs. 5,01,000/- undertaking to pay the additional court fee for relief of rendition of accounts when the exact amount due from the defendants is ascertained. Relying upon an earli-
er single Bench decision by the impugned order it was held that for purposes of jurisdiction in respect of claim for rendition of accounts the suit had to be valued at Rs. 1,000/- and, therefore, the High Court had no pecuniary jurisdiction to entertain the suit. Learned counsel for the respondents, in view of the Division Bench decision of this court in the case of Fenners India Ltd. Vs. Salbros Enterprises Pvt. Ltd. 1997 IV AD (Delhi) 24, has rightly conceded that the impugned judgment to the extent it holds that this court has no pecuniary jurisdiction deserves to be reversed. In this view, therefore, we hold that in suit for unsettled accounts, fixed court fee is payable and for jurisdictional purposes such a suit can be valued in terms of valuation as fixed by the plaintiff.
3. Reverting now to the main question in respect of territorial jurisdiction, it may be noticed that the plaintiff has claimed that Delhi High Court has jurisdiction on three counts. Firstly, in view of Section 62 of the Copyright Act, 1957. Secondly, in view of the fact that the defendants had sought registration of trade mark for sale at Delhi as well and, there fore, the plaintiff is entitled to restrain the threatened sale by defendants at Delhi. Thirdly, it has been claimed that the goods under the impugned mark have been sold at Delhi and the plaintiff rights violated at Delhi. On the other hand, the defendants claim that Delhi Court has no jurisdiction as plaintiff and defendants, have been residing at Rajkot and both the parties have also been ordinarily working for gain at Rajkot and that no sale has been effected by defendant within the territorial jurisdiction of this court.
4. The jurisdiction of a court does not depend upon the defense taken by a defendant and it is the allegations made in the plaint which decide the forum. The court, while considering an application for grant of temporary injunction can, however, go into the question whether, prima facie, it has jurisdiction or not and for the said purpose not only the pleadings but the affidavits, documents and other material on record can be examined. Therefore, for the purposes of forming prima facie opinion the court can travel beyond what is averred in the plaint.
5. In view of the aforesaid, we have now to decide whether learned single Judge rightly formed the prima facie opinion of lack of territorial jurisdiction. The first count on the basis on which the plaintiff was claiming that this court has territorial jurisdiction has the support of a decision of this court in the case of Tata Oil Mills Co. Ltd. Vs. Reward Soap Works, . In this case, the plaintiff had brought a composite suit based on infringement of trade mark, copyright, passing off and for rendition of accounts of profits, seeking to restrain the defendants from infringing its trade mark and wrapper claiming the same to be identical with or deceptively similar to the wrapper of the plaintiff mark and infringing its registered trade mark and copyright. The defendants had resisted the suit and it opposed the application for grant of temporary injunction, inter alia, on the ground that the defendant carries on its business at Nagpur and it neither manufactured nor marked the goods within the territorial jurisdiction of this court. The defendant had also pleaded that Section 62(2) of the copyright Act, 1957 would not give jurisdiction to Delhi courts to deal with the claim of infringement of trade mark either in relation to the numbers of in relation to the wrapper. Dealing with the objection of the defendant about the territorial jurisdiction of this court it was held that in such a suit, to an extent, there is overlapping between the two remedies, one under the Trade Mark Act and the other under the Copyright Act but in view of the undoubted jurisdiction of this court in relation to infringement of copyright, the court would be justified in granting injunction of both trade mark and copyright at the stage of consideration of an application for temporary injunction particularly when there was a specific averment that the plaintiff has been selling the goods, inter alia, within the territorial jurisdiction of this court. Para 6 of Tata's Case which is relevant on the issue in hand reads as under:-
"The comparative scopes of a copyright and trade mark registration are different, even though where a design on a wrapper is registered under the Copyright Act, there is, to an extent, an overlapping between the two remedies. Some controversy is no doubt possible if the mere jurisdiction of the Court to entertain an action for infringement of copyright would also give the court the necessary jurisdiction to deal with the corresponding infringement of trade mark, where both constitute part of a composite suit. In view of the undoubted jurisdiction of this Court in relation to the infringement of copyright, court would be justified in granting injunction of both the trade mark and the copyright at this stage of the proceedings, particularly, where there is a specific averment in the plaint, whatever it may be worth, that the plaintiff has been selling the goods, interalia, within the territorial jurisdiction of this court.
