Madras High Court
M/S. Perfect Automotive Components vs M/S. Premier Instruments & Controls Ltd on 22 August, 2008
Author: P.K. Misra
Bench: P.K. Misra, K. Mohan Ram
IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED : 22-08-2008 CORAM THE HONOURABLE MR. JUSTICE P.K. MISRA AND THE HONOURABLE MR. JUSTICE K. MOHAN RAM O.S.A.NOs.377 & 378 OF 2001 M/s. Perfect Automotive Components, 216, Hans Bhawan, Bahadur Shah Zafar Marg, New Delhi 110 002. .. Appellant in OSA.No.377 of 2001 M/s. Pricol Lubricants (India) Pvt. Ltd., 216, Hans Bhawan, Bahadur Shah Zafar Marg, New Delhi 110 002. .. Appellant in OSA.No.378 of 2001 Vs. M/s. Premier Instruments & Controls Ltd., No.6, Church Lane, Ritherdon Road, Vepery, Madras 7. .. Respondent in both OSAs Appeals filed under Order 36 Rule 1 of the O.S. Rules and Clause 15 of the Letters Patent against the common judgment dated 3.2.2000 passed in C.S.Nos.534 & 535 of 1993 passed by the learned single Judge. For Appellant in : M/s.V. Nataraj both OSAs B. Giridhar Rao For Respondent in both OSAs : Mrs. Gladys Daniel - - - COMMON JUDGMENT
P.K. MISRA, J These two appeals were heard earlier and judgment was reserved in 2007. However, the judgment could not be prepared and pronounced earlier on account of the posting of the concerned Judges at Madurai at different times and the resultant dislocation of the relevant files. Thereafter, the matter was again listed for hearing on 24.3.2008, on which date the counsels for both the parties were heard at length and the matter was reserved for judgment. Subsequently, the counsels for the parties have also filed their written submissions.
2. O.S.A.No.377 of 2001 is filed by M/s. Perfect Automotive Components, the sole defendant in C.S.No.534 of 1993. O.S.A.No.378 of 2001 is filed by M/s. Pricol Lubricants (India) Pvt. Ltd., the sole defendant in C.S.No.535 of 1993. Both the above suits were brought by Premier Instruments & Controls Limited, a private limited company, the common respondent in both the appeals. Such plaintiff company, originally named as Premier Instruments Coimbatore Limited, was incorporated on 6.3.1972. Subsequently, it was renamed as Premier Instruments & Controls Limited as per the Certificate of the Registrar of Companies dated 4.1.1983. Plaintiff is a manufacturer of Automotive Instruments and accessories and it has subsequently diversified into electronics and mechanic tools. Immediately after the formation of the company, the word Trademark 'PRICOL' was coined for marketing the products. Such expression is an invented word as an acronym of the plaintiff's name by using the letters 'PR' from 'Premier', 'I' from 'Instruments', 'CO' from 'Coimbatore' and 'L' from 'Limited'. Such trademark is written in a stylised manner with a star on either side. The plaintiff is thus the Proprietor of the copyright in the artistic manner, in which the trademark 'PRICOL' is written. The plaintiff had acquired an exclusive copyright over the pictorial, geometric colour pattern on the outer card-board containers of the plaintiff's products. The trademark 'PRICOL' has been registered under the Trade and Merchandise Marks Act, 1958. The Perfect Automotive Components Ltd., the defendant in C.S.No.534 of 1993 and the appellant in OSA.No.377 of 2001, is a manufacturer of lubricants and PRICOL Lubricants (India) Private Ltd., the defendant in the connected C.S.No.535 of 1993, is its marketing agent. In September, 1992, the plaintiff came to learn that such defendant in C.S.Nos.534 of 1993 was manufacturing and selling brake fluid, grease and coolant and the plaintiff's trademark was being copied and had been displayed on the containers of the products, their advertisements, their correspondence and their trade literature. Thereafter, the plaintiff by a registered notice dated 17.12.1992 called upon the defendant in each case that they should cease and desist from using such trademark. But, a reply dated 9.1.1993 was received to the effect that the brake fluid, grease and coolant were sold by adopting PRICOL as a trademark, after verifying that such trademark had not been registered in respect of such brake fluid, grease and coolant. On further verification, the plaintiff found out from the trademark Registry that the application dated 21.2.1992 had been made, wherein the defendant claimed to have used PRICOL since January, 1992. In the above background, the plaintiff filed the two suits on the ground of infringement of plaintiff's copyright in the artistic manner in which the plaintiff's trademark 'PRICOL' is written and infringement of copyright on the plaintiff's card-board container and on account of the defendant passing off their goods as the goods of the plaintiff. On the aforesaid basis, the plaintiff prayed for the following reliefs in both the suits:-
"The plaintiff therefore pray for judgment and decree :-
(a) granting, a permanent injunction restraining the defendants by themselves, their servants, agents or anyone claiming through them, their printers and distributors from committing infringement of the copyright, which the plaintiffs have in their artistic work contained in the style of writing 'PRICOL' with starts found in Document No.1 and artistic work in Document No.3, in any manner by distributing, printing or causing to be printed the impugned style of writing the word 'PRICOL' and artistic work as shown in Document Nos.2 & 4 filed along with the plaint or in any other style of writing, which is an imitation or an infringement of the plaintiff's work contained in Document Nos.1 and 3;
(b) granting a permanent injunction restraining the defendant by themselves, servants or agents of any one claiming through them from passing off their goods break fluid and creases and coolant listed in the pricelist as Document No.5 filed along with the plaint using the name 'PRICOL' and the artistic pattern of the plaintiff's containers as shown in Document Nos. 2 and 4 or pass off any other goods using the expression 'PRICOL' or similar expression.
