Madras High Court
Unknown vs S.K.Maingi & P.M.Diesel Ltd on 5 June, 2012
Author: R.Subbiah
Bench: R.Subbiah
IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED: 05.06.2012 CORAM THE HON'BLE MR. JUSTICE R.SUBBIAH Application Nos.541 of 2012 and 5523 of 2011 in Civil Suit No.691 of 2011 ORDER
Application No.5523 of 2011 is filed by the defendant to return the plaint in C.S.No.691 of 2011 to be presented before the appropriate court of competent jurisdiction.
Application No.541 of 2012 is also filed by the defendant to revoke the leave granted to the plaintiff to combine the cause of action for passing off along with the cause of action for infringement of suit and infringement of copyright.
2. The applicant is the sole defendant in the suit and the respondents are the plaintiffs. The facts, which are necessary to dispose of both the applications, are as follows:
(a) It is the case of the plaintiffs/respondents that the 1st plaintiff is a leading chemical company manufacturing and marketing paints, varnishes, lime washes and other related products associated with the paint industry. The 1st plaintiff's house mark is the mark SURYA of which the primary derivative is SURYA CEM. The 1st plaintiff has created various secondary derivatives such as the mark SURYA WHITE. All such marks are arbitrary and coined by the 1st plaintiff. The 1st plaintiff has registered the mark SURYA CEM in several languages such as English, Telugu, Kannada, Malayalam, Tamil, etc. The mark SURYA CEM has been registered along with the distinctive label of a rising sun. The 2nd plaintiff is a sister concern of the 1st plaintiff and it has various registrations including SURYA COLOR CEM, SURYA EMULCEM, SURYA BOND CEM ADHESIVE, etc. The 2nd plaintiff has tagged on to the goodwill and reputation of the 1st plaintiff to create a fresh and innovative line of products. By virtue of long extensive use since the year 1985 of the mark SURYA/SURYA CEM and derivatives thereof, the aforesaid marks have been associated exclusively with the plaintiffs. They have been bona fidely applied for and obtained registrations for their products under class 2 of the Trade Mark Rules, 2002. Class 2 covers paints, varnishes, lacquers etc, which are used by painters, decorators, printers and artists. Therefore, the plaintiffs have obtained registrations for various goods falling within class 2 including "White Lime Wash".
(b) It is the further case of the plaintiffs that they came to know in and around July 2011 that the defendant has spuriously managed to obtain registrations for the mark SURYA CEM and SURYA GOLD. The defendant so as to consciously deflect attention from such spurious applications has applied for the registrations under class 19 of the Trade Marks Rules. Class 19 of the Trade Mark Rules covers building materials such as pitch, bitumen etc. The defendant has illegally obtained registration for the mark SURYA CEM on 24.03.2009. Hence, the plaintiff has filed the suit for a permanent injunction restraining the defendant and their men from manufacturing, selling, offering for sale, stocking, advertising, directly or indirectly dealing in lime or other lime related products under the trademarks SURYA CEM and/or SURYA GOLD or any other deceptively similar mark with the word SURYA/SURYA CEM used as the prefix or suffix or any other mark deceptively similar to the plaintiffs' trademarks and also for a permanent injunction from committing acts of copyright infringement by making any substantial reproduction of the plaintiffs' artistic work of the device of the rising sun which accompany the words SURYA/SURYA CEM either by use of the visual scheme, get-up, lay-out or the artistic deployment of individual components and other consequential prayers.
(c) Pending the suit, the plaintiffs have filed O.A.No.844 of 2011 seeking interim injunction restraining the defendant and their men from manufacturing, selling, offering for sale stocking advertising directly or indirectly dealing in lime or other lime related products under the trademarks SURYA CEM and/or SURYA GOLD or any other deceptively similar marks with the word SURYA/SURYA CEM used as the prefix or suffix. This Court, by order dated 29.10.2011, has granted an order of interim injunction.
