Bombay High Court
Mohan Meakin Limited vs Pravara Sahkari Sakhar Karkhana ... on 16 April, 1987
Equivalent citations: (1987)89BOMLR356
Author: S.P. Kurdukar
Bench: S.P. Kurdukar
JUDGMENT S.P. Kurdukar, J.
1. This Letters Patent appeal is directed against the judgment and order dated October 13, 1986 passed by the learned Single Judge (Shah, J.) in suit No. 1844 of 1984 filed on the Original Side of this Court. The learned Single Judge after recording his findings on all the three preliminary issues held that the suit is liable to be dismissed for want of statutory under notice Section 164 of the Maharashtra Co-operative Societies Act, 1960 (hereinafter referred to as "the Co-operative Societies Act"). But, however in regard to his finding relating to the jurisdiction (issue No. 3) the learned single Judge felt that his view in that behalf is in conflict with view taken by another single Judge in Pravin R. Gaglani v. Beharilal Beniprasad, . He therefore referred the said issue for decision to a larger Bench and directed the office to place and papers of this suit before the learned Chief Justice for appropriate orders under Rule 28 of the High Court Original Side Rules (hereinafter referred to as "the Rules"). The question that has been formulated and referred to the larger Bench by the learned single Judge is as follows:
"Whether a suit of the nature referred to in Section 105 of the Trade and Merchandise Marks Act, 1958, the valuation of the suit being Rs. 50, 000/- or less, is triable by the High Court or City Civil Court, having regard to the definition of District Court in Section 2(4) of the Code of Civil Procedure This is how we are required to consider and record a finding on the question referred to the larger Bench.
2. The appellant in this appeal is the original plaintiff, hereinafter referred to as "the plaintiff. The plaintiff Mohan Meakin Limited is a public Limited company which was formerly known as Mohan Meakin Breweries Limited and it is incorporated and registered under the Indian Companies Act, VII of 1913, having its registered office at Solan Brewery, P. O. 173214, Simla Hills, Himachal Pradesh and having a Branch office and depot at Arthur Bunder Road, Colaba, Bombay-400 005. The respondent is the defendant, (hereinafter referred to as "the defendant") who is a Co-operative Society having its registered office at Pravaranagar, Taluka Shrirampur, District Ahmednagar, Maharashtra and is carrying on business, inter alia of manufacturing and sale of alcoholic drinks and beverages including whisky.
3. The plaintiff and their predecessors-in-title have been carrying on business in India since the year 1955 and are manufacturers of alcoholic and non-alcoholic beverages including whisky. According to the plaintiffs, they are the registered proprietors of the Trade Mark consisting of the device of a Knight riding on a horse and words "Black Knight", which has been registered under number 228, 236 as of the date 8th April 1965 in Clause 33 in respect of whisky under the Trade and Merchandise Marks Act, 1958 hereinafter referred to as "the Act". According to the plaintiff the said registration has been renewed from time to time and the same is valid, subsisting and effective throughout India. The plaintiffs have also obtained registration in respect of trade marks consisting of the words "Black Knight" in respect of whisky, Black Knight whisky, Special Blend Black Knight whisky, Black Knight Swing Malt whisky, and Black Knight lager beer. The plaintiffs therefore claim that the trade mark Black Knight is being used both in respect of whisky and beer since August 1959 and January 1973 respectively. By reason of the extensive sales and advertisement and sales promotion work by the plaintiff of its whisky and beer bearing the said trade mark Black Knight the traders and members of the public have come to associate the whisky and beer of the plaintiff under the trade marks consisting, inter alia, of the device of a Knight riding on a horse and/or words 'Black Knight' with the plaintiff and its products and the same connote and denote exclusively the said products of the plaintiff and none else.
4. The defendants are also manufacturers of whisky and adopted a label mark comprising the words "Royal Knight" and device of a Knight riding a horse.
5. It is then alleged by the plaintiff that there is phonetic as well as visual similarity between its aforesaid Black Knight trade marks consisting, inter alia, of the device of a Knight riding a horse and words Black Knight and the defendant's trade mark also consisting of the device of Knight riding a horse and words 'Royal Knight' and the use of the impugned trade mark 'Royal Knight' by the defendant is an infringement of the rights of the plaintiff. The use of the impugned trade mark "Royal Knight" in respect of whisky of the defendant is substantially and/or deceptively similar to the plaintiff's Black Knight trade marks and it so nearly resembles and is likely to cause confusion in the course of trade and the use thereof in relation to whisky is enabling the defendant to pass off whisky of its manufacture as and for the whisky of the plaintiff. The plaintiff therefore averred in the plaint that in the circumstances aforesaid the defendant by adopting and using the impugned trade mark Royal Knight as mentioned above has committed infringement of the common law and statutory rights of the plaintiff in respect of its Black Knight trade marks. The plaintiff therefore prayed:-
"(A) That the defendant by itself, its servants, officers, agents, dealers, stockiest and all other persons in its behalf be restrained by a perpetual order and injunction from in any manner infringing the plaintiff's Black Knight Trade Marks and using in relation to whisky and/or any other goods of the same description the Trade Mark consisting of the device of a Knight riding on a horse and words "Royal Knight " or any other trade Mark/label deceptively similar to the Black Knight Trade marks of the plaintiff:
(B) That the Defendant by itself, its servants, officers, agents, dealers, stockists and all other persons on its behalf be restrained by a perpetual order and injunction from manufacturing and/or selling and/or offering for sale and thereby passing off and/or enabling others to pass off its whisky bearing the trade mark consisting of the device of a Knight riding a horse and words Royal Knight as the product of the plaintiff and using the said trade mark Royal Knight in respect of whisky or any other goods of the same description manufactured and/or sold by it and/or any other Trade mark/label confusingly or deceptively similar to the plaintiffs' Black Knight trade marks so as to pass off or enabling others to pass off as the product of the plaintiff;
(C) That the defendant by itself, its servants, officers, agents, dealers, stockiest and all other persons on its behalf be restrained by a perpetual order and injunction from doing any act, deed or thing calculated or likely to deceive the purchasers into the belief that they are purchasing the whisky or product of the plaintiffs".
