Calcutta High Court
Itc Ltd vs Irinjalakuda Town Co-Operative Bank ... on 11 April, 2017
Author: Soumen Sen
Bench: Soumen Sen
GA 3382 of 2016
CS 252 of 2016
ITC LTD.
Versus
IRINJALAKUDA TOWN CO-OPERATIVE BANK LTD. & ORS.
BEFORE:
The Hon'ble JUSTICE SOUMEN SEN
Date : 11th April, 2017.
Appearance:
Mr.S.N.Mookerjee, Sr. Adv.
Mr.Debnath Ghosh, Adv.
Mr.Sayan Roy Chowdhury, Adv.
Mr.Soumya Sen, Adv.
Mr.P.Sinha, Adv.
Mr.M.Mukherjee, Adv.
Mr.J.Roy, Adv.
Mr.Ayan De, Adv.
..for the plaintiff.
Mr.Rajeev Kumar Jain, Adv.
Mr.Piyush Kumar Roy, Adv.
Ms.Subika Paul, Adv.
..for the respondents.
The Court: This is an application for revocation of leave under Clause 12 of the Letters Patent filed by the respondents in a suit for infringement and passing off action.
The plaintiff has filed a composite suit of passing off an injunction. The defendant no.1 carries on banking business in a nondescript town in Kerala. The defendant no.1 seeks to use the name of the town as part of its business name. The part of the matter which is of relevance is 2 the abbreviation of the name of the respondent no.1 namely, the first letter of the three key words in the first defendant's name which by reason of such abbreviation described the defendant no.1 as ITC Bank.
The action has been instituted by ITC Limited, one of the most well-known companies in the country. The action is for infringement and passing off and the submission of ITC is that if ITC were to be used in such form as a part of the first defendant's name, people would be under the impression that it was a bank with which ITC Limited was associated. It was on such apprehension the plaintiff filed this suit.
The application for revocation is filed essentially on the ground that no part of the cause of action has arisen within the jurisdiction of this Court. The applicant defendant states that if the averments in the plaint are taken as true and correct, it would not show that any part of the alleged cause of action has arisen within the jurisdiction of this Court.
The defendant contends that the trademark registration certificates show that the registrations are over device or label marks and the plaintiff is unable to demonstrate a single registration in respect of "ITC" the word mark per se. The composite suit for infringement and passing off action has been instituted in this Court primarily by virtue of Section 134(2) of the Trademarks Act, 1999 inasmuch as the plaintiff does not have any registration over the word "ITC" per se no action for infringement is maintainable assuming but not admitting that the 3 plaintiff has any cause of action for passing off. This Court does not have any jurisdiction as a composite suit would not entitle a Court to entertain a suit in respect whereof it has no jurisdiction. In short, it is alleged that no part of cause of action in respect of the passing off in any event has arisen within the jurisdiction of this Court.
Although it has not been elaborated in the petition but in course of submission it is stated that the defendant no.1 is carrying on business in a town in Kerala and the documents annexed to the plaint would not show that the defendant has any business in Calcutta or has any presence in Calcutta. Although the revocation is not sought for on the ground of forum inconvenience presumably because in that case the applicant would be required to admit that a part of the cause of action has arisen within the jurisdiction but two decisions of this Court in Madanlal Jain vs. Madanlal & Ors. reported at AIR 1949 Cal 495 and Muttra Electric Supply vs. Gopal Saran reported at 59 CWN 419 dealing with the principles to be applied for revocation on the ground of forum inconvenience were cited.