(d) On appearance, the defendant has taken the application to return the plaint in A.No.5523 of 2011 stating inter alia that they have been carrying on business in Karnataka ever since 1977. In the course of trade, the defendant/ applicant had adopted various trademarks such as SURYA CEM and SURYA GOLD and the registration number of the SYRTYA CEM is 1528086 and the registration number of the SURYA GOLD is 1528088. By virtue of the registration, the applicant has become the absolute owner of the trade marks SURYA CEM and SURYA GOLD under Class 10. Having accepted that the applicant is the registered proprietor of the trade marks SURYA CEM and SURYA GOLD, the plaintiffs have now come forward with false and misleading case that the applicant is infringing their trade mark. Section 28(3) of the Trade Marks Act, 1999, provides that where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to use those trade marks shall not be with anyone of those persons as against any other of those persons. The plaintiffs, at no point of time, disputed that the applicant is the registered proprietor of the trade mark which goes to show that the plaintiffs intend to get a relief, which is barred by virtue of section 28(3) of the said Act. Therefore, the suit is expressly barred by the provisions contained in section 28(3) and consequently the suit is liable to be rejected under Order 7 Rule 11(d).
(e) It has been further averred that even according to the plaintiffs, the defendant is carrying on business only in Karnataka and not in Chennai. The plaintiffs are also not carrying on business in Chennai and as such, the suit filed by the plaintiffs is not maintainable for the lack of territorial jurisdiction. The suit in respect of passing off also will not lie before this Court. The address of the respondents mentioned in the plaint is false. The mere availability or marketing of the plaintiffs' products within the City of Chennai cannot be considered within the meaning of section 134(2) of the Trade Marks Act and section 62 of the Copyrights Act. Hence, the plaint has to be returned and to be presented before the appropriate court of competent jurisdiction.
(f) In A.No.541 of 2012, the applicant/defendant has stated that the plaintiffs are aware that the suit for infringement of trade mark is not maintainable as the applicant is the registered proprietor of the trade mark. The plaintiffs are also well aware that they are not carrying on business within the jurisdiction of this Court and the address given in the plaint is only a false address so as to create jurisdiction before this Court. Hence, granting of leave to combine the cause of action is liable to be revoked.
(g) The said applications are resisted by the plaintiffs by filing counter affidavits stating that when different causes of action arise out of the same bundle of facts, to avoid multiplicity of proceedings, this Court should entertain and try the suit. Therefore, there is no infirmity in the order passed by this Court in A.No.5042 of 2011 granting permission to combine the cause of action in respect of infringement of trade mark, passing off and infringement of copyright in a single suit. Since the respondents reside and carry on business at Chennai within the jurisdiction of this Court, this Court has jurisdiction to entertain and try the suit for copyright infringement under section 62(2) of the Copyright Act. Similarly, the cause of action in respect of infringement of trademark, passing off and copyright infringement arises out of the same bundle of facts viz., prior adoption, use and registration of the trademarks SURYA CEM and SURYA by the respondents and the applicant is using imitative marks SURYA CEM and SURYA GOLD with identical colour scheme and get up and in respect of identical products. In such circumstances, this Court has jurisdiction to try and entertain the suit. The defence available under sections 28(3) and 30(2) of the Trademarks Act, 1999, do not bar the respondents from filing a suit for infringement of trade mark and also simultaneously apply for rectification/ removal of applicant's registration before the Intellectual Property Appellate Board. For the purpose of jurisdiction. the averments in the plaint alone have to be looked into. In para 21 of the plaint, it has been clearly stated that the cause of action in respect of infringement of copyright, infringement of trade mark and passing off has arisen within the jurisdiction of this Court. Moreover, the Trade Mark Certificates of the respondents as well as those of the applicant have been issued within the jurisdiction of this Court and as a result, this Court possess the requisite territorial jurisdiction to hear the matter. Thus, they prayed for the dismissal of both applications.