(c) directing the defendant to render a true and faithful account of the profits earned by them through the manufacture and sale of the offending mark 'PRICOL' and artistic creation marked as Document Nos.2 and 4 and directing such profits to be paid to the plaintiffs for the infringement of the copyright, trade mark and passing off committed by the defendants;
(d) directing the defendants to surrender to the plaintiffs and all cartons, labels, packets and any other printed matters containing of consisting of the offending Trade Marks together with blocks used for the purpose of printing the same for destruction."
3. The defendant in C.S.No.534 of 1993 claimed that the Madras High Court in its Original Side has no jurisdiction to entertain the suit as the defendant was not selling its products within the Ordinary Original Jurisdiction of such High Court. The plaintiff had no justification to invoke Section 62 of the Copyright Act for filing the suit before the Madras High Court as, such plaintiff cannot claim ownership of the copyright in the alleged artistic work done by the employees of the plaintiff's company. It has been further indicated that the plaintiff company had not obtained Leave of the High Court under clause 14 of the Letters Patent to combine different causes of action. Since the defendant had not sold its articles and was not carrying on any business nor having any branch office within the jurisdiction of the Madras High Court, the act of passing off should not have been brought before such court. It has been further stated in the written statement that the defendant had applied for registration of the trademark PRICOL in respect of the goods falling under Class-1 and Class-4 of the Trade and Merchandise Marks Act with the Registrar of Trade Marks, New Delhi on 21.2.1992. It is further claimed that the defendant had coined the word 'PRICOL' from his child's name 'PRINCEE' to form 'PRIC' and 'OL' from the word 'OIL'. The said name is therefore a combination of the words "PRINCEE" and "OIL" and an invented word. It is further stated that the goods of the defendant fall under Class-1 and Class-4 of Schedule IV of the Trade and Merchandise Marks Act, whereas the goods manufactured by the plaintiff fall under Class-9 of the said Act and there is no possibility of any confusion in the minds of the public. A detailed description had been given in the written statement describing about the various differences in the style of writing and other aspects. However, since the main question raised in these appeals is relating to jurisdiction, it is unnecessary to notice in detail those aspects.
4. The defendant in the other suit C.S.No.355 of 1993 filed substantially a similar written statement.
5. The following issues had been framed in C.S.Nos.534 of 1993 :-
"1. Is the suit maintainable on the file of this court ?
2. Is the suit not maintainable for the reasons set out in paragraph 2 of the written statement ?
3. Is the defendant entitled to use the name 'Pricol" in respect of products manufactured by them ?
4. Has the defendant committed any infringement of copyright or passing of as alleged by the plaintiff ?
5. Is the plaintiff owner of the copyright in the artistic pattern and whether the plaintiff is entitled to seek civil remedies under the Copyright Act, 1957 ?
6. Has the defendant committed infringement of the plaintiff's copyright ?
7. Is the plaintiff entitled to the permanent injunction sought for in paragraph 27(c) and (b) of the plaint ?"
5.1 The following issues were framed in C.S.No.535 of 1993 :-
"1. Is the plaintiff entitled to invoke the jurisdiction of this court?
2. Is the suit not maintainable for the reasons set out in paragraph 2 of the written statement ?
3. Is the plaintiff owner of the copyright in the artistic pattern ?
4. Has the defendant committed any infringement of copyright or passing of as alleged by the plaintiff ?
5. Is not the defendant entitled to use the name Pricol in respect of products manufactured by them ?
6. Is the plaintiff owner of the copyright in the artistic pattern and whether the plaintiff is entitled to seek civil remedies under the Copyright Act, 1957 ?
7. Is the defendant liable to render true and faithful account of the profits earned by them ?
8. Is the defendant liable to surrender to the plaintiff all the cartons, labels, packets and any other printed matter containing or consisting of the alleged trade mark for destruction ?
9. To what reliefs are the parties entitled ?
6. While considering the question of jurisdiction, which had been raised as Issue No.1 in each of the suits, the trial court has concluded that it had jurisdiction. While considering Issue No.2, which relates to question of maintainability on the ground that two suits were based on different causes of action, it has been held that causes of action could be combined as per Clause 14 of the Letters Patent. While deciding other issues together, the trial court by relying upon the evidence of P.W.1 and the documents including Ex.P-1, held that the plaintiff had coined the trademark 'PRICOL', which was being used from 1975. From other documents such as Exs.P-7, P-8, P-9 and P-10, it was found that the defendant had made an application, an advertisement, and was using the very same trademark 'PRICOL', though for a different product. From such evidence and documents, the trial court concluded that the plaintiff was the owner of the copyright 'PRICOL' and was using the trademark for its products for a long period, much earlier than the defendant, and the defendant was displaying the very same trademark and the artistic pattern in the products manufactured and sold by it. Ultimately the trial court held that even though the goods fall under different classes, since the trademark was being used by the defendant, there was infringement of the plaintiff's copyright, which also amounted to passing off the goods of the defendant as that of the plaintiff. Accordingly the trial court granted a decree in favour of the plaintiff with regard to infringement of the copyright and trademark. However, the relief relating to rendition of accounts was not accepted by the trial court on the ground that the plaintiff had agreed to using of a changed design till disposal of the suit. Such judgment and decree of the trial court is the subject matter of these two appeals.
