Madras High Court
Rainbow Hospitals vs Rainbow Children'S Medicare Limited
C.S (COMM DIV) No.254 of 2022
IN THE HIGH COURT OF JUDICATURE AT MADRAS
RESERVED ON : 20.03.2023
PRONOUNCED ON : .03.2023
CORAM:
THE HON'BLE Mr. JUSTICE S.SOUNTHAR
A.No.1150 of 2023
in
C.S (COMM DIV) No.254 of 2022
Rainbow Hospitals,
Rep. By its Partners,
R.Kumaravel, G.Jayamala, E.Karbagavalli, V.Selvabharathy,
C.palaniappan, M.Senthilkumar and P.Dhinakar,
D.No.25, B-20, Rajaji Street, Swarnapuri,
Alagapuram Village, S.No.98/6A,
Salem West Taluk,
Salem District – 636 004.
Represented by its Partner Dr.R.Kumaravel
... Applicant/Defendant No.1
Vs.
1.Rainbow Children's Medicare Limited,
Represented by its Authorized Signatory,
Mr.Vamsi Krishna,
8-2-120/1031, Survey No.403,
Road No.2, Banjara Hills,
Hyderabad – 500 034.
Also at
157, Anna Salai,
Little Mount Guindy,
1/28
https://www.mhc.tn.gov.in/judis
C.S (COMM DIV) No.254 of 2022
Chennai, Tamil Nadu – 600 015.
(Amended as per order dated 14.03.2023 in Appln.1149/23)
... 1st Respondent/Plaintiff
2.Public Domain Registry,
501, IT Building No.3, NESCO IT Park, NESCO Complex,
Western Express Highway, Gurgaon (East),
Mumbai – 400 063.
Maharashtra, India.
... 2nd Respondent/Defendant No.2
Application filed under Order XIV Rule 8 of Original Side Rules r/w
Order XIV Rule 2A of CPC, 1908, praying to decide the issue of jurisdiction
as the preliminary issue in C.S.No.254 of 2022.
For Applicant :M/s.S.Aanchal Nichani
and Ms.V.Harini
for M/s.N.V.Saisundar
For Respondents :M.S.Bharath
ORDER
This application is filed by the first defendant in the suit seeking to decide the issue of territorial jurisdiction of this Court to entertain the present suit.
2/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022
2. The first respondent herein filed the present suit seeking permanent injunction restraining the applicant herein from infringing/passing off the Registered Trademarks of the first respondent namely “RAINBOW', RAINBOW HOSPITAL, RAINBOW CLINICS and RAINBOW HOSPITAL FOR WOMEN AND CHILDREN.
3. The first respondent/plaintiff is having chain of Pediatric multi-specialty, obstetrics and gynecology hospitals in India in the name and style of “Rainbow Children's Hospital”. As per the plaint averments, the first hospital of the first respondent was started as a pediatric specialty hospital with total capacity of 50 beds in Hyderabad. As of today, the respondent operates 15 hospitals and 3 clinics in 6 cities across India, with a total bed capacity of 1,550 plus beds and more than 650 Doctors. The first respondent also inaugurated pediatric hospital in Chennai known as “Rainbow Children's Hospital”. It was asserted by the first respondent/plaintiff that it was the first, honest, bonafide, prior adopter and user of the trademark “RAINBOW” in relation to various Medical/health care services in India for more than 23 years. The first respondent/plaintiff had obtained registration of its trademark 3/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022 “RAINBOW” and its various combination like Rainbow children Medicare Limited etc. The first respondent claimed that the applicant herein made an application for registration of his trademark Rainbow Sunshine in class 44 in the year 2016 and it was opposed by the first respondent by filing notice of opposition before the registrar of trademarks. The applicant herein failed to file a counter to the notice of opposition filed by the first respondent and abandoned his application for registration of above said similar trademark. Subsequently, the first respondent also came to know that applicant herein was carrying on business under the mark Rainbow Hospitals/ Rainbow Children's Hospital at Salem and hence a cease and desist notice was issued by first respondent on 18.08.2022. The applicant herein came up with a reply that he was a bonafide adopter and user of the mark Rainbow and hence the first respondent was constrained to file a suit for the above said relief.