A Single Bench decision of the Bombey High Court in Gold Seal Engineering Product Pvt. Ltd. & Others vs. Hindusthan Manufacturers and Others reported at AIR 1992 Bom 144 has been relied upon for the proposition that the Court would not have any jurisdiction to entertain the suit if it appears to the Court that in composite suit based on different causes of action incorrect averments 4 were made by the plaintiff relating to jurisdiction in respect of such causes of action. An overruled judgment of the Hon'ble Supreme Court in S.M.Dyechem vs. Cadbury (India) Ltd. reported at (2000) 5 SCC 573, paragraphs 22, 43 to 54 were relied upon to impress upon this Court that when the Court is of the view that all the causes of action have not arisen within the jurisdiction of this Court, the Court may not permit the plaintiff to proceed with the suit and shall immediately revoke the leave and left the plaintiff to take appropriate steps in accordance with law. A Division Bench Judgment of the Delhi High Court in Banyan Tree Holding (P) Limited vs. A.Murali Krishna Reddy & Anr. reported at 2010 (42) PTC 361 (Del) paragraphs 43 to 46 has been relied upon in support of the argument that in a passing off or an infringement action where the defendant is sought to be sued on the basis that its website is accessible in the forum State in absence of any evidence to show that defendant engaged in some commercial activity in the forum State by targeting its website specifically at customers within that State, the jurisdiction of the Court in the forum State cannot be invoked.
Per contra Mr. S.N. Mookherjee, learned Senior Counsel appearing on behalf of the plaintiff submits that it is trite law that in an application for revocation of leave under Clause 12 of the Letters Patent the assertions in a plaint must be assumed to be true for the purpose of determining whether leave is liable to be revoked on the point of 5 demurer. Mr. Mookherjee has referred to an observation of the Hon'ble Supreme Court in Indian Mineral & Chemicals Co. & Ors. versus Deutsche Bank reported at (2004) 12 SCC 376 Paragraph 10, and invited the attention of this Court to paragraphs 29, 30, 31, 34, 35, 40, 44, 46, 47, 48, 51 and 57 of the plaint and submits that if the averments made in the said paragraphs are taken to be true and correct then the assumption of jurisdiction of this Court under Clause 12 of the Letters Patent cannot be doubted. The learned Senior Counsel submits that in an action for infringement and passing off the plaintiff would not be required to show actual sale of the product and has distinguished the decision in Gold Seal Engineering Product Pvt. Ltd. & Ors. (supra) of the Bombay High Court by submitting that because of the State amendment of Section 9 of the Code of Civil Procedure the Court was required to decide the jurisdiction of the Court to entertain the interlocutory application and only after a decision is arrived at that the Court has jurisdiction which is not the case here any decision on the merits of the claim could be considered. Mr. Mookherjee learned Senior Counsel has relied upon a Division Bench Judgement of this Court in J.N. Nichols (Vimto) Limited versus Rose & Thistle and Another, reported at AIR 1994 Calcutta 43 and a Division Bench Judgement of the Delhi High Court in N.R. Dongre versus Whirlpool Corp. reported at 1996 PTC 16 for the proposition that use of the trade mark does not require that there has to be actual physical sale since it is well settled 6 that even mere advertisement without having even the existence of the goods can be said to be an "use" of the mark. Mr. Mookherjee has referred to the specific pleadings in the plaint that through the use of the trade mark, trade name and domain names, www.itcbank.com and www.itcbank.org, the Defendant No.1, through Defendant No.2, is offering services under the Plaintiff's trade mark/ trade name/house mark/corporate name, which could cause considerable commercial loss to the Plaintiff herein and cause irreparable dilution to its brand value both within and outside the jurisdiction of this Hon'ble Court. The said domain names registered by Defendant No.2 in two gTLDs in its name, is clearly intended to 'pass off' the banking services of the Defendant No.1 as that of the Plaintiff herein and have a free ride on its reputation and goodwill both within and outside the jurisdiction of this Hon'ble Court. The said domain names use the Plaintiff's trademark, trade name, domain name and corporate name without any authority from the Plaintiff. The registration of the aforementioned domain names, by Defendant No.2 in two gTLDs in its name is clearly an attempt to induce customers of the Plaintiff to believe that the domain names registered by the Defendant No.2 is that of the Plaintiff and/or associated in some manner with the Plaintiff's business/websites registered by the Plaintiff in its name. It is the intention of the Defendant No.1, executed through Defendant No.2, to piggyback on the reputation of the Plaintiff and make 7 illegal gains of its worldwide reputation and goodwill both within and outside the jurisdiction of this Hon'ble Court.