7. In the Memorandum of Appeals it is contended that, as apparent from the order of the High Court in O.S.A.NOs.245 and 246 of 1994 against interlocutory orders, the plaintiff had given up its claim relating to copyright. In such view of the matter, Section 62 of the Copyright Act was not applicable and since no cause of action or part of the cause of action relating to passing off as contemplated under the Trade and Merchandise Marks Act, 1958 had arisen within the jurisdiction of the Original Side of the Madras High Court, the suits were not maintainable. It has been further contended in the grounds of appeal that no order had been passed on the application for joinder of cause of action under clause 14 of the Letters Patent.
8. In course of hearing and also in the written submission filed on behalf of the appellants, the main contention, rather the only contention, raised is relating to jurisdiction. It has been contended that the trial court has found that the plaintiff did not object for using of the trademark appended to each of the affidavits and the trial court had declined the relief relating to rendition of accounts and since the claim for the copyright had been given up, there was no jurisdiction to deal with the suit and the reliefs claimed, so far as they are connected with the Trade and Merchandise Marks Act, 1958. In support of the contention, learned counsel for the appellant has placed considerable reliance upon the decision of the Supreme Court reported in (2006) 9 SCC 41 (M/s. DHODHA HOUSE v. S.K. MAINGI).
9. Learned counsel appearing for the plaintiff / respondent has, on the other hand, supported the conclusion of the learned single Judge. She has contended that since similar facts were involved, the plaintiff could combine the cause of action arising under the Copyright Act, 1957 as well as the Trade and Merchandise Marks Act, 1958. It has been further contended that merely because the plaintiff had given up some claim, it cannot be said that the Court had lost jurisdiction over the matter.
10. As already indicated, the main question, rather the only question, is relating to jurisdiction. So far as the Copyright Act, 1957 is concerned, both the suits were before the Original Side of the Madras High Court by invoking Section 62(2) of the Copyright Act. In C.S.No.534 of 1993, an application purporting to be one under clause 12 of the Letters Patent was filed, numbered as Application No.2312 of 1993, for grant of leave so far as violation of the Trade and Merchandise Marks Act was concerned by stating that the cause of action relating to passing off and violation of the Trade and Merchandise Marks Act had substantially arisen within the jurisdiction of the Madras High Court. Leave was granted by order dated 26.4.1993. The defendant therein (Appellant in OSA.No.377 of 2001) after service of notice had never sought to revoke such grant of leave. So far as C.S.No.535 of 1993 is concerned, the plaintiff again relied upon Section 62(2) for the purpose of jurisdiction relating to violation of the Copyright Act and so far as violation of the Trade and Merchandise Marks Act was concerned, the plaintiff filed Application No.2451 of 1993 wherein notice was issued to the defendant. The materials on record do not indicate regarding filing of any objection by the defendant (Appellant in OSA.No.378 of 2001) and no specific order seems to have been passed in such application.
11. So far as the Trade and Merchandise Marks Act, 1958 is concerned, Section 105 is relevant and it is extracted hereunder :-
"105. Suit for infringement, etc. to be instituted before District Court 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."
Section 62 of the Copyright Act, 1957 is extracted hereunder:-
"62. Jurisdiction of Court over matters arising under this Chapter. - (1) Every suit or other civil proceeding arising under this Chapter in respect of the infringement of copyright in any work or the infringement of any other right conferred by this Act shall be instituted in the district Court having jurisdiction.
(2) For the purpose 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 other 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."
12. It is interesting to note that in the Trade Marks Act, 1999, whereunder the Trade and Merchandise Marks Act, 1958 has been repealed, Section 105 of the Trade and Merchandise Marks Act, 1958 has been re-enacted as Section 134(1). However, a provision similar to Section 62(2) of the Copyright Act has also been incorporated in the shape of Section 134(2), even though there was no such provision in the Trade and Merchandise Marks Act, 1958. In the present case, the suit was filed when the Trade and Merchandise Marks Act, 1958 was in force.
13. It is not in dispute that in the two suits, as they were originally framed, the reliefs sought for were available under the Copyright Act, 1957 and the Trade and Merchandise Marks Act, 1958. So far as the relief relating to violation of the copyright is concerned, the plaintiff specifically invoked the principle contained in Section 62(2) of the Copyright Act. It is the specific case of the plaintiff / respondent that even though the Registered Office of the plaintiff was at Coimbatore, the plaintiff was carrying on business at a place within the jurisdiction of the Original Side of the Madras High Court. This aspect is not in dispute at all.
14. So far as C.S.No.534 of 1993 is concerned, the plaintiff had alleged that the defendant has sought for registration of the trademark and had issued advertisement claiming that he has transactions all over the country and, therefore, it can be said that part of the cause of action had arisen within the jurisdiction of the Madras High Court. It is not in dispute that the plaintiff in such suit has sought for and obtained leave under clause 12 of the Letters Patent governing the Madras High Court. It is therefore submitted that since part of the cause of action had arisen and leave of the court had been obtained, the court can be said to have jurisdiction. In respect of C.S.No.535 of 1993, which was against the marketing agent of the defendant M/s. Perfect Automotive Components Limited in the connected suit, clause 14 of the Letters Patent was applicable. Even the appellant in the Memorandum of Appeal has admitted that an application seeking for permission to combine two causes of action under clause 14 was filed, but no order had been passed.
15. Clauses 12 and 14 of the Letters Patent are extracted hereunder :-
"12. Original jurisdiction as to suits And We do further ordain that the said High Court of Judicature at Madras, in 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 at Madras, in which the debt or damage, or value of the property sued for does not exceed hundred rupees. "14. Joinder of several causes of action. - And We do further ordain that where plaintiff has several causes of action against defendant, such causes of action not being for land or other immovable 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 the High Court shall deem fit."