6. In the present case a specific averment has been made in Para 30 has reproduced above to the effect that the goods of the parties bearing the impugned trade mark are also sold in the Union Territory of Delhi and also that the defendants have violated the statutory rights of the plaintiff by imitating the label registered under the Copyright Act and jurisdiction of this court is also attracted in view of Section 62(2) of the Copyright Act.
The appellants/plaintiff has also filed certain documents in support of the aforesaid pleas.
7. The second count on the basis of which plaintiff says that Delhi Court has jurisdiction is that the defendants had sought trade mark for sale of the impugned goods in Delhi amongst other places. In M/s. Jawahar Engineering Co. & Ors. Vs. M/s. Jawahar Engineering Pvt. Ltd.
the challenge of the defendant in appeal was to the view expressed by learned single Judge that since there had been advertisement in the Trade Mark Journal published by Registrar of Trade Marks at Delhi it conferred jurisdiction on the courts at Delhi. While dealing with the said question the Division Bench held that the real point which gives the court jurisdic-
tion is not the place where the advertisement had appeared but the fact that the trade mark is sought for sale in Delhi amongst other places since the plaintiff can even seek a restraint against the threat that is still to materialise and that once the plaintiffs have learnt that defendants have applied for registration of trade mark in Delhi they can claim an injunc-
tion to prevent any sale of the infringing product in Delhi. Paras 10 and 11 of Jawaher Engineering case relevant for our purpose read as under:-
"10. There is another ground for holding that the Court has jurisdiction. Section 20 of the Code of Civil Procedure shows that a suit like the present can be filed wherever the cause of action wholly or partly arises. The plaintiff has prayed for an injunction regarding a prayed for an injunction regarding a threatened breach of a registered trade mark. The learned single Judge held that the Delhi Court does not have jurisdiction on the ground of any sale having been made in Delhi, but does have jurisdiction on account of the advertisement having appearing in the Trade Marks Journal. The real point which gives the Court jurisdiction is not the place where the advertisement has appeared, but the fact that the trade mark is sought for sale in Delhi amongst other places. Furthermore, when an injunction is sought, it is not necessary that the threat should have become a reality before the injunction and it can even be sought for a threat that is still to materialise.
11. An injunction being prohibitive in nature is intended to prevent some thing that is likely to happen. Once the plaintiffs have learnt that the defendants have applied for registration of trade mark in Delhi, they can claim an injunction to prevent any sale of the infringing product in Delhi. In this sense, the Court will have jurisdiction whether any sale in Delhi has taken place or not. In any case, as already stated, the decision is of a preliminary nature, once the exact scope of what the defendants intend to do is known, it is open to the Court to return the plaint. In that sense, it is not a final decision and is not open to appeal at the preliminary stage being not a final adjudicaion.
8. The third count on the basis of which plaintiff claims that Delhi court has jurisdiction, namely, the sale of goods under the impugned mark at Delhi need not be gone into in detail, in view of our conclusion on other two aspects mentioned above.
9. Learned counsel for respondents has placed reliance on a decision of Punjab & Haryana High Court in the case of Himachal Pradesh Horticulture Produce Marketing and Processing Corporation Ltd. Simla, Vs. M/s. Mohan Meakin Breweries Limited, Solan, for the proposition that the alleged sale of infringed goods at Delhi to confer jurisdiction to this court has to be a sale on a commercial scale. As already noticed the jurisdiction of Delhi Court is being claimed on three counts, the sale of goods at Delhi being one of them. Apart from our conclusion on first two counts, we feel that the question whether there is such a sale, may be on commercial scale, is a question of fact to be properly determined in this case after evidence is led by the parties. In the cited case, the finding that there was no commercial sale was recorded after the parties had adduced evidence and on appreciation of evidence.