In addition to these main reliefs the plaintiffs have also claimed certain other consequential reliefs to which reference is unnecessary at this stage.
6. The defendant by its written statement, inter alia, denied that it has infringed the plaintiffs' trade mark in any manner whatsoever. For the purposes of disposal of this appeal, it is unnecessary to set out all the defences taken up by the defendant. We may only reproduce the relevant pleadings of the parties in connection with the preliminary issues. In paragraph 2 of the plaint, the plaintiff has stated as follows:
"The Defendant is a Co-operative Society having its Registered Office at Pravaranagar, Taluka Shrirampur, District Ahmednagar, Maharashtra, and is carrying on business, inter alia, of manufacturing and sale of alcoholic drinks and beverages including whisky."
In paragraph 37, the plaintiff has averred as under :-
"37. The defendant's whisky bearing the impugned Trade Marks 'Royal Knight' is being commercially sold and offered for sale in Bombay and as such the defendant is committing the acts of infringement and passing off in Bombay. The defendant is a Co-operative Society having its registered office at Pravaranagar, Taluka Shrirampur, District Ahmednagar outside Bombay. The material part of the cause of action has arisen in Bombay. This Hon'ble Court has therefore exclusive jurisdiction to entertain and try the suit under the Trade and Merchandise Marks Act, 1958. This Hon'ble Court has, therefore, jurisdiction to entertain and try this suit."
Then in paragraph 39 of the plaint, the plaintiff has stated as follows :
"39. For the purpose of Court fees and Jurisdiction, Prayers (A), (B) and (C) are incapable of monetary valuation and, therefore, a Court fee of Rs. 30/- is paid in respect of each of them. Prayer (D) is valued at Rs. 5, 000/- and prayer (E) is valued at Rs. 300/-. The plaintiff undertakes to pay the additional Court fees as and when required in respect of prayer (D) upon the actual amount being ascertained on the accounts being taken."
7. In reply to these plaint averments, the defendant has averred as follows :
"At the outset and without prejudice to any other statement, allegations and submissions made hereinafter, the Defendant submits that the suit is not maintainable, inasmuch as the plaintiff has failed to give statutory notice under Section 164 of the Maharashtra Co-operative Societies Act, 1960. The Defendant is a Co-operative Society registered under the Maharashtra Co-operative Societies Act, 1960. The subject-matter of the suit touches the business of the society and as such it was obligatory on the part of the plaintiff to give statutory notice under Section 164 of the Maharashtra Co-operative Societies Act, 1960. In the absence of such notice the suit is not maintainable and the suit is therefore liable to be and should be dismissed with costs."
In regard to para 2 of the plaint the defendant has stated as follows:
"5. With reference to paragraph 2 of the plaint, the defendant states that what is stated therein is substantially correct."
With reference to para 37 of the plaint, the defendant has stated as under:
"With reference to paragraph 37 of the plaint, the Defendant denies that any cause of action has accrued to the plaintiffs as alleged. The Defendant denies that this Hon'ble Court has jurisdiction to entertain and try the suit under the Trade and Merchandise Marks Act, 1958 as alleged or at all."
In regard to para 39 of the plaint, the defendant has averred as follows:
"The allegations contained in paragraphs 39, 40 and 41 of the plaint are denied. In any event, the Defendant submits that on the plaintiffs' valuation, made in paragraph 39 of the plaint, it is clear that this Hon'ble Court has no jurisdiction to try and entertain the present suit."
8. On the basis of the pleadings of the parties, as many as 20 issues were drawn and out of them the following three issues were tried as preliminary issues:-
"(1) Whether it was obligatory for the plaintiffs to give to the Defendants statutory notice under Section 164 of the Maharashtra Co-operative Societies Act, 1960 as alleged in paragraph 1 of the written statement ?
(2) Whether in the absence of such notice the suit is not maintainable as alleged in paragraph 1 of the written statement ?
(3) Whether this Hon'ble Court has no jurisdiction to entertain and try the suit as alleged in paragraph 2 of the written statement ?"
9. The learned Single Judge on the first two preliminary issues recorded his findings in the affirmative and held that since the plaintiff has failed to give the statutory notice under Section 164 of the Co-operative Societies Act, the suit is liable to be dismissed. In regard to the third issue the learned Single Judge recorded his finding in the negative holding that this court has jurisdiction to entertain the suit. As stated earlier so far as this finding is concerned the learned Single Judge opined that the same would be in conflict with the decision in Pravin R. Gaglani (supra). He therefore, referred the said issue to a larger Bench for consideration and decision.