The moot question is whether any part of the cause of action has arisen within the jurisdiction of this Court.
In order to decide the said issue the following averments made in the plaint are taken into consideration:-
"29.The Defendant No.3 provides services to Defendant No.1 in the manner of online campaigning which includes advertisement of 'ITCBANK' on the internet. The services provided by the Defendant No.1 through its aforesaid websites and otherwise are provided in the State of Kerala and other parts of India, and are also accessible to persons and/or entities residing and/or carrying on business within the jurisdiction of this Hon'ble Court. The websites of the Defendants are available to and are accessed by persons and/or entities residing and/or carrying on business, both within and outside the jurisdiction of this Hon'ble Court.
30. The Plaintiff submits that the Defendant No.1 has slavishly adopted the Plaintiff's trade mark/trade name 'ITC' in its corporate logo/trade communication/business communication and also registered the domain names with 'ITC' with the sole intention to capitalize on the reputation of the trademark/trade name/corporate name/'ITC' of the Plaintiff both within and outside the jurisdiction of this Hon'ble Court. It is reiterated that the Plaintiff's 'ITC' trade mark is a globally recognized name and the goods/services of the Plaintiff are extensively sold in India and abroad, both within and outside the jurisdiction of this Hon'ble Court. It is further stated that the Plaintiff's portal is accessible globally. The usage of the term 'ITC' by the Defendant No.1 is thus capable of confusing the customers of the Plaintiff's products and services both within and outside the 8 jurisdiction of this Hon'ble Court into believing that the services of the Defendant No.1 emanate from the Plaintiff.
34. The Plaintiff states that a perusal of the documents filed as annexures to the response submitted by the Defendant No.2 during the administrative panel proceedings referred to above, also goes on to show that all the official documents pertaining to Defendant No.1 bear the name 'IRINJIKULADA TOWN COOPERATIVE BANK'. The name 'ITC BANK' within the logo appears in some of the documents only as an addition to the full name of the bank. Therefore, it is clear that the adoption of the term 'ITC by the Defendant No.1 is solely with the intention to cash in or the reputation of the Plaintiff's well known trade mark/corporate name/house 'ITC' by passing off its services, both within and outside the jurisdiction of this Hon'ble Court, as those emanating from the Plaintiff. A copy of the complaint filed by the Plaintiff and the response filed by the Defendant No.1 before the administrative panel are annexed hereto and marked as Annexure 'K' and Annexure 'K1' respectively.
35. The purported adoption of the name/mark 'ITC' by the Defendants is mala fide, illegal and dishonest. By purporting to use such trade mark and/or trade name i.e. 'ITC', the Defendants have acted fraudulently and wrongfully and in collusion and conspiracy with each other as per the following:
(a) The acts of the Defendants in adopting, using and the impugned mark i.e. 'ITC' are with intent to deceive consumers, both within and outside the jurisdiction of this Hon'ble Court.
(b) The Defendants by the purported and wrongful adoption and use of the trade name/mark 'ITC' intends to and/or fraudulently suggests that the services provided and/or advertised by the Defendants are connected with those provided by the Plaintiff and/or to pass of such services as those of or connected to the 9 Plaintiff both within and outside the jurisdiction of this Hon'ble Court.
36. While the Plaintiff's domain names such as www.itc.in, www.itcabd.com, www.itcpspd.com, etc., leads the user to the Plaintiff's websites, the domain names www.itcbank.com and www.itcbank.org leads the user to website offering information and services relating to banking wherein the name of the entity offering such services is written as 'ITC BANK' clearly depicting a connection to the Plaintiff. A printout of the said webpage is annexed hereto and marked as Annexure 'L'. It is evident from the impugned website that the Defendant No.1 with the sole intention to take advantage of the Plaintiff's well known trade mark/trade name 'ITC' and misled the public and the trade both within and outside the jurisdiction of this Hon'ble Court, adopted the mark 'ITC' and domain names www.itcbank.com and www.itcbank.org. The Plaintiff states that the Defendant No.1 has adopted the said trade mark/domain names without any jurisdiction and with full knowledge that the Plaintiff is the prior user and registered proprietor of the trade mark 'ITC'.
