Calcutta High Court
Itc Limited vs Godfrey Phillips India Ltd on 26 November, 2013
Equivalent citations: AIR 2014 CALCUTTA 19, (2014) 1 CAL HN 643 (2014) 1 ICC 605, (2014) 1 ICC 605
Author: Soumen Sen
Bench: Soumen Sen
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Jurisdiction
ORIGINAL SIDE
Present :
The Hon'ble Justice Soumen Sen
G.A. No.2547 of 2013
C.S. No.10 of 2009
ITC Limited
Vs.
Godfrey Phillips India Ltd.
For the Petitioner : Mr. S.N. Mookherjee, Sr. Adv.
Mr. Dhrubo Ghosh, Bar-at-law,
Mr. Shaunak Mitra,
Mr. Soumya Sen
Ms. Debamitra Adhikari
For the defendants : Mr. Vipul Kundalia
Mrs. Sonal Shah
Heard on : 13/09/2013, 22/11/2013
Judgment on : 26th November, 2013
Soumen Sen, J.:- The plaintiff has filed this application for
obtaining leave under Clause 14 of the Letters Patent.
The plaintiff has instituted the suit on 20th January, 2009.
In the suit, the plaintiff has prayed decree of permanent injunction
for restraining the defendants from infringing or using the trademark
PILOT and/or PILOT NUMBR ONE. The plaintiff has also prayed for
permanent injunction restraining the defendant from selling and/or
passing off or causing to pass off the products o the defendant bearing
the impugned mark PILOT as and for those of the plaintiff.
At the time of institution of the suit, the plaintiff did not pray leave
under Clause 12 of the Letters Patent.
The plaintiff contends that this Hon'ble Court has jurisdiction to
entertain the instant suit in respect of the plaintiff's infringement of
trademark PILOT by virtue of Section 134(2) of the Trade Marks Act,
1999 as the plaintiff's registered office is situated within the jurisdiction
of this Hon'ble Court. The plaintiff contends that the defendant in his
written statement filed sometimes in April, 2010 purported to question
the territorial jurisdiction of this Hon'ble Court to entertain the instant
suit in respect of the plaintiff's claim for passing off. The defendant has
alleged that no part of the cause of action in respect of the plaintiffs'
claim for passing off has arisen within the jurisdiction of this Hon'ble
Court.
Mr. S.N. Mookherjee, the learned Senior Counsel appearing on
behalf of the plaintiff submits that due to oversight, the plaintiff had
omitted to pray for leave under Clause 14 of the Letters Patent at the
time of presenting and/or filing the plaint although necessary pleadings
in relation thereto are present and on the existing pleading the plaintiff is
entitled to claim leave under Clause 14 of the Letters Patent. Further,
due to the pendency of the interlocutory proceedings in the instant suit,
no steps could be taken to apply for such leave. It is argued that it is
settled position that leave under Clause 14 of the Letters Patent can be
granted by this Hon'ble Court at any time before the commencement of
trial in a suit. The learned Senior Counsel has referred to the
interlocutory petition filed by the defendant for stay of further
proceedings in which a prayer was made for expunging and/or deleting
from the plaint the plaintiffs in respect of the passing off.
Mr. Mookherjee submits that the pendency of the application for
registration of the mark cannot and should not be a ground in refusing
to proceed with the suit and decide the question relating to passing off.
It is submitted that the said application being G.A. No.2031 of 2009 was
dismissed with an observation that the attack on the causes of action
relating to passing off does not have to be decided at this stage. Mr.
Mookherjee has also referred to the observations made by the learned
Single Judge in dealing with the said application for stay of suit which
reads as follows:-
"The defendant's challenge to the cause of action in passing-off is
merely on the ground that if the allegations in support of the relief of
passing-off are culled out from the plaint relating to this suit and
were to be seen to be a separate plaint altogether, a suit on the
basis of such plaint could not have been entertained by this Court.
Even if all the averments in support of the claim for infringement
were obliterated from the plaint and the suit in so far as it relates to
passing-off assessed, notwithstanding there being no averment in
the plaint for the independent cause of action relating to passing-off
being carried to this Court, clause 14 of the Letters Patent confers
jurisdiction on this Court to consider, at any stage of the suit, as to
whether such cause of action could have been joined with the cause
of action for infringement. Since it is not in dispute that this Court
had the authority to receive the claim for infringement, the parties
are left to fight another day on this score."
The said order was unsuccessfully taken to the court of appeal.