10. We may first deal with the various challenges of the appellant to the findings on the first two issues.
It may be stated that the plaintiff's alone have filed this Letters Patent Appeal challenging the legality and correctness of the findings recorded by the trial Judge on first two issues. Mr. Mehta, learned counsel appearing for the plaintiffs urged that the learned trial Judge as failed to appreciate that the subject-matter of the suit was plaintiffs' trade mark "Black Knight" and infringement thereof by the defendant and that the suit was in the nature of an action in tort viz. infringement and passing off against the defendant and that such an action was not and could not be said to be touching the business of the defendant. Since the suit was in the nature of an action in tort the provisions of Section 164 of the Co-operative Societies Act have no application and in a suit of this nature statutory notice as required under the said section was not a sine qua non for initiating the present action. He further urged that the learned single Judge totally misinterpreted the key words in Section 164, "subject-matter of the suit touches the business of the society." The learned single Judge also laid undue stress on the word "touching" as appearing in Section 164 of the Act instead of considering the expression 'business' appearing in the said Section. The word 'business' has been used in Section 164 in a narrower sense and it means the actual trading or commercial or other similar business activity of the society (defendant) which the society is authorised to enter into under the Act, the Rules and the Bye-laws. While elaborating this argument the learned counsel for the plaintiff drew our attention to the Bye-laws of the society and in particular the object and aim of the said society as also sub-clause (g) of clause 2. According to Mr. Mehta howsoever liberally we may construe the bye-laws of the defendant it could not be said that the object of the defendant is to manufacture alcoholic product and or whisky. If this is the true interpretation of the bye-laws, counsel submitted that the activities of manufacturing the alcoholic drinks and/or whisky by the defendant is beyond the ambit of activities of the defendant permitted under the bye-laws and if any such activity is in contravention and/or beyond the ambit of the bye-laws the defendant cannot be said to be carrying on activity within the bye-laws and, therefore, it is not entitled for protection of any of the provisions of the Co-operative Societies Act and in particular Section 164. In order to appreciate this contention it would be convenient to reproduce the provisions of Section 164 of the Co-operative Societies Act. Section 164 reads as under:-
"No suit shall be instituted against a society, or any of its officers, in respect of any Act touching the business of the society, until the expiration of two month next after notice in writing has been delivered to the Registrar or left at his office, stating the cause of action, the name, description and place of residence of the plaintiff and the relief which he claims, and the plaint shall contain a statement that such notice has been so delivered or left."
11. On a plain reading of this section it is quite clear that no suit shall be instituted against the society or any of its officers in respect of any act touching the business of the society until the expiration of two months next after notice in writing has been delivered to the Registrar or left at his office. It is common ground before us that this statutory requirement has not been complied with on the date when the present suit was instituted on August 7, 1980. But, however, according to Mr. Mehta Section 164 of the Co-operative Societies Act has no application because it is not the pleading of the defendant that one of the objects of the defendant is to carry on the business of manufacture and/or of sale of alcoholic products viz. whisky as provided under the bye laws. In the absence of such specific averment in the written statement and/or in the absence of any specific provision in the bye-laws of the defends the manufacture of alcoholic product viz. whisky would not be and cannot be the business of the society to attract provisions of Section 164 of the Act and, therefore, any action emanating from such business of the society would not be an act touching the business of the society. Mr. Mehta therefore submitted that the plaintiffs cannot be non-suited on the ground of non-compliance of the statutory notice under Section 164 of the Co-operative Societies Act. This argument does not appeal to us for more than several reasons.
12. In the first place as stated earlier in the plaint para 2 itself the plaintiff has averred that the defendant is a Co-operative Society and is carrying on business, inter alia, of manufacturing and sale of alcoholic products and beverages including whisky. When attention was drawn to this averment in the plaint, the learned counsel sought to justify this averment on the ground that this has been given in the plaint by way of description of the defendant and this does not mean that the plaintiff has admitted that the defendant has been carrying on business, inter alia, of manufacturing and sale of alcoholic drinks and beverages including whisky. We are unable to accept the justification. The defendant in its written statement has stated that what is stated in para 2 of the plaint is correct. The result of this pleading in our opinion is that the parties were not at dispute as to whether the defendant is carrying on business, inter alia, of manufacturing and sale of alcoholic drinks and beverages including whisky. In view of this pleading we are of the opinion that the defendant has been carrying on the business, inter alia, of manufacturing and sale of alcoholic drinks and beverages including whisky.
13. It was then urged by Mr. Mehta that it is not the object of the defendant nor it is permissible under the bye-laws of the defendant to carry on the business of manufacture and sale of alcoholic drinks and beverages including whisky. The said activity/business of the defendant would therefore be beyond the provisions of the bye-laws and consequently to such business the provisions of Co-operative Societies Act and in particular Section 164 would not apply and if that be so, an act of infringement and passing off the trade mark cannot be construed as an Act touching the business of the society. This submission has to be tested with reference to the bye-laws of the defendant of which the official translation has been supplied to us. These bye-laws are called, "Pravara Sahakari Sakhar Karkhana Ltd., Pravaranagar, " Bye-law 2(g) deals with Aims and Objects to the society. Bye-law 2(g) reads as under:
"To grow sugarcane and other crops, to construct buildings, to erect workshops for manufacturing sugar and other complementary products and to run them for that purpose -
(1) xx (2) xx (3) To purchase sugarcane and jaggery and other products according to necessity, and to purchase necessary articles from members and non-members and to cultivate sugarcane and other crops for manufacturing other complementary products and to take action for complying with the items necessary for the same.
