Madras High Court
Ramu Hosieries, Re. By Its Sole ... vs Ramu Hosieries, Rep. By Its Partner ... on 6 July, 1998
Equivalent citations: 1998(2)CTC230
ORDER Judgement pronounced by C. Shivappa, J.
1. The appellant herein has filed CS No. of 1996, SR No.6107 to 6116 along with Application No.1215. of 1996 under Clause 12 of Letters Patent for leave to sue before this Court on account of substantial part of cause of action having arisen within the jurisdiction of this Court, since the appropriate office of Trade Mark Registry with respect to the appellant's registered trade mark is in Madras an secondly, Eenadu carrying respondent's use of impugned trade mark in the course of its advertisement is circulated in the city of Madras: The order refusing leave to sue is impugned in this appeal.
2. A memo has been filed by the respondent stating that the some of their business has been changed subsequently and there is no infringement as alleged and as such, there is no cause of action. The learned senior counsel Mr. U. N. R. Rao, appearing for the appellant submitted that the similar question often arises for consideration and the learned Judge has observed that it is desirable to settle the issue authoritatively by a decision of the Division Bench of this Court and, hence, insisted for determination of the questions involved in this appeal.
3. The question for consideration are (i) whether the publication in Eenadu Daily emanating from Hyderabad and widely circulated in the city of Madras amounts to infringement of the appellant's trade mark? and (ii) whether the cause of action arose wholly or in part within the jurisdiction of this Court on account of the trade mark registered at the Madras Registry?
4. In order to determine these questions, few facts are necessary and they are set out hereunder:- The appellant is the registered proprietor of a number of registered trade marks including the trade mark "Ramu" for hosiery, bearing No.332829 in Class 25 with effect from 27.7.1978. The appellant has been using the trade mark "Ramu" on their hosieries continuously and extensively from 1972. By virtue of registration and its extensive use since 1972, the appellant has built up commercial goodwill oh the trade mark "Ramu" for hosieries. The. defendant in "Eenadu" Daily emanating from Hyderabad and widely circulated in the city of Madras on 10.8.1995 advertised themselves as Ramu Hosieries as a trade mark and trade-name, adversely affecting the trade mark rights of the appellant. The appellant issued a "Caution Notice" in the issue dated 30.9.1995. By a registered letter dated 4.12.1995 of the appellant's counsel, the respondent was issued a "Cease and Desist Notice" and there was no reply thereto. Despite the above, the respondent continued to use the trade-name and trade mark "Ramu" for Hosieries. Hence decided to file the suit.
5. It is undisputed that a "Caution Notice" through the Press and "Cease and Desist Notice" to the defendant were given. It is also not in dispute that the Trade mark was registered in the Registry at Madras.
6. Advertisement is a step in the process of infringement to solicit customers in the name of the impugned trade mark. In other words, the advertisement is calculated to induce people to believe that such a property is meant for marketing.
7. Infringement of trade mark in Black's Law Dictionary is indicated to mean "that it is an unauthorised use or colourable imitation of the mark already appropriated by another on goods of a similar class. It exists if words of designs used by the defendant are identical with or so similar to the plaintiff's that they are likely to cause confusion or deceive or mislead others and one who affixes the trade mark of another to similar articles in such a way that his use of it is liable to cause confusion in the trade, or is calculated to mislead purchasers and induce them to buy infringer's articles as goods of the other thus depriving the latter of the full benefit of his property." With this meaning in view if it is viewed, there is every possibility of unauthorised use likely to cause confusion in the trade and calculated to mislead purchasers. Thus, advertisement is an infringement of the trademark. In Kheshtrapal Sharma v. Pancham Singh Varma, AIR 1915 All. 262, a division Bench of Allahabad High Court has observed "on the other hand several English cases have been cited which show that it has been held for some years past that a trade mark may be infringed by means of an advertisement. We think it is sufficient to refer to decisions in Jay v. Ladler, 1888 (40) Ch.D 649 : 60 LT 27 : 37 WR 505, Bourne v. Swan and Edgar Limited, 1903 (1) Ch. 211 : 72 LJ Ch. 168 : 51 WR 213 : 87 LT 589 : 19 TLR 59 : 20 RPC 105 and to the injunction which was issued by the House of Lords in the case of Reddaway v. Banham, 1896 AC 199 : 65 LJQB 381 : 74 LT.289 : 44 WR 638." In M/s. Amba Lal Sarabhai Enterprises Limited v. M/s. Sara Pharmaceuticals and others, 1982 PTC 214, the Delhi High Court has taken the view that prima facie publication of an advertisement in Delhi offering for sale of goods was sufficient to confer jurisdiction on the Delhi Courts. In Amar Soap Factory v. Public Gram Udyog Samiti, 1985 PTC 85, the Delhi High Court reiterated the same view and held that cause of action in part can be said to have arisen in favour of the plaintiff in Delhi by the publication of the advertisement of the defendant's mark in the Trade Marks Journal and accordingly the Delhi Courts have territorial jurisdiction to entertain and decide the suit." We hold that the trade mark may be infringed by means of an advertisement since the publication of an advertisement in papers, hand bills is calculated to induce people to believe that they will get certain type of goods, thus it amounts to infringement of the appellant's trade mark. We do not subscribe to the view of the trial Judge that advertisement by the defendant in Eenadu circulated in Madras does not provide a cause of action.