16. So far as the dispute relating to violation of the Copyright Act is concerned, at the time of filing of the suit, jurisdiction of the suit had been rightly invoked by virtue of Section 62(2) of the Copyright Act. Once it is held that at the inception the court had jurisdiction to deal with the question relating to violation of the copyright, the question is whether on account of the refusal of the trial court to grant the relief relating to the Copyright Act, can it be said that the trial court did not have jurisdiction to deal with the matters relating to violation of the passing off coming within the scope of the Trade and Merchandise Marks Act, 1958.
17. Since the learned counsel for the appellant has placed strongest possible reliance upon the decision of the Supreme Court reported in 2006(3) LW 96 = (2006) 9 SCC 41 (M/s. DHODHA HOUSE v. S.K. MAINGI), it would be appropriate at this stage to consider the said decision. Two appeals, one against the decision of the Allahabad High Court and the other against the decision of the Delhi High Court were taken up together. In both the cases, the question of territorial jurisdiction of the trial court dealing with the composite suits containing reliefs relating to the Copyright Act and the Trade and Merchandise Marks Act was the primary issue. Both the appeals were against the order of injunction during pendency of the suit and not against the final decision in the suits.
17.1 In Civil Appeal No.6248 of 1997 filed by M/s. Dhodha House (hereinafter referred to as "Dhodha House Appeal" for convenience), the concerned suit had been filed by such appeallant to protect his copyright, trade marks and common law rights as regard his art work / label / trade mark and wrapper, etc. in the District Court at Ghazabad. Even though the trial court had granted injunction during pendency of such suit, the High Court in appeal against such order of injunction had allowed the appeal solely on the ground of lack of territorial jurisdiction. The High Court had also observed "Dhodha" is a name of variety of sweets and it is not a special product, which is manufactured by the plaintiff alone. In the said case, the appellant was carrying on business of sweat meats in the district of Ghaziabad, whereas the Respondent was carrying on a similar business in the name and style of M/s.V.R.K. Todha Sweet House in the district of Faridkot.
17.2 In Civil Appeal No.16 of 1999, arising against the decision of the Delhi High Court, the suit had been filed on the Original Side of such court for perpetual injunction restraining infringement of trade mark, copyright, trading style, passing off and for rendition of accounts. The plaintiff claimed that he had registered the trademark 'Field Marshal' and the label 'Field Marshal' was allegedly registered under the Copyright Act and further the appellant had been printing / publishing the said artistic work titled 'Field Marshal' in all its trade literatures, pamphlets, stickers, calendars, diaries, etc., and also on the goods manufactured. The first defendant had been registered under the Companies Act and it proposed to start business in the trading style of 'Field Marshal'. It was alleged that the goods manufactured by the defendant were being sold in Delhi. The alleged cause of action for filing the suit has been averred in para 30, which is extracted :-
"That the goods of the parties bearing the impugned trade marks are also sold in the Union Territory of Delhi. Trade Marks Journals No. 823 dated 16-9-1983 and No. 876 dated 1-12-1985 and Journal No. 933 dated 16-4-1988 were published in India by the Trade Marks Registry in respect of applications of the defendants for registration of the impugned trade marks, including the Union Territory of Delhi. Therefore, this Honble Court has jurisdiction to entertain and try the present suit. Moreover, the jurisdiction of this Honble Court is also attracted in view of Section 62(2) of the Copyright Act. 17.3 The application for injunction was rejected by the learned single Judge inter alia on the ground that the plaintiff had failed to prima facie show that the Delhi High Court had territorial jurisdiction and also the pecuniary jurisdiction. However, the appeal filed by the plaintiff was allowed by the Division Bench. The Division Bench was of the opinion that a composite suit based on infringement of trade mark, copyright, passing off and for rendition of accounts of profit and also injunction having been filed, the Delhi High Court had the territorial jurisdiction. The Delhi High Court further found that the plaintiff could seek a restraint order against the threat once it came to learn that the defendants had applied for registration of trademarks at Delhi. The High Court, however, had not given any answer as to whether the defendant had sold goods at Delhi, thereby violating the right of the plaintiff at Delhi. Such order was challenged by the defendant in appeal before the Supreme Court. The Supreme Court, while dismissing the appeal against the decision of the Allahabad High Court and allowing the appeal as against the decision of the Delhi High Court, inter alia observed as follows :-
"23. We are not concerned in this case with the maintainability of a composite suit both under the 1957 Act and the 1958 Act. Indisputably, if such a situation arises, the same would be permissible; but the same may not be relevant for the purpose of determining the question of a forum where such suit can be instituted. Sub-section (2) of Section 62 of the 1957 Act provides for a non obstante clause conferring jurisdiction upon the District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the persons instituting the suit or other proceedings have been residing. In terms of sub-section (1) of Section 62, suit can be instituted and the proceedings can be initiated in respect of matters arising under the said chapter for infringement of the copyright in any work or the infringement of any other right conferred thereunder. It does not confer jurisdiction upon a District Court where the plaintiff resides, if a cause of action arises under the 1958 Act.
24. Order 2 Rule 3 of the Code provides that the plaintiff may unite in the same suit several causes of action against the same defendant, or the same defendants jointly. The said order contemplates uniting of several causes of action in the same suit. By necessary implication, a cause of action for infringement of copyright and a cause of action for infringement of trade mark or a cause of action of passing off would be different. Even if one cause of action has no nexus with another, indisputably Order 2 Rule 3 may apply. However, by reason of application of Order 2 Rule 3 of the Code ipso facto would not confer jurisdiction upon a court which had none so as to enable it to consider infringement of trade mark under the 1957 Act as also the 1958 Act.