2(chha) To install necessary machinery for doing process on the complementary products such as stalk of squeezed sugarcane, sugar skimmings, press mud (?) etc. and agricultural produce to purchase raw materials for the same and to sell the finished products and to appoint agents according to necessity for the same. "
14. On a plain reading of the bye-laws and in particular 2 (chha), it is clear that one of the objects of the defendant society in addition to manufacture of sugar is to manufacture the complementary products and in that behalf to erect the necessary machinery. It was contended on behalf of the plaintiff that assuming that the defendant society is permitted to undertake the manufacture of complementary products by no stretch of imagination it could be said that manufacture of alcoholic products namely whisky is a complementary product of sugar industry which is the object of the defendant society. The controversy therefore turns upon the question as to whether manufacturing of whisky by the defendant is the complementary product. In this behalf it is material to note that alcoholic product in question is manufactured out of molasses (Malee). It is not disputed before us that the defendant is manufacturing the alcoholic products from out of the sugar skimmings or molasses. The question therefore is as to whether sugar skims or molasses is a bye-product of the defendant. This molasses is obtained while processing the sugar. It is therefore obviously a bye-product. If this be so, then in our opinion the alcoholic product manufactured out of the molasses by the defendant society is the complementary product, and the said business would fairly and squarely fall within the ambit of clause 2(chha) of the bye-laws. We, therefore, do not see any substance in the contention raised on behalf of the plaintiff that manufacturing of alcoholic products i.e. whisky etc, is not the business of the society within the meaning of the word 'Business' in Section 164 of the Act. On fair construction of the bye-laws of the defendant society we are of the opinion that the provisions of Maharashtra Co-operative Societies Act and in particular Section 164 of the Act must apply and in the absence of service of statutory notice under Section 164 of the Act on the Registrar, the present suit will have to be held not maintainable.
15. Mr. Mehta, learned counsel, then urged that the word 'business' occurring in Section 164 of the Act is used in a narrower sense and referable to the actual trading or commerce similar to the business activity of the society which is permissible under the bye-laws. A restricted meaning will have to be given to the word 'business' used in Section 164 and in this context if clause 2 and in particular sub-clause (chha) of the said bye-laws are read, it cannot be said that manufacturing of alcoholic products is the business of the society. If that be so, counsel urged the provisions of Section 164 will have no application. In support of this submission Mr. Mehta heavily relied upon the judgement of the Supreme Court in Deccan Merchants Co-operative Bank Ltd. v. M/s. Dalichand Judraj Jain and Ors., . In this reported judgment of the Supreme Court, the word 'business' used in sub-Section (1) of Section 91 of the Co-operative Societies Act fell for consideration and while construing the ambit of the said word 'business' the Supreme Court in paragraphs 16 and 17 has held as follows :
16. "The principal questions which arise on the interpretation of Section 91 are two :
(1) What is the meaning of the expression "touching the business of the society" ? and (2) what is the meaning of the expression "a person claiming through a member" which occurs in Section 91(1)(b) ?"
We are not concerned with the second question.
While dealing with these questions the Supreme Court has held as follows :-
".......The sentence, namely, "notwithstanding anything contained in any other law for the time being in force" clearly ousts the jurisdiction of Civil Courts if the dispute falls squarely within the ambit of Section 91(1). Five kinds of disputes are mentioned in sub-Section (1): first, disputes touching the constitution of a society; secondly, disputes touching election of the office bearers of the society; thirdly, disputes touching the conduct of general meetings of a society; fourthly, disputes touching the management of a society, and fifthly, disputes touching the business of a society. It is clear that the word, "business" in the context does not mean affairs of a society because election of office-bearers, conduct of general meetings and management of a society would be treated as affairs of a society. In this sub-Section the word 'business' has been used in a narrower sense and it means the actual trading or commercial or other similar business activity of the society which the society is authorised to enter into under the Act and the Rules and its bye-laws".
16. Relying on these observations in Italics Mr. Mehta urged that the alcoholic products manufactured by the defendant is not the business activity of the society which the society is authorised to enter into under its bye-laws. We have already rejected the contention of Mr. Mehta that the bye-laws of the defendant do not permit the defendant to manufacture the alcoholic products. On fair construction of the bye-laws and in particular 2 (chha), it is clear to us that alcoholic products of the defendant are complementary products and that has been permitted under bye-law (2) of the defendant. Even after giving restricted meaning to the word 'business' used in Section 164 of the Act, as sought to be given by the learned counsel for the plaintiff, we have no hesitation in coming to the conclusion that the business in alcoholic products of the defendant which are complementary products is permitted under bye-law (2) and in particular clause (chha) of the said bye-law. In addition to this the above observation of the Supreme Court will have to be read in the context to the controversy raised before it. From the facts stated in the judgment it appears that the appellant Deccan Merchants Co-operative Bank Ltd. was doing the business of banking. The original owner executed an agreement by which he leased out the entire ground-floor of building to the writ petitioners on a monthly rent of Rs. 250/-. This building was mortgaged with the bank by way of security. In arbitration proceeding bank obtained a consent award against the owner under which repayment of debt by instalment was provided. It also provided a default clause. Owner/debtor committed a default. The building however could not be sold for want of buyers. Collector issued certificate of transfer of right, title and interest in the building under Section 100 of the Maharashtra Co-operative Societies Act in favour of Bank. Since vacant possession could not be obtained as the tenants/occupants resisted, the bank applied to the Deputy Registrar, Co-operative Societies under Section 91-96 of the Co-operative Societies Act. The dispute was referred to Registrar's nominee under Section 93 of the Co-operative Societies Act. Petitioners/tenants challenged the jurisdiction of the Registrar's nominee to certain such dispute by filing petition under Art. 226 of the Constitution to the High Court.
