Delhi High Court
Intas Pharmaceuticals Limited vs Allergan Inc. on 24 July, 2006
Equivalent citations: AIR2007DELHI108, 132(2006)DLT641, 2006(32)PTC272(DEL), AIR 2007 DELHI 108, 2007 (3) ABR (NOC) 528 (DEL), 2007 AIHC NOC 279, (2006) 132 DLT 641
Author: Mukundakam Sharma
Bench: Mukundakam Sharma, Hima Kohli
JUDGMENT Mukundakam Sharma, J.
1. The issue that arises for consideration in this appeal is whether this Court has the territorial jurisdiction to try and entertain the suit, which was filed by the respondent herein.
2.The respondent as plaintiff filed a suit on the Original Side of this Court, praying inter alia for a decree of mandatory injunction and damages, as also for infringement of trade mark, passing off and unfair competition against the appellant/defendant in the suit. In the said suit, the respondent / plaintiff claimed that the plaintiff No. 1 is a registered proprietor of the trademarks BOTOX and BTX-A in India. It was also stated by the respondent/plaintiff that this Court has the territorial jurisdiction to try and entertain the suit as the offending product of the appellant/defendant is sold by the appellant/defendant in and around Delhi, within the jurisdiction of this Court.
3. The appellant, however, filed an application dated 23rd January, 2006, under Order VII Rule 11 of the Code of Civil Procedure, praying inter alia for rejection of the plaint for want of territorial jurisdiction. In support of the aforesaid contention and submission, the appellant heavily relied upon the judgment of the Supreme Court in the case of Dhodha House v. S.K. Maingi reported as 2005 (10) SCALE 267.
4. The learned Single Judge considered the aforesaid plea raised by the appellant in its application and vide order dated 28th April, 2006 rejected the same holding that a part of the cause of action having arisen within the territorial jurisdiction of this Court, the suit filed by the respondent cannot be dismissed for want of territorial jurisdiction. The aforesaid findings and the conclusions arrived at by the learned Single Judge are under challenge in this appeal.
5. Mr. Bishwajit Bhattacharya, learned Counsel appearing for the appellant vehemently submitted before us that while enacting the Trade Marks Act, 1999, a specific Section, namely, Section 134 has been enacted, which provides that a suit for infringement of a registered trade mark or for passing off cannot not be instituted in any court inferior to a District Court having jurisdiction to try and entertain the suit.
6. In order to properly appreciate the aforesaid submissions made by the learned Counsel for the appellant, it would be appropriate to extract hereinbelow, the provisions of Section 20 CPC as also the provisions of Section 134 of the Trade Marks Act, 1999 on which reliance was placed by the counsel appearing for the appellant:
Section 20 CPC: Other suits to be instituted where defendants reside or cause of action arises:- Subject to the limitations aforesaid, every suit shall be instituted in a Court within the local limits of whose jurisdiction -
(a)the defendant, or each of the defendants where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain; or
(b)any of the defendants, where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain, provided that in such case either the leave of the Court is given, or the defendants who do not reside, or carry on business, or personally work for gain, as aforesaid, acquiesce in such institution; or
(c)the cause of action, wholly or in part, arises.
Explanation: - A corporation shall be deemed to carry on business at its sole or principal office in India or, in respect of any cause of action arising at any place where it has also a subordinate office, at such place.
... ... ... ... ... ...
Section 134 of Trade Marks Act: Suit for infringement, etc., to be instituted before District Court. - (1) No suit -
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off 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, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
(2) For the purpose of Clauses (a) and (b) of Sub-section (1), a "District Court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceedings, the person instituting the suit or proceedings, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain.
7. Referring to the aforesaid two provisions, counsel for the appellant submitted before us that Section 20 of the Code of Civil Procedure is a general provision contained in the Code of Civil Procedure, which gives a guideline of the courts which would have the territorial jurisdiction to try and entertain a suit. It specifically provides that every suit will be instituted in a court within the local limits of whose jurisdiction the defendant resides, carries on business or personally works for gain or where the cause of action has arisen, either wholly or in part. There is also an explanation provided to Section 20 CPC, which lays down that a corporation shall be deemed to carry on business at its sole or principal office in India or, in respect of any cause of action arising at any place where it also has a subordinate office, at such place. Same would be the position in respect of a company.