37. The Defendant No.1 has also filed an application on 17th August, 2011 for the device mark 'ITCBANK' on a 'proposed to be used' basis being Trade Mark Application No.2191712 in Class 36. A copy of the said application is annexed hereto and marked as Annexure 'M'. It is apparent that the Defendant No.1 has adopted the said trade mark solely with the intention of using the trade mark to mislead the public and trade both within and outside the jurisdiction of this Hon'ble Court, and has admittedly used the device mark ITC BANK post 2011.
38. The trade name/trade mark 'ITC' and domain names www.itcbank.com and www.itcbank.org of the Defendant are deceptively and confusingly similar to the prior used and/or registered trade mark/domain names of the Plaintiff. The use of such identical trade name/corporate name and deceptively similar domain name 10 amounts to misrepresentation in the course of trade to prospective customers, which would inevitably lead to deception and confusion and result in irreparable damage to the hard earned reputation and goodwill of the Plaintiff, both within and outside the jurisdiction of this Hon'ble Court. The Defendant No.1's services are likely to be confused with as well as being passed off as the services of the Plaintiff thereby enabling the Defendant No.1 to free ride upon the hard earned goodwill and reputation of the Plaintiff, both within and outside the jurisdiction of this Hon'ble Court. The consumers both within and outside the jurisdiction of this Hon'ble Court would be misled into thinking that the Defendant No.1's goods/services are those of the Plaintiff and/or related to the Plaintiff. The domain name serves the function of a trademark and is not a mere address and is therefore entitled to equal protection as a trademark. Use of the domain names www.itcbank.com and www.itcbank.org by the Defendants amounts to infringement and passing off of the Plaintiff's well known trade mark/trade name/house mark/corporate name 'ITC'. The use of such domain names by the Defendants and resulting infringement and passing off of the Plaintiff's trade mark/trade name has occurred both within and outside the jurisdiction of this Hon'ble Court.
39. The Plaintiff also came across advertisements of the Defendant wherein the Irinjalakudu Town Co-operative Bank is being referred to as 'ITC Bank'. 'ITCBANK' is also being displayed prominently in such advertisements. Copies of snapshots of these advertisements/commercials downloaded from the internet are annexed hereto and marked as Annexure 'N'. Such online advertisements are accessible both within and outside the jurisdiction and also at the Plaintiff's registered office within the aforesaid jurisdiction.
46. The Plaintiff states that through the use of the trade mark, trade name and domain names, www.itcbank.com and www.itcbank.org, the 11 Defendant No.1, through Defendant No.2, is offering services under the Plaintiff's trade mark/ trade name/house mark/corporate name, which could cause considerable commercial loss to the Plaintiff herein and cause irreparable dilution to its brand value both within and outside the jurisdiction of this Hon'ble Court. The said domain names registered by Defendant No.2 in two gTLDs in its name, is clearly intended to 'pass off' the banking services of the Defendant No.1 as that of the Plaintiff herein and have a free ride on its reputation and goodwill both within and outside the jurisdiction of this Hon'ble Court. The said domain names use the Plaintiff's trademark, trade name, domain name and corporate name without any authority from the Plaintiff. Evidently, the registration of the aforementioned domain names, by Defendant No.2 in two gTLDs in its name is clearly an attempt to induce customers of the Plaintiff to believe that the domain names registered by the Defendant No.2 is that of the Plaintiff and/or associated in some manner with the Plaintiff's business/websites registered by the Plaintiff in its name. It is clearly the intention of the Defendant No.1, executed through Defendant No.2, to piggyback on the reputation of the Plaintiff and make illegal gains off its worldwide reputation and goodwill both within and outside the jurisdiction of this Hon'ble Court."