17. The main contention taken up in the writ petition was that the dispute raised under the said application of the Bank was not one which fell within the scope and ambit of Section 91 of the Act and/or between the parties therein specified. It was further submitted that the dispute was not one which touches the business of the bank and that the petitioners were not the persons claiming through a member of the Bank. The petitioners also challenged the jurisdiction of Registrar's nominee to entertain the bank dispute in view of Section 28 of the Bombay Rent Act. While resolving this controversy the Supreme Court was called upon to interpret the word 'business' occurring in Section 91 of the Act. While interpreting the word 'business' in Section 91, the Supreme Court in paragraph 17 of the judgment, has held that the word "business" has been used in a narrower sense and it means the actual trading or commercial or other similar business activity of the society which the society is authorised to enter into under the Act and the Rules and its bye-laws. While answering the question as to whether the dispute touching the assets of a society would be a dispute touching the business of a society the Supreme Court observed that ordinarily, if a society owns building and lets out parts of building which it does not require for its own purpose it cannot be said that letting out of those parts is a part of the business of the society. But it may be that it is the business of a society to construct and buy houses and let them out to its members. In that case letting out property may be part of its business. Where the society is a Co-operative Bank, and ordinarily a Co-operative Bank cannot be said to be engaged in business when it lets out properties owned by it. Therefore the dispute between a tenant and a member of the bank in a building which has subsequently been acquired by the Bank cannot be said to be a dispute touching the business of the bank. It is further held that the word "touching" is also very wide but with certain limitations it would include any matter which relates to, concerns or affects the business of the society.
18. Mr. Mehta then sought to make a distinction between a contractual liability and tortuous liability. According to the learned counsel an action based on a contractual liability may require a notice under Section 164 of the Co-operative Societies Act but so far as the tortuous liability is concerned which is the foundation of the present suit against the defendant, the provisions of the Act and in particular Section 164 will have no application. We are unable to agree with this submission. In our opinion Section 164 of the Co-operative Societies Act must apply to every suit in respect of any Act touching the business of the society whether founded on contractual liability or in torts. This contention urged on behalf of the plaintiff has therefore no substance and must be rejected.
19. In view of our forgoing conclusions in connection with the interpretation of Section 164 of the Act and the bye-laws of the society we are of the opinion that the learned trial Judge was right in answering issues Nos. 1 and 2 in the affirmative and consequently taking a view that the plaintiff's suit is liable to be dismissed.
20. We may now turn to the issue referred by the learned Single Judge to a larger Bench. The issue reads as under :
"Whether a suit of the nature referred to in Section 105 of the Trade and Merchandise Marks Act, 1958, the valuation of the suit being Rs. 50, 000/- or less, is triable by the High Court or City Civil Court, having regard to the definition of District Court in Section 2(4) of the Code of Civil Procedure".
21. Before we deal with this issue it will be necessary to refer to certain provisions contained in Civil Procedure Code, 1908, clause 12 of the Letters Patent as amended by the Bombay High Court Letters Patent (Amendment) Act, XLI of 1948, Bombay City Civil Court Act and the Trade and Merchandise Marks Act, 1958. To put it briefly the question that has been posed under this issue is, in view of the pecuniary valuation of the suit, whether the High Court will have jurisdiction to try the present suit or whether the suit ought to have been filed in the City Civil Court, Bombay. As stated earlier, the plaintiff has filed this suit for a permanent injunction restraining the defendant in any manner infringing the plaintiffs Black Knight trade mark registered under the Act and using in relation to whisky and/or any other goods of the same description the trade mark consisting of the device of a Knight riding on a horse and words "Royal Knight" or any other trade mark/label deceptively similar to the "Black Knight" trade marks of the plaintiff registered under the Trade and Merchandise Marks Act, 1958. The plaintiff has also sought an injunction against the defendants restraining them from manufacturing and or selling and/or enabling others to pass off its whisky bearing the trade mark consisting of the device of a Knight riding a horse and words "Royal Knight" as the product of the plaintiff and using the said trade mark "Royal Knight" in respect of whisky or any other goods of the same description manufactured and/or sold by it and/or any other Trade Mark/Label confusingly or deceptively similar to the plaintiffs Black Knight trade marks so as to pass off or enabling others to pass off as the product of the plaintiff. Certain other consequential reliefs are also claimed by the plaintiff. We have therefore first to turn to the relevant provisions relating to the suit contained in Section 105 of the Act. Section 105 reads thus :-
"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."
Having regard to the frame of the present suit it cannot be disputed that the present suit falls within the category mentioned in Section 105 of the Act. Such a suit has to be filed in a Court which shall not be inferior to District Court having the jurisdiction to try the suit. The principal question is what is the meaning of word, "District Court" having jurisdiction to try the suit. The word, "District Court" has not been defined under the Act. Clause (c) of sub-Section (1) of Section 2 of the Act defines the word "District Court" as : "District Court" has the meaning assigned to it in the Code of Civil Procedure, 1908. We have therefore to turn to the provisions contained in the Code of Civil Procedure which defines the District Court. Civil Procedure Code in terms does not define the District Court, but sub-Section (4) of Section 2, defines the word 'district' which reads as under :
"District" means the local limits of the jurisdiction of a principal Civil Court of original jurisdiction (hereinafter called a "District Court"), and include the local limits of the ordinary original civil jurisdiction of a High Court."