8. According to the learned Counsel for the appellant, aforesaid provision of Section 20 Civil Procedure Code is a general provision and since a special provision has been made in the Trade Marks Act, 1999 by way of Section 134, which again provides the forum and the place where a suit for infringement of trade mark etc. is to be instituted, the provisions of Section 134 shall have an overriding effect over the provisions of Section 20 CPC and, therefore, the provisions of Section 20 CPC shall stand impliedly repealed. It was also submitted by the counsel appearing for the appellant, that in any case, no cause of action has arisen within the territorial jurisdiction of this Court and, therefore, the impugned order dated 28th April, 2006, passed by the learned Single Judge is required to be set aside and quashed. The counsel further submitted that assuming that the appellant/defendant had in its written statement admitted that this Court has the territorial jurisdiction to try and entertain the suit, yet such admission shall not and cannot confer jurisdiction on the Delhi Court, if such jurisdiction is otherwise not available. In support of the said contention, the counsel relied upon the ratio of the decision of the Supreme Court in Harshad Chiman Lal Modi v. DLF Universal Ltd. and Anr. reported as .
9. In the light of the aforesaid submissions, we have heard the learned Counsel for the respondent and have also perused the entire records placed before us. A perusal of the plaint, which is annexed with the memorandum of appeal, as Annexure-A, indicates that the aforesaid suit was a suit for injunction and damages, infringement of registered trade mark, passing off and unfair competition. There is no denial to the fact that as of date the trademark of the respondent is registered in India. In paragraph 36 of the plaint, it was stated by the respondent as plaintiff that this Court will have the territorial jurisdiction to try and entertain the present suit as the offending product is sold by the defendant in and around Delhi within the jurisdiction of this Court. It is, therefore, obvious and established that the respondent as plaintiff is placing reliance upon the provisions of Section 20 of the Code of Civil Procedure. As per the aforesaid submission made in the plaint and the submissions made by the learned Counsel for the respondent, the provisions of Section 134 of the Trade Marks Act, 1999 have no application at all to the facts and circumstances of the present case.
10. When an effort is being made to derive support from the provisions of Section 20 CPC for claiming right and entitlement to institute a case in this Court, we have to examine as to whether or not the provisions of Section 20 CPC are applicable to the facts of the present case. There are several decisions rendered by this Court, dealing with the issue of territorial jurisdiction in such matters which are relevant in the context of whether or not the provisions of Section 20 CPC are at all applicable to the facts of this case or whether the said provision stood impliedly repealed by the provisions of Section 134 of the Trade Marks Act. Such decisions were rendered not only in the context of the Trade Marks Act, of 1958 but also in the context of Copyright Act, which contains a specific provision with regard to territorial jurisdiction, namely, Section 62 of the Copyright Act. In this connection, we may appropriately refer to the Division Bench decision of this Court in Jawahar Engineering Company and Ors. Ghaziabad v. Jawahar Engineers Pvt. Ltd. Sri Rampur, Distt. Ahmednagar, Maharashtra reported as 1983 PTC 207 and the decision in P.M. Diesels Ltd. v. Patel Field Marshal Industries reported as 1998 PTC (18) (DB). However, recently, the Supreme Court has delivered a judgment in the case of Dhodha House (supra). There is no Supreme Court decision discussing the law as provided for under Section 20 CPC read with the provisions of Section 62 of the Copyright Act.