The Trade Marks Act, 1999 in Section 134 provides that a suit in respect of the following matters shall be filed only before a court, not inferior to a District Court:-
(a) For the infringement of a registered trade mark; or
(b) Relating to any right in a registered trade mark; or 12
(c) For passing of arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered.
Apart from an action for infringement of a registered trade mark, the law enables a suit for passing off also to be filed, arising out of the use of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered. A suit for passing off arising out of the use by the defendant of any trademark identical or similar to the plaintiffs' mark (whether registered or unregistered) can be instituted only in terms of the provision of Section 20 of the Civil Procedure Code which in the instant case would be subject to Clause 12 of the Letters Patent as by reason of Section 120 of the CPC Section 20 of CPC would not be applicable to a chartered High Court.
In Muttra Electric Supply Co. Ltd. (supra) the scope of Clause 12 has been succinctly stated by Justice P.B. Mukharji, J. an eminent jurist and one of the most brilliant minds the country has come across in the following words:-
"The basic character of the jurisdiction of this Court under clause 12 of the Letters Patent requires a more thorough investigation than it has received so far. Under this clause there is first a grant of power to this Court to receive, try and determine suits of every description. Then there is a broad classification of such suits into two divisions. The first classification is concerned with 13 suits for land and immovable property and the second classification is with regard to other suits. Regarding the first class of suits relating to land and immovable property the limitation of jurisdiction of this Court is that such land or immovable property must be situated within its jurisdiction. Regarding the second class of suits other than those for land and immovable property the first limitation is that the cause of action must arise wholly within its jurisdiction. Then this clause deals with those cases where part of the land or part of the cause of action is outside the jurisdiction of this Court. It is here that the leave of this Court has first to be obtained before the suit can be instituted in this Court, with the one exception where the defendant at the time of the suit dwells or carries on business or personally works for gain within the jurisdiction of the Court.
A close scrutiny of this clause, therefore, reveals that there are certain total and absolute jurisdictions of this Court. They are where the whole of the land or immovable property is situated within its jurisdiction when the suit is for such land or immovable property. That is also the case where the whole of the cause of action arises within the jurisdiction of the Court in suits other than suits for land and immovable property. Also that is the case in such cases where the defendant at the time of the institution of the suit dwells or caries on business or personally works for gain within the jurisdiction of this Court irrespective of the fact where the cause of action arises. These three are the categories of total and absolute jurisdiction of the Court under the grant of power in clause 12 of the Letters Patent. No question of the litigant having to take the leave of the Court arises in these three cases. So long as the litigant satisfies the test laid down in these three cases his right to institute the suit in this Court is absolute and unfettered. The court can neither assume nor renounce such jurisdiction.14
But then there is another class of jurisdiction which this Court can avail under clause 12 of the Letters Patent where the reality or the cause of action is not wholly but only partly within its jurisdiction. It is an inchoate jurisdiction which comes into action upon the Court granting the leave to institute the suit. It is the nascent jurisdiction which lies dormant in this Court and can only be put into life and operation by an act of the Court in granting leave to institute the suit. No act of the Court is necessary to assume jurisdiction in those three cases, which I have just described where the jurisdiction is total and absolute. There the Court in its inception is invested with jurisdiction. But here the Court has to acquire it. Here the jurisdiction does not depend only on the fact of the Court but also on the act of the Court."
Since the defendant does not raise forum inconvenience as one of the grounds for revocation it is not necessary to refer to those parts of the judgement where such issue was addressed. In Gold Seal Engineering Product Pvt. Ltd. & Ors. (supra) as I have noticed earlier while summarising the submission of Mr. Mookherjee the issue was entirely different. The notice of motion for interim injunction in a composite suit based on three cause of action was dismissed on the ground that incorrect averments were made by the plaintiff relating to jurisdiction in respect of first two causes of action with the liberty to the plaintiff to take out fresh notice of motion if leave under Clause 14 were ultimately granted. In fact, grant of leave under Clause 14 of the letters patent was tendered when the said judgment was delivered and accordingly, liberty was given to the plaintiff to take out fresh notice of 15 motion in accordance with law after disposal of petition for leave under Clause 14 of Letters Patent on such cause of action, if any, as it may be maintainable in law. The principal laid down in Indian Mineral & Chemicals Co. & Ors. (supra) when applied to the present case it cannot be doubted that no part of the cause of action has arisen within the jurisdiction of this Court.