25. It is trite law that a judgment and order passed by the court having no territorial jurisdiction would be a nullity.
26. In Kiran Singh v. Chaman Paswan (AIR 1954 SC 340), this Court observed:
It is a fundamental principle well established that a decree passed by a court without jurisdiction is a nullity, and that its invalidity could be set up whenever and wherever it is sought to be enforced or relied upon, even at the stage of execution and even in collateral proceedings. A defect of jurisdiction, whether it is pecuniary or territorial, or whether it is in respect of the subject-matter of the action, strikes at the very authority of the court to pass any decree, and such a defect cannot be cured even by consent of parties.
27. A judgment or order passed by a court lacking territorial jurisdiction, thus, would be coram non judice. Thus, if a District Court, where the plaintiff resides but where no cause of action arose otherwise, adjudicates a matter relating to infringement of trade mark under the 1958 Act, its judgment would be a nullity."
17.4 While holding that an earlier decision of the Delhi High Court reported in 1983 PTC 207 (M/s. Jawahar Engineering Company and Others, Ghaziabad v. M/s. Jawahar Engineers Pvt. Ltd.,) was not applicable, it was observed :-
"31. The said decision has no application in the instant case for more than one reason. For the purpose of registration of a trade mark, an application must be filed in the branch office of the Registrar of Trade Marks. It is not in dispute that under Section 5(3) of the 1958 Act, the Central Government has issued a notification in the Official Gazette defining the territorial limits within which an office of the Trade Marks Registry may exercise its functions. The office of the Trade Marks Registry at New Delhi exercises jurisdiction over the States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan and Uttar Pradesh and the Union Territory of Chandigarh and the National Capital Territory of Delhi. Whereas in Dhodha House v. S.K. Maingi no such application has been filed, admittedly in Patel Field Marshal Industries v. P.M. Diesels Ltd. the Delhi office has no jurisdiction as parties are residents of Rajkot and an application was filed by the appellant for registration of its trade mark at Bombay. If an objection is to be filed, the same has to be filed at Bombay. An advertisement by itself in a journal or a paper would not confer jurisdiction upon a court, as would be evident from the following observations of this Court in Oil and Natural Gas Commission v. Utpal Kumar Basu [(1994) 4 SCC 711]:
Therefore, broadly speaking, NICCO claims that a part of the cause of action arose within the jurisdiction of the Calcutta High Court because it became aware of the advertisement in Calcutta, it submitted its bid or tender from Calcutta and made representations demanding justice from Calcutta on learning about the rejection of its offer. The advertisement itself mentioned that the tenders should be submitted to EIL at New Delhi; that those would be scrutinised at New Delhi and that a final decision whether or not to award the contract to the tenderer would be taken at New Delhi. Of course, the execution of the contract work was to be carried out at Hazira in Gujarat. Therefore, merely because it read the advertisement at Calcutta and submitted the offer from Calcutta and made representations from Calcutta would not, in our opinion, constitute facts forming an integral part of the cause of action. So also the mere fact that it sent fax messages from Calcutta and received a reply thereto at Calcutta would not constitute an integral part of the cause of action.
32. A cause of action will arise only when a registered trade mark is used and not when an application is filed for registration of the trade mark. In a given case, an application for grant of registration certificate may or may not be allowed. The person in whose favour a registration certificate has already been granted (sic) indisputably will have an opportunity to oppose the same by filing an application before the Registrar, who has the requisite jurisdiction to determine the said question. In other words, a suit may lie where an infringement of trade mark or copyright takes place but a cause of action for filing the suit would not arise within the jurisdiction of the court only because an advertisement has been issued in the Trade Marks Journal or any other journal, notifying the factum of filing of such an application."
17.5 The Supreme Court specifically extracted the following observations from the decision of the Madras High Court reported in Premier Distilleries Pvt. Ltd. v. Shashi Distilleries [2001 PTC 907 (MAD)]:
"The cause of action in a suit for passing off, on the other hand and as already observed, has nothing at all to do with the location of the Registrars office or the factum of applying or not applying for registration. It is wholly unnecessary for the plaintiff to prove that he had applied for registration. The fact that the plaintiff had not applied for registration will not improve the case of the defendant either. Filing of an application for registration of a trade mark, therefore, does not constitute a part of cause of action where the suit is one for passing off. It was further observed:
The argument advanced that registration if granted would date back to the date of application and that the plaintiff would have the right to seek amendment of the plaint to seek relief on the ground of infringement as well, is wholly irrelevant so far as the cause of action for bringing a suit for passing off is concerned. While it may be convenient to the plaintiff to institute a suit in a court where he may later on be able to bring a suit for infringement of the trade mark, that convenience of the plaintiff is in no way relevant for deciding as to whether a cause of action for filing a suit for passing off can be said to have arisen in a place where, the deceit alleged to have been practised by the defendant had in fact, not been practised within the jurisdiction of the court in which the suit is brought. and expressly approved the same.
It was further observed :-
"46. The Delhi High Court, as noticed hereinbefore, however, did not advert to the third contention raised therein saying that the question as to whether the defendants had been selling its product on a commercial scale at Delhi was a question of fact and, thus, was required to be properly determined in case evidence is led by the parties.