10. Learned counsel for the respondent also places strong reliance on a single Bench decision of Allahabad High Court in the case of Surendra Kumar Maingi Vs. M/s. Dodha House, Kot Kapura, Punjab, 1997 PTR 106 in support of his contention that the mere fact that the court may have jurisdiction to entertain a suit under Section 62(2) of the Copyright Act does not mean that the claim in respect of Trade Mark Act can also be entertained. Paras 11 & 12 of the cited decision relied upon by the counsel read as under:-
"11. It is urged that the trial court has completely ignored to considered the provisions of Section 105 of the Trade and Merchandise Marks Act and in view of the aforesaid provisions the court at Ghaziabad had no territorial jurisdiction to entertain the suit with respect to matters enumerated therein. In support of this proposition, learned counsel has placed reliance on H.P.H.P. Marketing & Processing Corpn. Vs. M.M. Breweries, , where in it was held that in a suit for passing off or injunction on account of infringement of trade mark, the cause of action partly or wholly can arise in a given jurisdiction only if the defendant is proved to have directly made sale of goods under the impugned trade mark within that jurisdiction, not to an individual consumer but to a distributor, whole-saller or retailer and that such a sale on a commercial scale. Reliance is also placed on C.B. Dembla Trading Vs. Bharat Sewing Machine, Co. It has urged that unless the court has jurisdiction to try all the causes of action, such different causes of action cannot be joined together in one suit. In support of this proposition, reliance is placed on AIR 1942 Allahabad 387, AIR 1954 Mad. Bharat 156, AIR 1995 Mad. 595 and 1983 AWC 986. It is thus urged that the court at Ghaziabad has no jurisdiction to try the suit. In the suit as framed cause of action arising under the Trade and Merchandise Marks Act has also been joined for which the court has no territorial jurisdiction.
12. Sri Sahini learned counsel for the plaintiff-respondents has submitted that the court at Ghaziabad has jurisdiction to try the suit and in support of this proposition, he has placed reliance on Glaxo Operation P. Ltd. Vs. Samrat Pharmaceuticals, and 1992 Patent and Trade Marks Cases 94. Reliance is also placed on Tata Oil Mills Co. Ltd. Vs. Reward Soap Works AIR 1982 Delhi 286. I have considered the submissions made by the learned counsel for the parties. The authorities cited by the learned counsel for the plaintiff-respondents do not relate to such cases where the courts had no territorial jurisdiction to entertain the suit in view of Section 105 of Trade and Merchandise Marks Act. In the present case a bare perusal of the plaint would show that the suit is based upon alleged infringement of registered trade mark or relating to any right in a registered trade mark or for passing off by the defendant of any trade mark; which is identical with or deceptively similar to the plaintiff's trade mark. Such a suit cannot be entertained by the court at Ghaziabad in view of Section 105 of the Trade and Merchandise Marks Act. The mere fact that the court may have jurisdiction to entertain the suit with respect to a cause of action under the Copyright Act under Section 62 of the Act can be of no avail. I am, therefore, of the opinion that the court at Ghaziabad has no territorial jurisdiction to try the suit."
11. Although the decision of this court in Tata Oil Mill's case (supra) has been noticed in the Surender Maingi's case (supra), but how the point decided in Tata Oil Mill's case to the effect that the two suits of this nature overlap and that prima facie if the court has jurisdiction to entertain a suit under Section 62 of the Copyright Act, it would consider the application for injunction under Trade Mark Act as well is distinguished is not quite clear to us from the decision of Allahabad High Court and this we say with utmost respect to the learned Judge. We are in respectful agreement with the view expressed in Tata Oil Mills case. Therefore, it is not possible to accept the contention of learned counsel for the respondents that prima facie Delhi court lacks territorial jurisdiction.
12. Reliance has also been placed by learned counsel on the decision in the case of Associated Electronic & Electrical Industries (Bangalore) Pvt. Ltd. Vs. M/s. Sharp Tools, Kalapati, in support of the proposition that there cannot be copyright in the words but it can only be in the artistic manner in which the words may be written. It may be so but it is not the question with which we are concerned at the present stage. On the facts of the present case, reliance by learned counsel for respondents on the decision of Bombay High Court in Gold Seal Engineering Product Pvt. Ltd. and others Vs. Hindustan Manufacturers and others, is also misplaced as also on the provisions of Order 2 Rule 3 CPC. In view of the decision in Tata Oil Mill's case which squarely covers the point in issue it is not possible to sustain the conclusion of learned single Judge that this court has no territorial jurisdiction to entertain the suit.
13. In our view, prima facie, this court has both territorial as well as pecuniary jurisdiction to entertain the suit and, therefore, we set aside the judgment under challenge in this appeal. The application (I.A. 4465/89) filed by the appellant-plaintiff would now be considered on merits. The order dated 30th June, 1989 had continued during the pendency of this appeal and it will further continue till the disposal of I.A. 4465/89.
14. The appeal is, accordingly, allowed in the above terms leaving the parties to bear their own costs.