4. The first respondent herein has registered Office at Hyderabad and he is also having a branch of his Hospital at 157, Anna Salai, Little Mount, Guindy, Chennai – 15. Therefore, by invoking Section 134(2) of Trademarks Act, treating him as the one carrying on the business within 4/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022 territorial limits of this Court, the suit was filed by the first respondent before this Court.
5. After receiving the suit summons, the applicant herein has come up with this application by raising a specific plea that this Court has no jurisdiction to entertain the suit. It is the specific case of the applicant that the applicant hospital is situated at Salem and therefore no part of the cause of action namely infringement of trademark/passing off had arisen within the territorial limits of this Court. When no part of the cause of action had arisen within the territorial limits of this Court, the first respondent cannot maintain a suit in a place where its branch or subordinate office is situated, but it should have filed the present suit, either in the place where its registered Office is situated or in the place where the cause of action arose or defendant carries on the business.
6. The learned counsel for the applicant by drawing the attention of this Court to Section 134 of Trademarks Act and explanation to Section 20 of CPC submitted that the expression “Carries on Business” used in Section 5/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022 134 of Trademarks Act shall be given a qualified meaning as per explanation to Section 20 of CPC.
7. In nutshell, it is submitted by the learned counsel for the applicant that the plaintiff being a company is deemed to be carrying on business in the place where its Principal Office is situated or in the place, where part of the cause of action arose and also the Subordinate Office of first respondent/plaintiff is situated.
8. In support of her contention, the learned counsel for the applicant relied on the following decisions:
(i) Indian Performing Rights Society Limited Vs. Sanjay Dalia and others reported in (2015) 10 SCC 161;
(ii) Ultra Home Construction Pvt., Ltd., Vs Purushottam Kumar Chaubey and others reported in Manu/DE/0121/2016
9. Per contra, the learned counsel appearing for the first respondent/plaintiff submitted that Section 20 of CPC is not applicable to the 6/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022 original side of this Court, in view of Section 120 of CPC. The learned counsel further submitted that the expression “carrying on business” employed in Section 134 of trademarks Act should be given its widest meaning and therefore the first respondent is deemed to carry on its business in all places, where it has got its branch office. In support of his contention, the learned counsel for the respondent relied on the following decisions:
(i) Wipro Limited and others Vs. Oushadha Chandrika Ayurvedic India (P) Limited and Others reported in AIR 2008 Mad 165;
(ii). Indian Performing Rights Society Limited Vs. Sanjay Dalia and others reported in (2015) 10 SCC 161;
(iii). Hindustan Unilever Ltd., Vs. Andhra Detergents MAC Marketing reported in Manu/TN/4102/2016;
10. The main question that has to be decided in this application is whether the first respondent/plaintiff is entitled to file the present suit before this Court by virtue of the fact it has got its branch office/hospital within the territorial limits of this Court, when no part of the cause of action arose within the jurisdiction of this Court. 7/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022
11. Section 134 of Trademarks Act, reads as follows:
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 proceeding, the person instituting the suit or proceeding, 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.
Explanation.--For the purposes of sub-section (2), "person" includes the registered proprietor and the registered user. 8/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022
12. A perusal of above said provision would make it clear that the Trademarks Act gives a concession to the plaintiff, who is filing the suit for infringement of the registered trademark to present the suit in the place, where he or she voluntarily resides or carries on business or personally works for gain. The explanation to the Section says the word “person” used in the section includes the registered proprietor or the registered user. The first respondent herein is the registered proprietor of the trademark and the present suit is instituted for infringement of the registered trademark and other reliefs. Therefore, by virtue of the concession given under Section 134 of Trademarks Act, the applicant is entitled to present a suit before the Court within whose jurisdiction it carries on business.
13. The next point that has to be decided is the meaning of the expression “carries on business”.
14. Section 20 of CPC, which reads as follows:
Subject to the limitations aforesaid, every 9/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022 suit shall be instituted in 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.
2[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.