47. The short question which arises for consideration is as to whether causes of action in terms of both the 1957 Act and the 1958 Act although may be different, would a suit be maintainable in a court only because it has the jurisdiction to entertain the same in terms of Section 62(2) of the 1957 Act?"
It was further observed :-
"52.In Patel Field Marshal (supra) again the thrust was on the sale of products and/or advertisement by the appellant for registration of trade marks in the Trade Marks Journal and other local papers. The Division Bench of the High Court, as has been noticed hereinbefore, did not advert to the issue as to whether the defendant had been selling its product in Delhi on a commercial scale or not. It is, therefore, not necessary for us also to dilate further on the said question. We have furthermore noticed hereinbefore that the advertisement appearing in a journal or newspapers by itself would not confer any jurisdiction on the court, if it otherwise did not have any.
53. In this case, the Delhi High Court could not have invoked its jurisdiction in terms of the 1957 Act. The primary ground upon which the jurisdiction of the original side of the High Court was invoked was the violation of the 1958 Act, but in relation thereto, the provisions of sub-section (2) of Section 62 of the 1957 Act could not be invoked.
54. The plaintiff was not a resident of Delhi. It has not been able to establish that it carries on any business at Delhi. For our purpose, the question as to whether the defendant had been selling its produce in Delhi or not is wholly irrelevant (sic). It is possible that the goods manufactured by the plaintiff are available in the market of Delhi or they are sold in Delhi but that by itself would not mean that the plaintiff carries on any business in Delhi.
55. It is not in dispute before us that the application for registration of the trade mark was to be filed either at Bombay or at Ahmedabad. The objections thereto by the plaintiff were also required to be filed at the said places. The jurisdiction of the Delhi Court could not have been invoked only on the ground that the advertisement in respect thereof was published in the Trade Marks Journal. Section 62 of the 1957 Act, therefore, will have no application. The plaintiff has no branch office at Delhi. Its manufacturing facilities are not available at Delhi. Both its trade mark and copyright are also not registered at Delhi.
. . .
57. For the purpose of invoking the jurisdiction of a court only because two causes of action joined in terms of the provisions of the Code of Civil Procedure, the same would not mean that thereby the jurisdiction can be conferred upon a court which had jurisdiction to try only the suit in respect of one cause of action and not the other. Recourse to the additional forum, however, in a given case, may be taken if both the causes of action arise within the jurisdiction of the court which otherwise had the necessary jurisdiction to decide all the issues."
18. On a careful reading of the aforesaid decision of the Supreme Court, the following prepositions appear to have been laid down by the Supreme Court :-
"(1) Even if one cause of action has no nexus with another, indisputably Order II Rule 3 may apply. However, by reason of application of Order II Rule 3 of the Code ipso facto would not confer jurisdiction upon a court which had none so as to enable it to consider infringement of trade mark under the Copyright Act, 1957 as also the Trade and Merchandise Marks Act, 1958. (see para 24) (2) A judgment or order passed by a court lacking territorial jurisdiction would be coram non judice. (see paras 25,26 & 27) (3) An advertisement by itself in a journal or a paper would not confer jurisdiction upon a court. (see para 30) (4) A cause of action would arise only when a registered trade mark is used and not when an application is filed for registration of the trade mark. A suit may lie where an infringement of trade mark or copyright takes place but a cause of action for filing the suit would not arise within the jurisdiction of the court only because an advertisement has been issued in the Trade Marks Journal or any other journal, notifying the factum of filing of such an application. (see para 32) (5) A decision is an authority what it decides and not what can logically be deduced from such decision. (see para 37).
19. Though in first blush it may appear that the aforesaid decision has created unsurmounted hurdle on the path of the plaintiff/respondent, a careful reading of the decision, in the light of the other decisions of the Supreme Court, would make it clear that the aforesaid decision of the Supreme Court may not be applicable to peculiar facts and circumstances of the present case.
20. It is of course true that invoking of jurisdiction of a Court for deciding a matter relating to copyright can be justified under Section 62(2) of the Copyright Act, 1957, though such a scenario was not available in respect of the matter coming within the fold of the Trade and Merchandise Marks Act, 1958 as no provision similar to Section 62 was incorporated under the Trade and Merchandise Marks Act, 1958. A careful reading of the decision of the Supreme Court makes it clear that combining of two distinct causes of action by the plaintiff against the very same defendant, as contemplated under Order II Rule 3 CPC., would be possible provided the Court had territorial jurisdiction to try both the suits, if separate suits would have been filed. Admittedly, in the aforesaid case before the Supreme Court, the question of jurisdiction was being examined on the anvil of the Code of Civil Procedure. Clause 14 of the Letters Patent applicable to the Madras High Court, even though may appear to be a provision similar to Order II Rule 3, a careful look at such clause in the Letters Patent indicates otherwise.
21. Clause 14 has already been extracted. For appreciation of the aforesaid aspect, it would be more appropriate to extract the provisions contained in Order II Rule 3 along with the provisions contained in Clause 14 of the Letters patent.
Clause 14 of the Letters Patent Order II Rule 3.
Joinder of several causes of action. - And We do further ordain that where plaintiff has several causes of action against defendant, such causes of action not being for land or other immovable 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 the High Court shall deem fit.
Joinder of causes of action.-
(1) Save as otherwise provided, a plaintiff may unite in the same suit several causes of action against the same defendant, or the same defendants jointly; and any plaintiffs having causes of action in which they are jointly interested against the same defendant or the same defendants jointly may unite such causes of action in the same suit.