11. Before embarking upon a discussion on the legal position regarding the issue at hand at this stage we may refer to the defense taken by the appellant in its written statement. As against the aforesaid statement made in paragraph 36 of the plaint pertaining to averments relating to the territorial jurisdiction of this Court, the appellant/defendant filed a written statement categorically stating inter alia that the territorial jurisdiction of this Court is not denied. The fact that the appellant is selling goods in and around Delhi is not denied even evasively. Therefore, the fact that the appellant/defendant is selling its goods in Delhi and that this Court has the territorial jurisdiction to try and entertain the suit instituted by the respondent as plaintiff stood admitted in the aforesaid written statement. Subsequently, an amended written statement was filed by the appellant wherein also the territorial jurisdiction of this Court was not denied. The fact that the appellant is and has been selling the offending product in Delhi is also not denied. Therefore, when the aforesaid issue was argued before the learned Single Judge, it was an admitted position that the appellant / defendant admitted that this Court has the territorial jurisdiction to try and entertain the suit. However, there is no denial of the fact that the said statement, which is in the nature of an admission cannot vest jurisdiction in this Court unless it can be shown that this Court otherwise has the territorial jurisdiction to entertain the suit. There can also be no dispute with regard to the proposition laid down by the Supreme Court that no amount of concession or admission by the defendant shall confer jurisdiction on a court, if it does not otherwise possess such a jurisdiction to entertain a suit. The ratio of the decision of the Supreme Court in the case of Harshad Chiman Lal Modi (supra) is an authority in this regard and there can be no dispute with regard to the said proposition of law as laid down and settled by the Supreme Court.
12. Now, coming to Section 20 of the Code of Civil Procedure, a perusal of the same make it manifest that it is possible to invoke the jurisdiction of a particular court if the defendants or any of the defendants resides or carries on business or personally works for gain within the jurisdiction of the said court. When the Trade Marks Act was enacted, the Legislature was fully conscious of the fact that Section 20 of the Code of Civil Procedure provides for a forum and the place in which a suit is required to be instituted. Despite the said fact, Section 134 of the Trade Marks Act, 1999 was enacted and while enacting the said provision, which was in addition to the provisions of the Code of Civil Procedure, the Legislature specifically included the non obstante clause, which states "notwithstanding anything contained in the Code of Civil Procedure".
13. Therefore, in our opinion, in view of the inclusion of the aforesaid expression in the statutory provision "notwithstanding anything contained in the Code of Civil Procedure" the provisions of Section 134 of the Trade Marks Act, 1999 shall have to be read in addition to the provisions of Section 20 of the Code of Civil Procedure. The aforesaid position is also made clear and reiterated by the Supreme Court in the case of Dhodha House (supra). In paragraph 19 of the said judgment, the Supreme Court held thus:
19. Cause of action, as is well-settled, is a bundle of facts which are necessary to be proved in a given case. Cause of action, it is trite, if arises within the jurisdiction of the court concerned empowers the court to entertain the matter. Determination of territorial jurisdiction of a civil court is governed by the provisions of the Code of Civil Procedure....
20. The jurisdiction of the District Court to determine a lis under the 1957 Act as also the 1958 Act must, thus, be instituted where the whole or a part of cause of action arises. Sub-section (2) of Section 62 of the 1957 Act provides for an additional forum....
21. Admittedly, no such additional forum had been created in terms of the provisions of the 1958 Act.
14. For the aforesaid conclusion that we have arrived at after scrutinizing the provisions of Section 20 of the Code of Civil Procedure and Section 134 of the Trade Marks Act, 1999 and particularly, the non obstante clause, we derive support from the decision of the Supreme Court in Dhodha House (supra). Therefore, what is provided under Section 134 of the Trade Marks Act is an additional forum over and above the one provided for by the provisions of Section 20 of the CPC. This is also made clear when the provisions enacted under Sub-section (2) of Section 134 of Trade Marks Act are passed. It is also to be noted that the provisions of Section 62 of Copyright Act are almost pari materia with the provisions of Section 134 of Trade Marks Act. Sub-section (2) of Section 134 clearly stipulates that the provisions made therein are in addition to what is provided for under Section 20 CPC.
15. In this view of the matter, and in terms of the aforesaid discussion, we are of the considered opinion, that the submissions of the learned Counsel for the appellant that Section 134 of Trade Marks Act overrides the provisions of Section 20 of Code of Civil Procedure and that it impliedly repeals the said provision, is found to be devoid of merit and is rejected. We hold that the provisions of Section 134 of the Trade Marks Act, 1999 do not whittle down the provisions of Section 20 of the CPC but only provide an additional forum and place for filing a suit in the case of any trade mark violation.