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15. The learned counsel for the applicant by relying on explanation to Section 20 of CPC submitted that in case of companies as that of the plaintiff, it is deemed to carry on business within the place, where its registered office is situated or in a place where part of cause of action arose and it's subordinate office also situate. Therefore, it is her submission that as far as the places where the Subordinate office of first respondent/plaintiff is situated, unless, the part of the cause of action for the suit also arose in that place, it cannot be treated as a place, where the first respondent carries on business. The learned counsel further submitted though first respondent is having a branch hospital within the territorial limits of Chennai, no part of the cause of action, namely alleged infringement of trademark had taken place within the jurisdictional limits of this Court and hence merely because branch hospital of first respondent is situated within the jurisdictional limits of this Court, the first respondent is not entitled to present the plaint before this Court.
16. However, as rightly contended by the learned counsel for the first respondent, Section 20 of CPC is not applicable to original side of this 11/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022 Court and the same can be gathered from Section 120 of CPC, which reads as follows:
120. Provisions not applicable to High Court is original Civil Jurisdiction.
(1) The following provisions shall not apply to the High Court in the exercise of its original civil jurisdiction, namely, sections 16,17 and 20.
17. Therefore, if Section 134 of Trademarks Act and Section 20 and 120 of CPC are read together, in view of inapplicability of Section 20 of CPC to the High Courts in exercise of its original jurisdiction, a qualified meaning cannot be given to the expression “carries on business” as contended by the learned counsel for the applicant.
18. The legislature in its wisdom has given a concession to the plaintiff under Section 134 of Trademark Act, to sue for infringement of trademark by allowing the presentation of the plaint in the place, where he carries on his business.
12/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022
19. The Hon'ble Apex Court of India in Sanjay Dalia case cited supra by taking into consideration the explanation to Section 20 of CPC held that a Corporation can sue at a place, where its principal office is situated or in a place where its subordinate office is situated or place where whole or part of cause of action arose. The relevant observation of the Apex Court reads as follows:
12. Considering the very language of section 62 of the Copyright Act and section 134 of the Trade Marks Act, an additional forum has been provided by including a District Court within whose limits the plaintiff actually and voluntarily resides or carries on business or personally works for gain. The object of the provisions was to enable the plaintiff to institute a suit at a place where he or they resided or carried on business, not to enable them to drag defendant further away from such a place also as is being done in the instant cases. In our opinion, the expression “notwithstanding anything contained in the Code of Civil Procedure” does not oust the applicability of the provisions of section 20 of the Code of Civil Procedure and it is clear that additional remedy has been provided to the plaintiff so as to file a suit where he is residing or carrying on business etc., as the case may be. Section 20 of the Code of Civil Procedure enables a plaintiff to file a suit where the defendant resides or where 13/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022 cause of action arose. Section 20(a) and section 20(b) usually provides the venue where the defendant or any of them resides, carries on business or personally works for gain. Section 20(c) of the Code of Civil Procedure enables a plaintiff to institute a suit where the cause of action wholly or in part, arises. The Explanation to Section 20 C.P.C. has been added to the effect that 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 subordinate office at such place. Thus, ‘corporation’ can be sued at a place having its sole or principal office and where cause of action wholly or in part, arises at a place where it has also a subordinate office at such place.
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18. In our opinion, in a case where cause of action has arisen at a place where the Plaintiff is residing or where there are more than one such persons, any of them actually or voluntarily resides or carries on business or personally works for gain would oust the jurisdiction of other place where the cause of action has not arisen though at such a place, by virtue of having subordinate office, the Plaintiff instituting a suit or other proceedings might be carrying on business or personally works for gain.
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19. At the same time, the provisions of Section 62 of the Copyright Act and Section 134 of the Trade Marks Act have removed the embargo of suing at place of accrual of cause of action wholly or in part, with regard to a place where the Plaintiff or any of them ordinarily resides, carries on business or personally works for gain. (emphasis supplied) We agree to the aforesaid extent the impediment imposed Under Section 20 of the Code of Civil Procedure to a Plaintiff to institute a suit in a court where the Defendant resides or carries on business or where the cause of action wholly or in part arises, has been removed. But the right is subject to the rider in case Plaintiff resides or has its principal place of business/carries on business or personally works for gain at a place where cause of action has also arisen, suit should be filed at that place not at other places where Plaintiff is having branch offices etc. (emphasis supplied).