(2) Where the causes of action are united, the jurisdiction of the Court as regards the suit shall depend on the amount or value of the aggregate subject matters at the date of instituting the suit.
22. Clause 14 of the Letters patent envisages that if the High Court has original Jurisdiction of one of such causes of action, it shall be lawful for the said High Court to permit combining of several causes of action and to make such order for trial of the same as the High Court shall deem fit. In the context of the difference in the language employed in Order II Rule 3 as compared to Clause 14 of the Letters Patent, the ratio of the decision of the Supreme Court would not be applicable.
23. It is of course true that Clause 14 requires that the High Court before permitting the plaintiff to join together several causes of action, is required to call upon the defendant to show cause why several causes of action should not be joined together and to make such order for trial as it deem fit. In the present case, there is no dispute that the plaintiff had combined two separate causes of action, one relating to violation of the copyright and the other relating to passing off coming within the purview of the Trade and Merchandise Marks Act, 1958. In C.S.No.534 of 1993, the plaintiff had obtained leave presumably under Clause 12 of the Letters Patent on the footing that part of the cause of action had arisen within the jurisdiction of the Madras High Court on account of publication of the notice in the trademark journal, wherein it was claimed that the defendant had transactions all over the country. (It is of course doubtful as to whether it can be said that such cause of action had arisen in part within the jurisdiction of the Madras High Court in view of the observation of the Supreme Court in Dhodha House case that mere filing of application for registration of the trade mark or publication of the notice or advertisement in the trade mark journal would not give rise to a cause of action within the concerned area).
24. It is the undisputed case of both the sides that in the connected suit C.S.No.535 of 1993, which had been filed by the same plaintiff against the marketing agent of the defendant in the earlier suit, an application purported to be under Clause 14 of the Letters Patent has been filed. It is not clear whether any specific order has been passed in the said application. (Unfortunately, in the background of shoddy maintenance of order-sheet in the Madras High Court, it is not possible to even find out as to whether any order had been passed or not). The fact remains, however, that leave had been obtained in the other suit. Both the suits were being taken up together at all relevant stages including while considering the applications for injunction and considering the appeals against such interim orders of injunction and were tried together and even common evidence was recorded. The defendant in both the suits for all practical purposes is the same, keeping in view the fact that one was the manufacturer and the other was the marketing agent.
25. Even though the defendant had raised the question of jurisdiction, no efforts had been made to revoke the leave granted in C.S.No.534 of 1993. This is not to suggest that even if leave is not revoked a party is precluded from raising the question, but, in our considered opinion, in the peculiar facts and circumstances of the present case, it can be said that the High Court by necessary implication had given a direction for combining the two separate causes of action which were composite in nature. The possibility of filing a composite suit containing the reliefs available under the Copyright Act, 1957 and the Trade and Merchandise Marks Act, 1958 is long recognised in series of judgments in the Madras High Court and even in Dhodha House case relied upon strongly by the appellant, wherein it was observed :-
"23. We are not concerned in the case with the maintainability of a composite suit both under the 1957 Act and the 1958 Act. Indisputably, if such a situation arises, the same would be permissible."
26. In the above view of the matter, we are of the considered opinion that the trial court had undoubted jurisdiction under Section 62(2) of the Copyright Act, 1957 over the matter relating to violation of the provisions of the Copyright Act and the cause of action and so far as the relief relating to the Trade and Merchandise Marks Act, 1958 is concerned, it could be combined in view of the provisions contained in Clause 14 of the Letters Patent.
27. Learned counsel for the appellant has vehemently contended that since in the OSA.Nos.245 and 246 of 1994, relating to interlocutory application for injunction, the defendant had been permitted to use a design as approved by the Division Bench and since the relief claimed by the plaintiff relating to rendering of accounts for the alleged violation of the copyright had been negatived by the learned single Judge, it can be said that the alleged cause of action relating to the Copyright Act does not survive as having been abandoned and the court will have no jurisdiction whatsoever relating to the cause of action coming within the purview of the Trade and Merchandise Marks Act, 1958.
28. To appreciate such contention, it would be more appropriate to extract the orders dated 14.9.1994 and 28.9.1994 in O.S.A.Nos.245 and 246 of 1994 :-
Order dated 14.9.1994 "The appeals arise out of interlocutory orders restraining the appellants from committing infringement of the copyright of the plaintiffs in their artistic work contained in the style of printing 'PRICOL' with starts and the artistic work, in any manner by distributing, printing or causing to be printed the impugned style of writing the word 'PRICOL' and artistic work or in any other style or writing, which is an imitation or infringement of the plaintiff's work.
2. The respondent has entered caveat and learned Senior Counsel appearing for the respondent represented that if the appellants give an undertaking that they would not use the artistic design belonging to the respondent, the appeals can be disposed of on that basis; and the rights of the respondent relating to passing off will be claimed in the proceeding pending before the learned Single Judge. We have directed now learned counsel for the appellants to produce copies of the new design said to have been adopted by the appellant and also file an affidavit by an authorised person undertaking that the appellants will not use the artistic work and the style of writing belonging to the respondent till the disposal of the suit."
Order dated 28.9.1994 "Pursuant to our Order dated 14-9-1994, an affidavit has been filed by the Appellant in each case. In paragraph-4 of the affidavit, it is stated as follows :-
"4. I state that the Appellant will not use the design as found in document No.4 or otherwise use a design which is deceptively similar to the Respondent's design in document No.3 to the Plaint. I also append herewith the design that is currently being used by the Appellant, and submit that only such design, or other similar design, which is not deceptively similar to the Respondent's design in document No.3 shall be adopted and used by the Appellant herein".