Mr. Mukherjee has relied upon the following observations of the
Appellate Court while dismissing the appeal preferred by the defendant:-
"As regards the other point regarding the inclusion of the prayer
based on the cause of action of passing off, we find that Clause 14
of the Letters Patent, quoted above, empowers this Court to join such
cause of action. According to Mr. Kapoor, such prayer for invocation
of Clause 14 must be made before the prayer for return of plaint is
made by the defendant. We are, however, unable to accept such
contention of Mr. Kapoor as a sound proposition of law. Once the
power has been conferred under Clause 14 of the Letters Patent, the
Court is entitled to exercise such power at any time before the
commencement of the trial. In our opinion, the phrase "it shall be
lawful for the said High Court to call on the Defendant to show
cause why the several causes of action should not be joined together
in one suit and to make such order for trial of the same as to the
said High Court shall seem fit" is wide enough to grant such relief
even at the subsequent stages of the suit. At this stage, we can
profitably refer to the decision of the Supreme Court in the case of
Gajanan Jaikhan Joshi Vs. Prabhakar Mohanlal Kalwar, reported in
(1990) 1 SCC 166 where in a suit for specific performance of contract
for sale of immovable property, in the absence of the required
pleading that the plaintiff was at all material time ready and willing
to perform his part of the contract, on the prayer of the defendant, a
preliminary issue was framed as to whether the suit was liable to be
dismissed for want of the necessary pleading and at that stage, the
plaintiff came up with a prayer for amendment of plaint for the
purpose of frustrating the defence of maintainability of the suit.
Even in such a situation, the Supreme Court set aside the order of
the High Court and allowed the amendment thereby making the
preliminary issue already framed as infructuous. Such being the
position of law, it is absurd to suggest that the Court should strike
out the relief based on passing off for want of territorial jurisdiction
only because the plaintiff did not pray for leave under Clause 14
before the filing of the application by the defendant alleging want of
territorial jurisdiction in respect of part of cause of action."
It is submitted that the plaintiff's causes of action in respect of
infringement as also passing off against the defendant are so closely
interconnected and inter-linked that it would be just and convenient to
try both the issues jointly. It is submitted that that in the instant case,
the mark in question used by the defendant to market its products is a
slavish and colourable imitation of the plaintiff's registered mark and at
the trial, the plaintiff would be required to establish prior user of its
mark in order to succeed in the passing off action since the two issues
are so interconnected. It is contended that that the plaintiff would be
allowed to unite on the said cause of action in order to avoid multiplicity
of proceedings. It is argued that in determining whether the defendant's
mark is similar to the plaintiff's mark or is a slavish or colourable
imitation of the plaintiff's mark, the same tests would have to be followed
both in the case of infringement and passing off. It was further argued
that no prejudice could and/or would be caused to the defendant if leave
granted under Clause 14 of the Letters Patent, accordingly, inasmuch as
trial of the instant suit has not yet commenced.
It was further contended the tests to determine and prove
infringement and passing-off of the trademark of the plaintiff by the
defendant, in the facts of the case, would and does coincide and,
accordingly, the cause of action against the defendant in respect of
passing off of its trademark should be joined together with its cause of
action and/or claim in respect of infringement against the defendant and
tried together. In order to avoid multiplicity of proceedings and causing
loss and prejudice to the plaintiff such order is required to be passed.
Mr. Mookherjee has referred to Clause 14 of the Letters Patent
which states:-
"14. Joinder of several causes of action. - And we do further
ordain, that where Plaintiff has several causes of action
against a Defendant, such causes of action not being for land
or other immoveable property, and the said High Court shall
have original jurisdiction in respect of one of such causes of
action, it shall be lawful for the said High Court to call on the
Defendant to show cause why the several causes of action
should not be joined together in one suit, and to make such
order for trial of the same as to the said High Court shall
remain seem fit."
Mrs. Sonal Saha, the learned Counsel representing the defendant
contended that the causes of action for infringement and causes of action
for passing off are distinct. While the plaintiff could get the benefit of
Section 134(2) of the Trademarks Act, 1999 in respect of its claim of
infringement, there is no statutory right given under the Act to the
plaintiff to bring an action of passing off. The learned Counsel has
referred to an observation made by the learned Single Judge in
connection with an interlocutory application being G.A. 161 of 2009
taken out by the petitioner for continuation of the interim order which
states:-
"This takes us to the case of passing-off. From the additional
representation filed in November, 1999 the user of the word 'Pilot' is
from 1945. But an action for passing-off will not lie in the Calcutta
High Court as admittedly the respondent has launched its product in
Uttar Pradesh."
It is, however, submitted that the said interlocutory application is disposed of finally on affidavits with a direction to the defendant to furnish monthly sales figure and without prejudice to the rights and contentions of the demurrer taken by the defendant that this Court has no jurisdiction in relation to passing of action. The order directing joinder of passing off action shall cause undue hardship to the defendant to argue and/or defend its case at Calcutta while having its place of business in Uttar Pradesh, Delhi and Mumbai. The plaintiff taking advantage of its office located in Calcutta has filed this suit and now trying to unite passing off with infringement which is not permissible since passing off action cannot lie in Calcutta High Court as the respondent has launched its product in Uttar Pradesh.