3. Learned counsel for the applicant/defendant submitted that the registered office of the plaintiffs is at Vijaya Nagar, Piduguralla, Gundur District, Andhra Pradesh State. But in the plaint, the respondents/plaintiffs have claimed that they are carrying on business at No.16/2, Narayanan Street, Mint, Chennai-1. Absolutely, no tangible evidence was produced by them to show that they are having office at Chennai. Under such circumstances, the case put forth by the respondents/plaintiffs that the suit is maintainable before this Court under section 134(2) of the Trademarks Act is not sustainable for the reason that they are not having office at Chennai. Further, by inviting the attention of this Court to the invoices issued by the 1st respondent/1st plaintiff to its customers for the product SURYA CEM, the learned counsel submitted that except one invoice dated 24.05.2006, all other invoices would show that the 1st respondent's customers are not within the jurisdiction of this Court and as such, the factum that the plaintiffs are marketing their products within the jurisdiction of this Court was not established by them. Though the said invoice dated 24.05.2006 was produced by the respondents to show that their product was despatched from Andhra to one local dealer, viz., Sri Mahalakshmi Agencies, 90/2, Lotus Colony, Thattan Kolambo Road, Madhavaram, Chennai, the said document cannot be taken as an authenticated document to come to a conclusion that the plaintiffs are marketing their products at Chennai since in the said invoice, no local office address of the plaintiffs' does not find place. Therefore, this Court has no territorial jurisdiction to entertain the suit. In support of these contentions, the learned counsel has relied on the judgments reported in Dhodha House & Patel Field Marshal Industries .vs. S.K.Maingi & P.M.Diesel Ltd., (2006 (32) PTC 1, Saranya Zaveri and another .vs. Kamadon Academy Pvt.Ltd., (2008 (38) PTC 554 (Ker.) and Oil and Natural Gas Commission .vs. Utpal Kumar Basu and others ((1994) 4 SCC 711). That apart, the learned counsel for the applicant relied on the decision reported in I.Salman Taiyebi .vs. Mohammed Naseer (2011 (45) PTC 132) and submitted that though the application for registration of trade mark was made at Chennai, in the instant case, the registration certificate was issued at Mumbai. Though the plaintiffs are entitled to file a suit based on registration stating that part of cause of action arose within the jurisdiction of this Court, in the instant case, the Registrar of Trade Marks at Mumbai has issued the registration certificate of Trade Marks. Hence, even on that account, the suit is not maintainable before this Court. Further, as per section 28(3) of the Trade Marks Act, where two or more persons are registered proprietors of trade marks which are identical, each of those persons has the same right as against the other person. When that being the legal position, the suit filed by the respondents is not maintainable.
4. With regard to Application No.541 of 2012, the learned counsel for the applicant submitted that since the respondents are carrying on business within the jurisdiction of Karnataka, the remedy for the act of passing off lies only within the jurisdiction of Karnataka. Therefore, the leave granted by this Court combining the cause of action for passing off along with the cause of action for infringement of suit and infringement of copyright is liable to be revoked.
5. On the contrary, the learned counsel for the respondents submitted that the respondents are carrying on business at No.16/2, Narayanan Street, Mint, Chennai. The address was given in the short cause title of the plaint also. Since the plaintiffs are carrying on business within the jurisdiction of this Court, the suit is maintainable as per section 134(2) of the Trademarks Act. The learned counsel further submitted that the present suit is also filed for injunction restraining the applicant from committing the act of copyright infringement. Therefore, the suit is maintainable under section 62(2) of the Copyrights Act since the plaintiffs are carrying on business within the jurisdiction of this Court. In the application filed by the applicant, though several grounds have been raised for returning the plaint, the applicant has not whispered anything about the prayer of infringement of copyright. Therefore, it has to be taken that the applicant has admitted at least the maintainability of the suit in respect of infringement of copyright. When that being the position, when this Court had already ordered combining the cause of action for passing off infringement of copyright under the Copyright Act, the suit is very well maintainable. In this regard, the learned counsel has relied on the decisions reported in Laxmikant V.Patel .vs. Chetanbhai Shah and another ((2002) 3 SCC 65) and Perfect Automotive Components and another .vs. Premier Instruments and Controls Ltd., (2009(39) PTC 324 (Mad). Further the learned counsel, by relying upon a judgment reported in M/s. Scientific Compounds & Processes Pvt.Ltd., .vs. M/s.National Soapnut Works, Bangalore (1998-1-L.W.640) has submitted that the averments made in the plaint alone should be taken into consideration at the initial stage. In the instant case, it has been clearly stated that the plaintiffs are carrying on business at Chennai, which gives rise to a cause of action as per section 134(2) of the Trade Marks Act and 62(2) of the Copyright Act. Therefore, the issue with regard to the jurisdiction could be dealt with as preliminary issue after filing written statement by the defendant. Further, the learned counsel submitted that the invoice dated 24.05.2006 would show that the respondents/plaintiffs are marketing their product at Chennai. Whether the said document is genuine or not could be decided only at the time of trial. Though the defendant says that the said document cannot be treated as an authenticated document to come to a conclusion that the respondents are marketing their product at Chennai, the same could be decided at the time of trial and not at the threshold stage. Further, section 62 of the Act permits a deviation from the general law and it give the discretion to the litigant to decide the forum, it is not the choice of the Court. In this regard, the learned counsel relied on the decision reported in Brooke Bond India Limited, Calcutta .vs. Balaji Tea (India) Pvt,.Ltd., Raipur ((1993) II M.L.J.132). Further, the learned counsel submitted that the contentions raised by the learned counsel for the applicant based on section 28(3) cannot be taken as a bar for filing the suit. On the other hand, it could be only a defence for the applicant/defendant. Thus, they prayed for the dismissal of both the applications.