8. In order to determine the question of jurisdiction, it is appropriate to see whether any part of the cause of action for the present suit has arisen in Madras. In State of Madras y. C.P. Agencies, , their Lordships of the Supreme Court have quoted with approval the definition of 'cause of action' given in some of the English cases. In Read v. Brown, 1888 (22) QBD 128, Lord Esher, M.R., defined 'cause of action' to mean:
"Every fact which it would be necessary for the plaintiff to prove, if traversed in order to support his right to the judgment of the Court. It does not comprise every piece of evidence which is necessary to prove each fact but every fact which is necessary to be proved."
In the same case, Fry, L.J., agreeing with Lord Esher, M.R. said:
"Everything which, if not proved, gives the defendant an immediate right to judgment must be part of the cause of action".
It is indisputable that cause of action has no relation whatever to the defences that may be set up by the defendant, nor does it depend upon the character of the relief prayed for by the plaintiff. It refers entirely to the grounds set forth in the plaint as the cause of action. It is not limited to the actual infringement of right sued on, but includes all the material facts on which it is founded. The words "cause of action" comprise every fact, though for the plaintiff to prove, if traversed, to support his right to the judgment of the court. The words have been defined as meaning "simply a factual situation the existence of which entitles one person to obtain from the Court a remedy against another person." . In the instant case, after all what the appellant complains is that his registered trademark is being infringed, even though the product with the alleged offending mark has not come to the Madras Market. The fact of registration which has necessarily to be alleged and, if traversed, to be proved one's part of the cause of action and the same has arisen in Madras. The situs of the property (plaintiff's trade mark) is in Madras. In R. Viswanathan v. Ruken Ul-Mulk Syed Abdul Wajid, , the Apex Court has held that the situs of certain shares (which are movables) is the place where the registered office of the company is situate, that being the place where the shares can be effectively dealt with. This Court in S.B.S. Jayam & Co., v. Krishnamoorthi, 1977 MLJ 286 has held thus:
'In respect of a trade mark registered in the Madras Office, the situs of the property in the mark is at Madras. Even though the plaintiff's mark had been registered under the Trade Marks Act, 1940 at Bombay, by virtue of Section 136(2) of the Trade and Merchandise Marks Act of 1958, it should be deemed to have been registered only at Madras:.....
"Even though the product with the alleged offending mark had not come to the Madras Market, there could be little doubt that the alleged infringement was not only at the place where the defendant marketed his goods but also where the plaintiff's property itself was situated."
The principal enunciated in 1977 TNLJ 214 was taken note of and approved by a Division Bench of this Court in O.S.A. Nos.78 to 80 of 1976, dated 24.11.1976.
9. Normally, the jurisdiction of the Civil Court in relation to movable property has to be determined with reference to cause of action. Right or interest in a trade mark can only be a movable property having regard to the definition in the General Clauses Act. Admittedly, the trade mark has been put to use and exploited and registered at Madras. Therefore, the cause of action in such suit can be taken to arise where the property is situate or where it was marked or exploited and registration assumes all significance, because in a suit for infringement of a trade mark, the plaintiff has to establish the cause of action by showing that he has a property right in a trade mark and the same has been infringed by the other party. Where the infringement had taken place partly in one jurisdiction by way of advertisement and rest in another jurisdiction by marketing the product, then, the registered owner of the trade mark can maintain the suit either at the place where the cause of action arose partly or wholly which includes the place of registration, advertisement or marketing. This can be by showing that his trade mark has been registered with the Registrar of Trade Marks. Therefore, it cannot be said that no part of the cause of action arose at Madras. Thus, the finding of the Learned Judge, that unless the goods are actually marketed, it cannot be said that there has been an infringement of the trade mark within the jurisdiction of this Court, is unsustainable. We answer both the questions in the affirmative.
10. In view of the memo filed by the respondent stating that the steps have been taken to change the name of their business, in which event, no cause of action survives in favour of the appellant. Since the learned Judge observed that it is desirable to have the issue settled which is brought up before this Court at frequent intervals by a decision of the division Bench Of this Court, we have decided the questions involved in this appeal. Since we have held that the view of the teamed Judge is unsustainable, the impugned order is set aside and the appeal is allowed. Parities to bear their own costs. Consequently, the CMP is closed.