It is further argued that since the actions as made out by the plaintiff emanates from two separate trademark applications, one registered and other pending registration and that the plaintiff has not been able to cull out cause of action with regard to the claim of passing off of its unregistered label mark, the Court should not permit segregation of the cause of action.
On a plain reading of Clause 14 of the Letters Patent, it appears that if the plaintiff has several causes of action against the defendant and if such causes of action is not in relation to any land or other immoveable property and if the High Court is having original jurisdiction in respect of one of such causes of action, it shall be lawful for the High Court to call on the defendant to show cause by the several causes of action should not be joined together in suit. The very purpose is to save costs, time, avoid multiplicity of proceedings and conflicting decisions. The said clause is in pari materia with Order 2 Rule 3 of the Code of Civil Procedure. The aforesaid provision enables the joinder of several causes of action in one suit subject to certain restrictions. A party should not be vexed twice. The defendant is unable to show that if all the causes of actions are united, it would cause a real inconvenience or that the said causes of action cannot be conveniently tried. It is needless to mention that several causes of actions can be combined provided they are intimately connected so as to justify their being included in one suit. The plaintiff is entitled to maintain a suit for infringement in this Court is not in dispute. The question arises if the plaintiff could unite the action of passing off along with its claim or infringement under Clause 14 of the Letters Patent. That of the two several issues, this High Court has jurisdiction to try action for infringement is a relevant consideration to examine if the plaintiff should be permitted to unite along with infringement action, an action, for passing off. The learned Counsel of the defendant has referred to Paragraphs 25 and 27 of the Plaint and argued that causes of action pleaded in the said paragraphs would clearly show that the plaintiff is alleging passing off which has no nexus to the other part of the pleadings concerning infringement. The action for infringement and passing off are independent and the Court should not unite cause of action to grant leave under Clause 14 of the Letters Patent is the other objection. The suit was filed without any express prayer for passing off although necessary averments are present for obtaining leave under Clause 14 of the Letters Patent. The plaintiff in order to establish its claim in respect of infringement action would be required to produce evidence which would be common to both infringement and passing off. A reading of the plaint would also show that the cause of action in respect of infringement as also passing off against the defendant are closely interlinked. The use of the defendant of the impugned mark is a pre-requisite for the plaintiff to succeed its claim for both infringement and for passing off of its trademark. In order to determine whether the defendant's mark is similar to the plaintiff's mark or an imitation of the plaintiff's mark, the same tests would have to be followed both in case of infringement and passing off. The defendant in any event would have to meet the case of the plaintiff based on infringement of the impugned mark and the cause of action in relation to passing cannot either cause embarrassment to the defendant or inconvenience. On the contrary, in my view, it would prevent multiplicity of proceedings and embarrassment by simultaneous investigations. It is settled law that plaintiff may not only join different causes of action against the same defendant or the same defendants as provided under Order 2 Rule 3 of the Code of Civil Procedure but he may also joint different causes of action against the defendants if he is able to bring his case with the purview of Order 2 Rule 3. In the instant case, Clause 14 which enables the plaintiff to join other causes of action if in respect of one of the causes of action, the Court has jurisdiction. The answer to the show cause really does not demonstrate that any inconvenience would be caused to the defendant in the event trial takes place in this Court. On the contrary, it would benefit both the parties in the event both the issues are decided by this Court and it would also avoid multiplicity of proceedings. This matter can be viewed from another angle. The Court has a power to consolidate suits in appropriate cases. Consolidation is a process by which two or more causes of action are united and treated as one cause. The main purpose is to save costs, time and avoid multiplicity of proceedings and convenience by treating them as one action. The jurisdiction to consolidate arises, inter alia, where there are two or more causes pending in the Court and it appears that some question of law or fact arises in both or of the suits or that the rights to relief claimed in the suits are in respect of or arise out of the same transaction or series of transactions or that for some other reason, it is desirable to make an order directing consolidation of suits. The ultimate issue for the decision in the instant case would be the factum of prior use of the mark by the plaintiff which would also be a relevant consideration and forming part of the evidence in establishing a claim based on passing off. The evidence that has to be led in cases of both the causes of action to a large extent would be common and there would be no embarrassment if the causes of action are tried together especially in the context the defendant would be obliged to defend its action on infringement in this Court. It is undisputed that in respect one causes of action, this Court has jurisdiction.
In view thereof, the petition is allowed. Leave is given to the petitioner under Clause 14 of the Letters Patent to join together with its causes of action against the defendant in respect of infringement and passing off of its trademark PILOT and to have the same tried and adjudicated upon joint in C.S. 10 of 2009.
Urgent xerox certified copy of this judgment, if applied for, be given to the parties on usual undertaking.
(Soumen Sen, J.)