In P.M. Diesels Ltd. v. Patel Field Marshall Industries, (1998) PTC 260, the court held: "The jurisdiction of a Court does not depend upon the defence 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 purpose of forming prima facie opinion, the Court can travel beyond what is adverted in the plaint".
In Murugeshan v. Ramu Hoseries, 1999 PTC 183 (Mad - DB), it was held that advertisement is a step in the process of infringement to solicit customers in the name of the impugned trade mark and the advertisement is calculated to induce people to believe that such a property is meant for marketing.
In Exphar SA v. Eupharma Laboratories Ltd., AIR 2004 SC 1682: (2004) 28 PTC 251: (2004) 3 SCC 688, the Supreme Court 16 pointed out that the objection to jurisdiction must proceed on the basis that the facts pleaded by the initiator of the proceedings are true.
In Banyan Tree Holding (P) Limited (supra), where the question of jurisdiction for a passing off suit, in which neither the plaintiff nor the defendant is located within the territorial jurisdiction of the court was considered. The plaintiff is at Singapore and the defendants in Hyderabad, and the suit is an action for passing off in which neither the plaintiff nor the defendant voluntarily resides or carries on business within the local limits of Delhi.
On a reference of this question by single Judge and after reviewing the decisions in other common law jurisdictions (Canada, UK, Australia and India), the Division Bench of the High Court held as follows:
1. For the purpose of a passing off action, or an infringement action where the plaintiff is not carrying on business within the jurisdiction of a court, and in the absence of a long-arm Statute, in order to satisfy the Forum Court that it has jurisdiction to entertain the suit, the plaintiff would have to show that the defendant "purposefully availed" itself of the Jurisdiction of the Forum Court. For this it would have to be prima facie shown that the nature of the activity indulged in by the Defendant by the use of the website was with an intention to conclude a commercial transaction with the website user and that the specific targeting of the forum state by the defendant resulted in an injury or harm to the plaintiff within the forum state.17
2. For the purposes of Section 20(c) CPC, in order to show that some part of the cause of action has arisen in the forum state by the use of the internet by the defendant the plaintiff will have to show prima facie that the said website, whether euphemistically termed as "passive plus"
or "interactive", was specifically targeted at viewers in the forum state for commercial transactions. The plaintiff would have to plead this and produce material to prima facie show that some commercial transaction using the website was entered into by the defendant with a user of its website within the forum state resulting in any injury or harm to the Plaintiff within the forum state.
3. The commercial transaction entered into by the defendant with an internet user located within the jurisdiction of the Forum Court cannot possibly be a solitary trap transaction since that would not be an instance of "purposeful"
availment by the defendant. It would have to be a real commercial transaction that the defendant has with someone not set up by the plaintiff itself. If the only evidence is in the form of a series of trap transactions, they have to be shown as having been obtained using fair means. The plaintiff seeking to establish jurisdiction on the basis of such trap transactions would have to aver unambiguously in the plaint, and also place along with it supporting material, to prima facie show that the trap transactions relied upon satisfy the above test.
In the instant case, apart from the fact that the plaintiff carries on business within the jurisdiction of this Court the averments made in the plaint clearly show that the applicant-defendant is "purposefully availed" 18
itself of the forum court and the nature of the activity indulged in by the defendant No.1 by use of the website was with an intention to conclude a commercial transaction with the website user and targeting of the forum State by the said defendant is likely to cause or has resulted in an injury or harm at the forum State. The veracity or authenticity of the said statement can be only decided at the trial of the suit and the opinion expressed is only prima facie as the court at this stage is not expected to hold a trial and only proceeds on the basis that the statements made in the plaint are true and correct.