22. Until the establishment of the Bombay City Civil Court Act, 1948, the High Court was the principal civil court of the original civil jurisdiction so far as local/territorial limits of Greater Bombay were concerned and as such is a District within the meaning of the definition contained in Section 2(4) of the Code of Civil Procedure. Bombay City Civil Court Act, 1948, came into force sometime in the year 1948 and Section 3 of the Bombay City Civil Court Act provides that, "The State Government may by Notification in the Official Gazette, establish for the Greater Bombay a Court, to be called the Bombay City Civil Court." It further provided that notwithstanding anything contained in any law, such court shall have jurisdiction to receive, try and dispose of all suits and other proceedings of a civil nature not exceeding Rs. 25, 000/- (now Rs. 50, 000/-) in value, and arising within the Greater Bombay, except suits or proceedings which are cognizable by the High Court. Section 3 which is material for our purpose provides that High Court shall receive, try and dispose of the suit under any special law other than the Letters Patent. Until the enforcement of the provisions contained in the Bombay City Civil Court Act, 1948 all suits arising within the territorial limits of the Greater Bombay irrespective of the pecuniary valuation were filed on the original side of the High Court. The defence taken up by the defendant to the maintainability of the suit in the High Court is that since the pecuniary valuation of the suit made by the plaintiff is less than Rs. 50, 000/- the suit ought to have been filed in the Bombay City Civil Court and the High Court has no jurisdiction to receive try and dispose of the suit. While dealing with this question relating to the jurisdiction it would be necessary to refer to the provisions of Letters Patent which confer original civil jurisdiction on the High Court. Clauses 11 and 12 of the Letters Patent are relevant and these clauses as they stood prior to the coming into force of the Bombay City Civil Court Act, 1948 read as under :-
"Clause 11 : And we do hereby ordain that the said High Court of Judicature at (Madras) (Bombay) Fort William in Bengal shall have and exercise ordinary original civil jurisdiction within such local limits as may from time to time be declared and prescribed by any law made by competent legislative authority for India and until some local limits shall be so declared and prescribed within the limits declared and prescribed by the proclamation fixing the limits of Calcutta issued by the Governor-General in Council on the 10th day of September, in the year of our Lord. One thousand seven hundred and ninety-four and the ordinary original civil jurisdiction of the said High Court shall not extend beyond the limits for the time being declared and prescribed as the local limits of such jurisdiction."
"Clause 12: And we do further ordain that the said High Court of Judicature at Fort William in Bengal (Madras) (Bombay) in the exercise of its ordinary original civil jurisdiction, shall be empowered to receive, try and determine suits of every description if, in the case of suits for land or other immovable property, such land or property shall be situated or in all other cases if the cause of action shall have arisen, either wholly, or in case the leave of the court shall have been first obtained, in part within the local limits of the ordinary original jurisdiction of the said High Court, or if the defendant at the time of the commencement of the suit shall dwell or carry on business, or personally work for gain, within such limits, except that the said High Court shall not have such original jurisdiction in cases falling within the jurisdiction of the Small Cause Court at (Madras), (Bombay), Calcutta, in which the debt or damage or value of the property sued for does not exceed one hundred rupees."
Clause 12 of the Letters Patent has been amended by the Bombay High Court Letters Patent (Amendment) Act, XLI of 1948, and the amended provision reads thus:-
"Clause 12: And we do further ordain that the said High Court of Judicature at Bombay, in the exercise of its ordinary original civil jurisdiction, shall be empowered to receive, try and determine suits of every description, if, in the case of suits for land or other immovable property such land or property shall be situated, or in all other cases if the cause of action shall have arisen either wholly or in case the leave of the Court shall have been first obtained, in part, within the local limits of the ordinary original jurisdiction of the said High Court or if the defendant at the time of the commencement of the suit shall dwell or carry on business, or personally work for gain, within such limits; except that the said High Court shall not have such original jurisdiction in cases falling within the jurisdiction of the Small Causes Court at Bombay, or the Bombay City Civil Court".
23. Consequently suitable amendment has also been incorporated into Bombay City Civil Court Act, 1948 excluding the jurisdiction of the High Court in cases falling within the jurisdiction of the City Civil Court. Upon reading the provisions of Clause 12 of the Bombay High Court Letters Patent and Section 3 of the Bombay City Civil Court Act, it is clear that the suit arising in the Greater Bombay or Bombay district having a valuation of Rs. 50, 000/- or less has to be filed in the Bombay City Civil Court and the suits having a valuation of Rs. 50, 0001/- and above are required to be filed on the original side of the High Court. To this general rule an exception is incorporated in Section 3 of the Bombay City Civil Court Act which takes away the jurisdiction of the said Court in certain class of suits as provided under Clauses (a) to (d.) of Section 2. It is not and cannot be disputed that the present suit is filed by the plaintiff under the Trade and Merchandise Marks Act, 1958 and, therefore, it is a suit which is filed under the special law. If this be so, under Clause (c) of Section 3 of the Act the jurisdiction of the Bombay City Civil Court to receive, try and dispose of the present suit is excluded. But, however, the controversy which survive, for consideration is what is the meaning that has to be assigned to the word "district" occurring in Section 105 of the Act ? Section 105 of the Act, provides that no suits shall be instituted in any court inferior to District Court having jurisdiction to try the suit. As stated earlier the Act does not define the District Court. The Code of Civil Procedure also does not define "District Court" but it defines only "district" and it means local limits of the jurisdiction of the principal Civil Court of Original Jurisdiction hereinafter called the District Court and includes the local limits of ordinary original civil jurisdiction of the High Court. It is averred by the plaintiff that the cause of action for the present suit arose within the territorial jurisdiction of the Greater Bombay. The territorial jurisdiction of Greater Bombay means the territorial jurisdiction of district Bombay and the district for this purpose is as defined in sub-Section (4) of Section 2 of the Code of Civil Procedure, or, to put it in other words, the cause of action arose for the present suit in the district of Bombay. Consequently the present suit is required to be filed in the District Court having jurisdiction to receive, try and dispose of the same and such a District Court will be the High Court, the principal Civil Court of Original Jurisdiction.