20. After holding so, the Hon'ble Apex Court in paragraph No.47 of the judgment concluded as follows:
“In our opinion, the provisions of section 62 of the Copyright Act and section 134 of the Trade Marks Act have to be interpreted in the purposive manner. No doubt about it that a suit can be filed by the plaintiff at a place where he is residing 15/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022 or carrying on business or personally works for gain. He need not travel to file a suit to a place where defendant is residing or cause of action wholly or in part arises. However, if the plaintiff is residing or carrying on business etc. at a place where cause of action, wholly or in part, has also arisen, he has to file a suit at that place, as discussed above. “(emphasis supplied
21. A close scrutiny of the facts involved in Sanjay Dalia case would make it clear, in that case, the plaintiff was having its head office at Mumbai and Branch Office at Delhi. The whole of the cause of action arose at Mumbai and hence the Hon'ble Apex Court held that when plaintiff was carrying on business at a place and the cause of action wholly or in part had arisen in that place, he has to file a suit in that place instead of filing a suit in a place, where no part of the cause of action arose but he had branch office. In other words where plaintiff carries on business in more than one place by having different branch office at different places (namely A, B, C) and the cause of action either partially or wholly arose at place 'B' and not in places A and C, the concession available to plaintiff under Section 134 of Trade Marks Act, is restricted to place 'B' alone. To that extent, the sweep of Section 16/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022 134(2) is restricted by combining place of business and cause of action. But in cases where no part of cause of action arose in any of the places A, B or C, plaintiff has option of filing suit in any one of the place A, B, C. In the case on hand, the whole of the cause of action arose at Salem, where the applicant/defendant carries on business. The registered office of the first respondent/plaintiff is situated at Hyderabad and it's branch hospital is situated within the territorial limits of this Court at Chennai. No part of the cause of action arose either at Chennai or at Hyderabad. In such circumstances, it cannot be said that the plaintiff shall file suit only at Hyderabad, where no cause of action arose or at Salem, where it has no branch office. As mentioned earlier, by virtue of Section 120 of CPC, Section 20 of CPC is not applicable to the original side of this Court.
22. The very same question was considered by Division Bench of this Court in Wipro Limited case cited supra, wherein it was observed as follows:
11. ............... By inserting Section 134(2) of the Trade Marks Act, the legislature has brought the Trade Marks law in line with the provisions contained in the Copyright Act, as very 17/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022 often a trade mark is also registered as an artistic work under the Copyright Act. In Section 62(2) of the Copyright Act as well as in Section 134(2) of the Trade Marks Act, a deliberate departure is made from Section 20 of the C.P.C to enable the plaintiff to sue one who infringed his copyright in the court within whose local limit he carried on business at the time of the institution of the suit or other proceedings. If the contrast as between two expressions namely, "actually and voluntarily resides" and "carries on business" is correctly perceived, it would reveal that while there is limitation, regarding residence, there is no such restriction with reference to "carrying on business". This is a clear indication that the term "carries on business" is not confined to only principal place of business. If the Legislature intended to mean the principal place only, it would have suitably qualified the expression "carries on business". The plain meaning of the above expression will only convey that wherever there is a business activity - be it the principal place or branch or branches - the party is said to carry on business in all such places.
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14. It is, thus, seen that Section 62 of the Copyright Act and Section 134 of the Trade Marks Act 18/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022 prescribe an additional ground for attracting the jurisdiction of a Court over and above the normal ground, as laid down in Section 20 of the C.P.C. In other words, a special right is conferred on the proprietor of the registered trade mark to institute a suit for infringement of any trade mark or copyright in the district within whose jurisdiction he resides or carries on business. The provision contained in non-obstante clause by using the phrase "notwithstanding anything contained in the C.P.C, 1908 (5 of 1908) or any other law for the time being in force" is made with a view to give a overriding effect to the said provision. It is equivalent to saying that the provision would hold the field notwithstanding anything contained in the C.P.C or any other law for the time being force. Moreover, by virtue of Section 120 of the C.P.C, the provisions of Section 20 are not applicable as far as High Court is concerned. (emphasis supplied) Therefore, the scope of this section cannot be curtailed by reference to Section 20 of the C.P.C or Clause-12 of the Letters Patent. Therefore, in a case of infringement of trade mark or copyright covered by Section 134(2) of the Trade Marks Act or Section 62(2) of the Copyright Act, the question of plaintiff taking prior leave under Clause 12 of the Letters Patent does not arise and the plaintiff need not take leave 19/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022 of the Court under Clause 12 of the Letters Patent even if only a part of the cause of action or no part of the cause of action arose within the jurisdiction of this Court, if the plaintiff ordinarily resides or carries on business within the jurisdiction of the Court.