The averments made in the plaint clearly shows that the plaintiff has asserted that the website of the defendant no.1 is accessible both within and outside the jurisdiction of this Court that the cheques or drafts carrying the name "ITC Bank" are being issued by the defendant no.1 and can be encashed in all banks situated within the jurisdiction of this Court. Similarly, the debit cards purportedly issued by the defendant no.1 by partnering with RUPAY can be and will be used in all Automated Teller Machines and merchant establishments which allow use of debit cards within jurisdiction.
The defendant's challenge to the cause of action for passing off proceeds on the basis that even if the allegations in support of the relief of passing off are separated from the other pleadings and were to be seen to be a separate plaint altogether a suit on the basis of such claim could not have been entertained by this Court. Even if all the averments made 19 in support of the claim for infringement are ignored, obliterated and discarded from the plaint and the suit in so far as it relates to passing off is assessed, notwithstanding there being no averment in the plaint for the independent cause of action relating to passing off being carried to this Court, Clause 14 of the Letters Patent confers jurisdiction of this Court to consider at any stage of the suit as to whether such cause of action would have been joined to the cause of action for infringement. A Division Bench of this Court in Godfrey Phillips (India) Limited Vs. I.T.C. Limited reported at 2011(48) PTC 190 (Cal.) (DB) considered a similar objection and has dealt with this matter in Paragraph 27 of the said report which reads:-
"27. As regards the other point regarding the inclusion of the prayer based on the cause of action of passing off, we find that Clause 14 of the Letters Patent, quoted above, empowers this Court to join such cause of action. According to Mr. Kapoor, such prayer for invocation of Clause 14 must be made before the prayer for return of plaint is made by the defendant. We are, however, unable to accept such contention of Mr. Kapoor as a sound proposition of law. Once the power has been conferred under Clause 14 of the Letters Patent, the Court is entitled to exercise such power at any time before the commencement of the trial. In our opinion, the phrase "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" is wide enough to grant such relief even at the subsequent stages of the suit. At this stage, we can profitably refer to the decision of the Supreme Court in the case of 20 Gajanan Jaikhan Joshi Vs. Prabhakar Mohanlal Kalwar, reported in (1990) 1 SCC 166 where in a suit for specific performance of 22 contract for sale of immovable property, in the absence of the required pleading that the plaintiff was at all material time ready and willing to perform his part of the contract, on the prayer of the defendant, a preliminary issue was framed as to whether the suit was liable to be dismissed for want of the necessary pleading and at that stage, the plaintiff came up with a prayer for amendment of plaint for the purpose of frustrating the defence of maintainability of the suit. Even in such a situation, the Supreme Court set aside the order of the High Court and allowed the amendment thereby making the preliminary issue already framed as infructuous. Such being the position of law, it is absurd to suggest that the Court should strike out the relief based on passing off for want of territorial jurisdiction only because the plaintiff did not pray for leave under Clause 14 before the filing of the application by the defendant alleging want of territorial jurisdiction in respect of part of cause of action."
This Court in a similar matter permitted leave under Clause 14 of the Letters Patent in ITC Ltd. Vs. Godfrey Phillips India Ltd. reported at AIR 2014 Cal 19 and opined:-
"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 immoveable 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 21 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 suit 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 unite 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-22
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."
The petitioner, however, has not contended that the suit is liable to be dismissed as no prior leave under Clause 14 of the Letters Patent has been obtained.
On a true and meaningful reading of the plaint as a whole and some of the paragraphs in particular as indicated above show that the suit is maintainable in this Court. I grant leave to the petitioner under Clause 14 of the Letters Patent to join together with its cause of action against the defendants in respect of infringement and passing off of its trademark "ITC" and to have the same tried and adjudicated upon jointly in C.S.No.252 of 2016.
In view of the aforesaid, G.A. No.3382 of 2016 stands dismissed. However, there shall be no order as to costs.
The defendants are, however, permitted to file their respective written statement within four weeks from date.
(SOUMEN SEN, J.) dg2/sp/B.pal