24. At this stage it will be relevant to refer to Clause 12 of the Letters Patent which confers ordinary original civil jurisdiction to the High Court over the presidency town of Madras, Bombay etc. Therefore the area of the presidency town will be a district as defined in Section 2(4) of the Code of Civil Procedure, 1908 and when the High Court exercises its original jurisdiction over the city limits i.e. Greater Bombay, it is deemed to be a District Court. Section 9 of the Civil Procedure Code gives power to every Civil Court to try all suits of civil nature excepting suits of which their cognizance is either expressly or impliedly barred, and the Explanation I to that Section says that a suit in which the right to property or to an office is contested is a suit of a civil nature, notwithstanding that such right may depend entirely on the decision of questions as to religious rites or ceremonies.
25. It is well recognised that trade mark right is a property and, therefore a suit seeking reliefs for infringement of trade marks is a suit of civil nature. If such an infringement occurs and the cause or action for a suit based on the infringement arises within the area of Greater Bombay or district Bombay the High Court being a District Court/or principal Civil Court will alone have power to try the suit. Consequently it will have to be held that for the purpose of the present suit the High Court is a principal Court of Original Jurisdiction and/or the District Court as defined under sub-section (4) of Section 2 of the Code of Civil Procedure. As a necessary corollary it must follow that the High Court being the principal Civil Court of original civil jurisdiction will be the District Court for the purpose of Section 105 of the Trade and Merchandise Marks Act, 1958 and as such suits of the nature mentioned in the said Section must be filed in the High Court irrespective of the pecuniary valuation of the suit.
26. Mr. Tulzapurkar, learned counsel appearing for the defendant urged that having regard to the pecuniary valuation of the present suit such a suit ought to have been filed in a principal Civil Court of original civil jurisdiction viz. the Bombay City Civil Court and the High Court has no jurisdiction. We are unable to subscribe to this contention for the reason indicated above. In our opinion, on correct interpretation of Section 2(4) of the Civil Procedure Code, the governing factor is local limits or territorial jurisdiction and pecuniary jurisdiction is not relevant inasmuch as the present suit having been filed under Section 105 of the Act and in particular having regard to the provisions contained in Section 3(c) of the Bombay City Civil Court Act, 1948 which has been referred to hereinabove the jurisdiction of the Bombay City Civil Court is excluded.
27. Mr. Tulzapurkar in support of his submission relied upon the decision rendered by learned single Judge of this Court in Pravin R. Gaglani (supra) and urged that the Bombay City Civil Court is a Principal Court (District Court) which alone has jurisdiction to receive, try and dispose of the present suit. After going through the decision rendered by the learned single Judge in Pravin R. Gaglani (supra) we are of the opinion that the controversy raised and settled in that decision is altogether different and there was no occasion to consider the suits or the proceedings falling within clauses (a) to (d) of Section 3 of the Bombay City Civil Court Act. The decision in the case of Pravin R. Gaglani has therefore no application and we do not express any opinion about the said decision.
28. On the other hand Mr. Mehta drew our attention to the judgment of the Division Bench of Madras High Court in The Daily Calendar Supplying Bureau, Sivakasi v. The United Concern, . That case arose under the Copyright Act and the Division Bench was called upon to interpret Sections 62 and 14 of the Copyright Act, 1957 read with Section 2(4) of the Civil Procedure Code. It was urged on behalf of the defendant in that case that the City Civil Court in Madras will have jurisdiction and not the High Court. The controversy which arose before the Madras High Court was more or less identical to one which has been raised before us. The Division Bench of the Madras High Court after considering the relevant provisions has held as follows:
"Clauses 11 and 12 of the Letters Patent confer ordinary original, Civil jurisdiction to the High Court, over the Presidency Town of Madras. Therefore the area of the Presidency Town will be a District as defined in Section 2(4) of the Civil Procedure Code and when the High Court exercises its original civil jurisdiction over the city limits, it can be deemed to be a District Court, in those cases where resort to the definition in Section 2(4) of the Civil Procedure Code, is permissible for the purpose of fixing jurisdiction. Section 9 of the Civil Procedure Code gives power to every Civil Court to try all suits of a civil nature excepting suits of which their cognizance is either expressly or impliedly barred, and the explanation to that section, says that a suit in which the right to property or to an office is contested is a suit of civil nature. It is well recognised that copyright is property, and, therefore, a suit seeking reliefs for infringement of copyright is a suit of a civil nature. If such infringement occurs, and the cause of action for a suit based on the infringement arises within the area of the ordinary original civil jurisdiction of the High Court that Court can be deemed to be a District Court as per definition in Section 2(4) of the Civil Procedure Code and will have power to try the sent. Our attention was drawn to a case of the Calcutta High Court Kedarnath Mondal v. Ganesh Chandra Adak (1908) 12 Cal. W. N. 140 which arose under the Inventions and Designs Act, 1888. That Act contained a specific clause that a District Court had the meaning assigned to that expression by the Code of Civil Procedure. After construing Clause 2(4) of the Civil Procedure Code, Fletcher J., came to the conclusion that when a High Court exercises its ordinary civil jurisdiction it comes within the definition of District Court as contained in the Civil Procedure Code".