23. In Hindustan Unilever Ltd., Vs. Andhra Detergents MAC Marketing reported in Manu/TN/4102/2016, this Court after considering the decisions mentioned above namely Wipro Limited, (cited supra) observed as follows:
20. Much reliance has been made by both sides on the decision of the Apex Court in Indian Performing Rights Society Limited v. Sanjay Dalia and another (2016-1-L.W. 1 = (2015) 10 Supreme Court Cases 161). In the said judgment, the issue was one of jurisdiction qua Section 134(2) of the Trade Marks Act, 1999 Section 62 of the Copyright Act on the one hand and Section 20 of the Code of Civil Procedure on the other hand.
The Apex Court was called upon to decide on a case where a defendant was dragged to a far off place on the sole premise that the plaintiff was having a branch office though no cause of action arisen therein. Thus, the said decision has to be seen in the context of forum convenience and the object behind Section 20 of the Code of Civil Procedure. The question as to whether the plaintiff can 20/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022 choose a branch office when a cause of action is available at the principal office was also dealt with. The following paragraphs of the judgment of the Apex Court would be fruitful.
"14 Considering the very language of Section 62 of the Copyright Act and Section 134 of the Trade Marks Act, an additional forum has been provided by including a District Court within whose limits the plaintiff actually and voluntarily resides or carries on business or personally works for gain. The object of the provisions was to enable the plaintiff to institute a suit at a place where he or they resided or carried on business, not to enable them to drag defendant further away from such a place also as is being done in the instant cases....
17. Accrual of cause of action is a sine qua non for a suit to be filed. Cause of action is a bundle of facts which is required to be proved to grant relief to the plaintiff. Cause of action not only refers to the infringement but also the material facts on which right is founded. Section 20 of the CPC recognises the territorial jurisdiction of the courts inter alia where the cause of action wholly or in part arises. It has to be decided in each case whether cause of action wholly or in part arises at a particular place. As held by this Court in Rajasthan High Court Advocates Association v. Union of India & Ors. [AIR 2001 SC 21/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022 416],Thus, a plaintiff can also file a suit where the cause of action wholly or in part arises.
18 The Plaintiff(s) can also institute a suit at a place where he is residing, carrying on business or personally works for gain de hors the fact that the cause of action has not arisen at a place where he/they are residing or any one of them is residing, carries on business or personally works for gain. However, this right to institute suit at such a place has to be read subject to certain restrictions, such as in case plaintiff is residing or carrying on business at a particular place/having its head office and at such place cause of action has also arisen wholly or in part, plaintiff cannot ignore such a place under the guise that he is carrying on business at other far flung places also. The very intendment of the insertion of provision in the Copyright Act and Trade Marks Act is the convenience of the plaintiff. The rule of convenience of the parties has been given a statutory expression in section 20 of the CPC as well. The interpretation of provisions has to be such which prevents the mischief of causing inconvenience to parties.
19. The intendment of the aforesaid provisions inserted in the Copyright Act and the Trade Marks Act is to provide a forum to the plaintiff where he is residing, carrying on 22/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022 business or personally works for gain. The object is to ensure that the plaintiff is not deterred from instituting infringement proceedings ?because the court in which proceedings are to be instituted is at a considerable distance from the place of their ordinary residence?. The impediment created to the plaintiff by section 20 C.P.C. of going to a place where it was not having ordinary residence or principal place of business was sought to be removed by virtue of the aforesaid provisions of the Copyright Act and the Trade Marks Act. Where the Corporation is having ordinary residence/principal place of business and cause of action has also arisen at that place, it has to institute a suit at the said place and not at other places..