6. The Court paid its anxious consideration on the submission made by the learned counsel on either side and perused the materials available on record.
7. It is the main submission of the learned counsel for the applicant that this Court has no territorial jurisdiction to entertain the suit since the defendant is carrying on the business only within the jurisdiction of Karnataka. It is the further submission of the applicant that though the plaintiffs in the short cause title of the plaint stated that they are having office at No.16/2, Narayanan Street, Mint, Chennai-1, no tangible evidence was produced to show that they are having office at Chennai. Hence, the present suit is not maintainable. That apart, it is the submission of the appellant that under section 28(3) of the Trademarks Act, the applicant is a registered proprietor of the trade mark and hence, there is a bar under section 28(3) of the Trade Marks Act, 1999 to file a suit and therefore, on that ground also, the suit is not maintainable. Though the application was registered at Chennai, the certificate was issued by the Registrar at Mumbai. Therefore, the suit for permanent injunction is not maintainable before this Court. Even assuming for a moment that the suit could be maintained before this Court since the application was registered at Chennai, even then the plaint is liable to be returned, since no leave was obtained by the plaintiffs for filing the suit on the ground that part of cause of action arose at Chennai. Per contra, it is the submission of the learned counsel for the respondents that in the instant case, the respondents have categorically stated in the plaint that they are carrying on business at Chennai. Therefore the suit is maintainable as per section 134(2) of the Trade Marks Act. There is no need to produce the proof at this stage to show that the plaintiffs are carrying on business at Chennai. Moreover, under section 62(2) of the Copyright Act, the applicant is entitled to file a suit before this Court since they are carrying on business at Chennai. In support of the contentions, both sides have produced several judgments.
8. Now, it would be appropriate to look into the judgments produced by the learned counsel for the applicant. It has been held in Saranya Zaveri's case (supra) that "the expression "carries on business" occurring in section 62(2) of the Copyright Act will be attracted only if the essential part of the business takes place at the certain place asserted by the plaintiff. The plaintiff cannot be said to carry on business at Ernakulam unless it has an agent at Ernakulam and such agent has the power to receive money and enter into contracts".
9. In Dhodha House & Pagtel Field Marshal Indfustries's case (supra), it has been held that "A Corporation in view of Explanation appended to Section 20 of the Code would be deemed to be carrying on business inter alia at a place where it has a subordinate office. Only because, its goods are being sold at a place would thus evidently not mean that it carries a business at that place.
10. For the same analogy, the applicant has relied on the judgment reported in (1994) 4 SCC 711. The learned counsel for the applicant has relied on the said judgments in support of his contention that only if the plaintiffs carry on business within the jurisdiction of this Court, they can maintain the suit as per sections 134 of the Trade Marks Act and 62 of the Copyright Act. In the instant case, except the averment in the plaint that the plaintiffs are carrying on business at Chennai, no other tangible evidence was produced. But, I am of the opinion, on the ground of want of jurisdiction, the application for rejection of the plaint cannot be entertained. In fact, the judgment relied on by the respondents reported in 1998-1-L.W.640 (supra) gives a fitting answer to this issue and the relevant paragraphs are extracted hereunder.