We are in complete agreement with the principles laid down by the Division Bench of the Madras High Court.
29. We may also usefully refer to an unreported decision of a single Judge of this Court in, Natwarlal Ramanlal Gandhi v. M/s Zenith Iron Works and Anr., Suit No. 91 of 1960 decided on July 31, 1962. That suit was filed under Section 53 of the Patents and Designs Act (No. 2 of 1911) complaining about infringement of the copyright and for an account of the profits derived by the defendant in the course of alleged infringement. The defendant in that suit raised a preliminary objection to the maintainability of the said suit on the original side of the High Court. The learned single Judge after construing the expression 'district court' as defined in Section 2 of the said Act and also after taking into account the provisions of Section 3 of the Bombay City Civil Court Act and the provisions of Clause 10 of the Letters Patent held that Section 53 which falls in Part II of the Act and deals with suits for infringement of the copyright in a registered design does not expressly specify the Court in which such a suit can be filed. The learned single Judge held as follows:
"After the first preliminary section, the provisions of the Patents and Designs Act are placed in three parts. Part I is headed patents, Part II Designs and Part III General. Section 29 of the Act, which falls under Part I, provides that a patentee may institute a suit in a District Court against any person who makes, sells or uses the invention without his licence, or counterfeits it, or imitates it. Now, in Section 2 of the Act, the expression "District Court" has been defined as having the same meaning as is assigned to that expression by the Code of Civil Procedure. In the Civil Procedure Code, the expression "District Court" has been defined as "the principal civil court of original jurisdiction". The Original Side of this Court being the principal Civil Court of original jurisdiction in Gr. Bombay, it follows that the expression "District Court" as used in the Patents and Designs Act means so far as Gr. Bombay is concerned, the Original side of this Court. Therefore, a suit by a patentee for an infringement of his patent lies, by virtue of Section 29, to the original side of this court."
30. Although the controversy in that suit was under the Patents and Designs Act, the expression 'District Court' used in that Act has not been defined but, however, definition given under the Civil Procedure Code is made applicable in that behalf. The same analogy would equally apply to the present case also.
31. Apart from the above discussion we are of the opinion that if the scheme of the Act is taken into account it would be more consistent to hold that a suit under Section 105 of the Act must be filed on the original side of the High Court. In this behalf we may make a reference in particular to appeal provision contained in Section 109 of the Act. Under sub-section (2) of Section 109, an appeal shall lie to the High Court against the decision or order made under the Act by the Central Government or the Registrar. The provisions contained in Sections 105 and 109 of the Act read with Section 2(4) of the Civil Procedure Code and Section 3 of the Bombay City Civil Court Act will have to be harmoniously construed. Upon reading all these relevant provisions we are of the opinion that the jurisdiction of the Bombay City Civil Court so far as the suits falling under Section 105 of the Act are concerned irrespective of the pecuniary valuation is totally excluded and such a suit must be filed on the Original Side of the High Court. If such harmonious construction is not given, then in a given case in may lead to an anomalous situation. We, therefore, hold that a suit of the nature referred to in Section 105 of the Act irrespective of the pecuniary valuation shall be filed on the Original Side of the High Court and not in the Bombay City Civil Court so far as district of Greater Bombay is concerned. The answer to the issue referred by the learned single Judge is as follows : The suit of the nature referred to in Section 105 of the Trade and Merchandise Marks Act, 1958 irrespective of the pecuniary valuation is triable by the High Court and not by the Bombay City low band with the words in Hindi 100% .
32. Coming to the respondents, the carton is again a black one, but the yellow band at the top is not at the root but half inches below, and contains these words in black bold letter "FARISHTA" meaning a baby angel. Below the yellow band, we have a bigger yellow moon in size with the figure of a baby angel with wings, in black. Below that we have a small yellow rectangle containing the word spondent has drawn my attention to Section 48 of the Act which cannot be available for rejection of the claim of the appellant. It was pointed out to the Controller that the process of 'removal of dust' and the 'process of purifying exhaust gases coming out of diesel engine' were registered as Patent No. 133673 and 147324 respectively but in the instant case the Controller has ignored the same on the plea of these being bad precedents. He has not otherwise given any grounds, much less cogent, for not following the principles behind the grant of Patents in those cases. Learned counsel for the respondent has submitted that claim for 'process for generation of power from solid carbonised fuels' was refused but this rejection could as well be a bad ivil Court so far as district of Greater Bombay is concerned. Issue answered accordingly.
33. After recording his findings in the affirmative on first two preliminary issues the learned single Judge held that for want of statutory notice under Section 164 of the Co-operative Societies Act, the plaintiff's suit is liable to be dismissed with costs. As indicated above, we are in complete agreement with the findings of the learned single Judge on both these issues. The learned single Judge in effect has dismissed the plaintiffs suit with costs.
34. In the result the appeal fails and the same is dismissed. Consequently the plaintiff's suit also stands dismissed for the reasons indicated above. In the circumstances of the case parties are directed to bear their own costs of this appeal and that in the suit.