20. In our opinion, in a case where cause of action has arisen at a place where the plaintiff is residing or where there are more than one such persons, any of them actually or voluntarily resides or carries on business or personally works for gain would oust the jurisdiction of other place where the cause of action has not arisen though at such a place, by virtue of having subordinate office, the plaintiff instituting a suit or other proceedings might be carrying on business or personally works for gain.23/28
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21. At the same time, the provisions of Section 62 of the Copyright Act and Section 134 of the Trade Marks Act have removed the embargo of suing at place of accrual of cause of action wholly or in part, with regard to a place where the plaintiff or any of them ordinarily resides, carries on business or personally works for gain. We agree to the aforesaid extent the impediment imposed under section 20 of the CPC to a plaintiff to institute a suit in a court where the defendant resides or carries on business or where the cause of action wholly or in part arises, has been removed. But the right is subject to the rider in case plaintiff resides or has its principal place of business/carries on business or personally works for gain at a place where cause of action has also arisen, suit should be filed at that place not at other places where plaintiff is having branch offices etc.
22. There is no doubt about it that the words used in Section 62 of the Copyright Act and Section 134 of the Trade Marks Act, 'notwithstanding anything contained in CPC or any other law for the time being in force', emphasise that the requirement of section 20 of the CPC would not have to be complied with by the plaintiff if he resides or carries on business in the local limits of the court where he has filed the suit but, in our view, at the 24/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022 same time, as the provision providing for an additional forum, cannot be interpreted in the manner that it has authorised the plaintiff to institute a suit at a different place other than the place where he is ordinarily residing or having principal office and incidentally where the cause of action wholly or in part has also arisen. The impugned judgments, in our considered view, do not take away the additional forum and fundamental basis of conferring the right and advantage to the authors of the Copyright Act and the Trade Marks Act provided under the aforesaid provisions."
24. The above said reasoning insofar as the exercise of Section 134(2) of the Trade Marks Act, 1999 appears to be legally correct and sound. Thus, in the light of the above said decisions having been analysed, this Court is of the view that the question as to whether the plaintiff having a head office in one place and the branch office in another, is irrelevant, for the purpose of instituting the suit by invoking Section 134(2) of the Trade Marks Act, 1999, as both those places will have to be treated to be alike when there is no cause of action is available. However, the concept of forum convenience would apply in a case where the plaintiff chooses the place just to drag the defendant to a far off place. Accordingly, this Court holds that the suit is maintainable 25/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022 before this Court. Admittedly, the Mumbai High Court is far off to the defendant than this Court.
24. As seen from the decisions referred above, in view of inapplicability of Section 20 of CPC to original side of this Court, the expression “carries on business” that occurs in Section 134 of Trademarks Act will not get qualified by explanation to Section 20 of CPC. When cause of action for the suit does not arise either wholly or in part in the place where the principal office or the branch office of the plaintiff are situated, the plaintiff can file a suit either in the place, where his principal office is situated or in a place where his branch office is situated. On the other hand, if part of the cause of action arose in a place where either the principal office of the plaintiff or it's branch office is situated, then as held by the Apex Court in Sanjay Dalia case, the suit has to be filed only in the place, where part of cause of action arose and also any one of plaintiff's office is situated.
25. In the case on hand, as per the plaint averments, cause of action namely the infringement of trademark had taken place at Salem, where neither the principal office nor the branch office of the first 26/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022 respondent/plaintiff is situated. Therefore, the first respondent/plaintiff has chosen to file the suit at Chennai, where its branch office is situated. Chennai is closer to Salem, where the whole cause of action arose. The principal office of plaintiff situated at Hyderabad, which is far away from the place, where the whole cause of action arose and hence by virtue of Section 134 of Trademarks Act, this Court has got territorial jurisdiction to entertain the suit. Accordingly, the present application filed by the first defendant is dismissed.
26. In the facts and circumstances of the case, there shall be no order as to costs.
.03.2023 NCC : Yes/No Index : Yes/No Internet : Yes/No ub S.SOUNTHAR,J 27/28 https://www.mhc.tn.gov.in/judis C.S (COMM DIV) No.254 of 2022 ub Pre-delivery order made in A.P.No.1150 of 2023 in C.S (COMM DIV) No.254 of 2022 .03.2023 28/28 https://www.mhc.tn.gov.in/judis