"15. The learned single Judge has revoked the leave granted, holding that this Court has no jurisdiction on the basis of the statement made in the affidavit of the respondent filed in support of Application No.1539/91. In the said affidavit the respondent has denied that its products were sold at Madras at all. It is relevant to state here itself that the appellant has made specific averment in the plaint that the respondent's goods are sold within the city of Madras at several places.
16. We find force in the submission of the learned counsel for the appellant that, whether the Court has jurisdiction or not, could not have been decided on the basis of the statement made in the affidavit filed by the respondent in support of the Application No.1539/91 and the Court, at the time of deciding whether it has jurisdiction or not would have taken note of the averments made in the plaint, which is the settled law. Further the appellant had no opportunity to rebut the statement made by the respondent in the affidavit that its products are not sold in Madras. The proper course would have been after the respondent had filed the written statement, an issue could be taken as to the jurisdiction and that could have been dealt with either as a preliminary issue or along with other issues on the basis of the evidence that could be let in by the parties.
...
18. Be that as it may, application of the judgment of the Division Bench of this Court depended again on the establishment of facts in that case. As already stated by us, the averment made in the plaint alone should have been taken into consideration in order to decide the jurisdiction, at that stage by the learned single Judge. This must not be understood as saying that the respondent cannot raise the question of jurisdiction of this Court to try the suit in the written statement that may be filed; and in the event such a question is raised, essentially an issue ought to be raised and thereafter that issue has to be decided either as a preliminary issue or along with other issues"
11. The principles enunciated in the above judgment would show that the issue with regard to the jurisdiction has to be decided only as a preliminary issue, after filing a written statement by the applicant/defendant. In the instant case, the respondents have stated that they are carrying on business at Chennai. The veracity of the same could be tested only after filing the written statement. Therefore, the suit filed for the reliefs under the Trademarks Act and Copyright Act cannot be rejected on the ground of want of jurisdiction even before filing of written statement.
12. In fact, another judgment relied on by the respondents reported in 1993-PTC-40 (supra) also throws light with regard to the issue of jurisdiction. In the said judgment, it has been held as follows:
"Held that Section 62 of the Copyright Act, 1957 permits a deviation from the general law and it give the discretion to a litigant to decide the forum, it is his choice and not the choice of the court. No exception can be taken if his discretion is not to the liking of the Court. Since the copyright action emerges from the same bundle of facts from which the trade mark and passing of action emerge and admittedly copyright action is maintainable in this court, it will not serve the ends of justice if leave is refused for joinder of causes of action falling under the Copyright Act and the Trade and Merchandise Marks Act and accordingly, the suit shall proceed for all the causes of action for the infringement of copyrights, trade marks and passing off and shall be disposed of in accordance with law. As regards the interim injunction is concerned, the defendant having filed an affidavit that the respondent company is not using the label complained of the appeal is decided in terms of the undertaking".
13. In view of the dictum laid down in the above judgment, I am of the opinion that the submission made by the learned counsel for the applicant with regard to the territorial jurisdiction cannot be entertained. Further, I am of the opinion that the invoice dated 24.05.2006 (available at page No.40 of the second additional typed set of documents) filed on the side of the respondents would show that they are marketing their product within the jurisdiction of this Court. Though it was contended by the learned counsel for the applicant that the said document cannot be taken as an authenticated document, the veracity and genuineness of the same could be gone into only at the time of trial and not at this stage. It is well settled principle that the averments made in the plaint alone should be taken into consideration in order to decide the jurisdiction at the earlier stage. In the instant case, the averments of the plaint would show that the plaintiffs are carrying on business within the jurisdiction of this Court and marketing their products are sufficient to maintain the suit before this Court. Further, I am of the opinion that there is no specific bar under section 28(3) of the Trademarks Act to file a suit. Under such circumstances, I am not accepting the submissions made by the learned counsel for the applicant based on section 28(3) of the Trademarks Act. Since the suit prayer for infringement of trade mark is maintainable based on the averments in the plaint, I do not find any infirmity in the order passed by this Court in combining the cause of action in respect of infringement of trade mark, passing off and infringement of copyright in a single suit. Therefore, in my considered opinion, no case has been made out by the applicant for returning the plaint and revoking the order passed in A.No.5042 of 2011.
For the reasons stated above, both the applications are dismissed.
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