16. In any event, in the present case, it is not the intention of the respondent/plaintiff to invoke the provisions of Section 134 of the Trade Marks Act. It is categorically submitted before us by the learned Counsel for the respondent for the purpose of proving and establishing that this Court has territorial jurisdiction that what is sought to be invoked, is only the provisions of Section 20 of the Code of Civil Procedure and not the provisions of Section 134 of Trade Marks Act. Therefore, we are required to scrutinize the plaint filed by the respondent/plaintiff and come to a definite conclusion as to whether or not this Court will have the territorial jurisdiction, in terms of the provisions of Section 20 CPC.
17. When the aforesaid provision is examined in the light of the facts of the present case, it is crystal clear that in fact, the provisions of Section 20(a) and 20(b) will not be applicable to the facts of the present case. Therefore, the only provisions which could be attracted in the present case are the provisions of Section 20(c) of the CPC. The said provisions enable a plaintiff to file a suit in all such places where the cause of action arises either wholly or in part. In the present case, the specific plea of the respondent/plaintiff herein is that this Court has the territorial jurisdiction to try and entertain the suit as the defendant is selling the offending products in Delhi, which statement is also admitted by the appellant / defendant in its written statement. In view of the aforesaid position, the learned Single Judge rightly held that this Court will have the territorial jurisdiction to try and entertain the present suit.
18. We find no reason to take a different view particularly also in the light of the decision of the Supreme Court in Dhodha House (supra). In the said decision, the Supreme Court has categorically stated that for the purpose of deciding the case in Dhodha House (supra), the question as to whether the defendant had been selling its products in Delhi or not was wholly irrelevant. One of the grounds on which the Division Bench of this Court in P.M. Diesels Ltd. v. Patel Field Marshal Industries (supra) held that the Delhi Court has territorial jurisdiction as the defendant was selling the goods under the impugned trade mark at Delhi and thus the plaintiff's right thereof had been violated at Delhi. In the said decision, the Division Bench of this Court, however, did not advert to the said contention raised therein saying that the question as to whether the defendant has been selling its products on a commercial scale at Delhi was a question of fact and was required to be properly determined in the case only after evidence was led by the parties. It is in that context that the Supreme Court has held that the question as to whether the defendant had been selling its products in Delhi is wholly irrelevant.
19. In this view of the matter, the ratio of the decision of the Supreme Court in Dhodha House (supra) is not at all applicable to the facts and circumstances of the present case, to the aforesaid extent, as it had no occasion to deal with the issue regarding selling of the goods by the defendant in Delhi due to part of the cause of action had arisen within the territorial jurisdiction of this Court. Two decisions rendered by the Single Judges of this Court and the present impugned order passed by another learned Single Judge have held that since the offending goods are being sold by the appellant / defendant at a particular place, it shall definitely give jurisdiction to the court of such a place, which is also what was held in M/s Jawahar Engineering Company (supra). It is necessary to mention at this stage that in view of the decision rendered in Dhodha House (supra), the Supreme Court held that the decision in M/s Jawahar Engineering Company (supra) will not be applicable to the facts of the case before it. Since the application for registration of trademark in the cases before it had not been made within the territory of Delhi, the Supreme Court in the case of Dhodha House (supra) found and held that the decision in the case of Jawahar Engineering Company (supra) would be inapplicable to the facts of the said case before it. In the said case, the Division Bench of this Court also held that such court will have jurisdiction where the trade mark is sought to be sold and if such trade mark is being sought for sale in Delhi amongst other places, Delhi shall also have jurisdiction to entertain such a suit.
20. In the light of the aforesaid discussion, we are of the considered opinion that the order dated 28th April, 2006, passed by the learned Single Judge does not suffer from any infirmity. We find no merit in this appeal and the same is dismissed. No order as to costs.