A design is appended to each of the affidavit. It is now stated by learned counsel for the respondent that the design appended to the affidavits does not infringe the copyright of the respondent and he has no objection to the Appellant using the said design till the disposal of the suit subject to the decision in O.A.NoS.361 and 363 of 1993. The above statement is recorded.
2. The appeals are allowed accordingly permitting the appellant in each appeal to use the design appended to the affidavit till the disposal of the suit. This will, however, be subject to the decision in O.A.Nos.361 and 363 of 1993 by the learned single Judge, which relates to passing off on the footing that the use of the word "PRICOL' is itself objectionable. No costs."
(Emphasis added by us)
29. In the aforesaid order of the Division Bench, passed during pendency of the suit, no where it is indicated that the plaintiff had abandoned the cause of action relating to the Copyright Act, 1957. On the other hand, the Division Bench had passed the order only recognizing the interim arrangement to use the design appended to the affidavit till the disposal of the suit, but nevertheless subject to the decision in O.A.Nos.361 and 363 of 1993, which relate to passing off relatable to the word "PRICOL" itself is objectionable. It may be that the learned single Judge under the present impugned judgment has thought it fit not to grant the relief of rendering of accounts. It has to be remembered that the learned single Judge had granted injunction in respect of the alleged violation relating to the Copyright Act as well as the Trade and Merchandise Marks Act, 1958. It cannot be said that the plaintiff's projected cause of action relatable to the Copyright Act was frivolous and calculated to clutch at the jurisdiction. In other words, the trial court had jurisdiction initially and may be at the time it has decided the relief relatable to the Copyright Act, it was either given up in view of the subsequent event or not pressed. Under such circumstances, we are unable to accept the contention that the court did not have the continued jurisdiction to deal with the matter.
30. Even assuming that the Original Side of the Madras High Court did not have any jurisdiction, the question arises as to whether the appellate court should interfere with the ultimate finding and the decision of the trial court. Section 21(1) of the Code of the Civil Procedure is extracted hereunder :-
"21. Objection to jurisdiction. - (1) No objection as to place of suing shall be allowed by any appellate or revisional Court unless such objection was taken in the Court of first instance at the earliest possible opportunity and in all cases where issues are settled at or before such settlement, and unless there has been a consequent failure of justice." (Emphasis added)
31. Even though by virtue of Section 120 CPC., Sections 16, 17 and 20 CPC are made inapplicable to any High Court in the exercise of its Original civil jurisdiction, there is no such exclusion so far as Section 21 CPC is concerned. A bare reading of Section 21 makes it clear that objection relating to place of suing shall not be allowed by the appellate court unless such objection is taken at the first instance and such objection is raised at the earliest opportunity and unless there has been a consequent failure of justice.
32. In AIR 1981 SC 1683 = (1981) 3 SCC 589 (PATHUMMA & OTHERS v. KUNTALAN KUTTY dead by LRs & OTHERS), while referring to Section 21(1) of the Civil Procedure Code, it was observed :-
"In order that an objection to the place of suing may be entertained by an appellate or revisional court, the fulfilment of the following three conditions is essential:
(1) The objection was taken in the Court of first instance.
(2) It was taken at the earliest possible opportunity and in cases where issues are settled, at or before such settlement.
(3) There has been a consequent failure of justice. All these three conditions must co-exist.
Now in the present case Conditions 1 and 2 are no doubt fully satisfied; but then before the two appellate courts below could allow the objection to be taken, it was further necessary that a case of failure of justice on account of the place of suing having been wrongly selected was made out. ..." (Emphasis added by the Supreme Court)
33. The aforesaid observation was followed by the Madras High Court in the decision reported in 1994 MLJ 258 (PARAMOUNT GROUP PVT. LTD. v. TAMIL NADU INDUSTRIAL INVESTMENT CORPORATION LIMITED).
34. While considering a similar question in AIR 1993 SC 2094 = (1993) 2 SCC 130 (R.S.D.V. FINANCE CO. PVT. LTD., v. SHREE VALLABH GLASS WORKS LTD.,), the Supreme Court observed :-
"7. . . . The Division Bench was totally wrong in passing an order of dismissal of suit itself when it had arrived to the conclusion that the Bombay Court had no jurisdiction to try the suit. The only course to be adopted in such circumstances was to return the plaint for presentation to the proper court and not to dismiss the suit. It may be further noted that the learned Single Judge trying the suit had recorded a finding that the Bombay Court had jurisdiction to entertain and decide the suit. Sub-section (1) of Section 21 of the Code of Civil Procedure provides that no objection as to the place of suing shall be allowed by any appellate or revisional court unless such objection was taken in the court of first instance at the earliest possible opportunity and in all cases where issues are settled at or before such settlement and unless there has been consequent failure of justice. The above provision clearly lays down that such objection as to the place of suing shall be allowed by the appellate or revisional court subject to the following conditions:
(i) That such objection was taken in the court of first instance at the earliest possible opportunity;
(ii) in all cases where issues are settled then at or before such settlement of issues;
(iii) there has been a consequent failure of justice.
8. In the present case though the first two conditions are satisfied but the third condition of failure of justice is not fulfilled. As already mentioned above there was no dispute regarding the merits of the claim. The defendant has admitted the deposit of Rs 10,00,000 by the plaintiff, as well as the issuing of the five cheques. We are thus clearly of the view that there is no failure of justice to the defendant by decreeing of the suit by the learned Single Judge of the Bombay High Court, on the contrary it would be totally unjust and failure of justice to the plaintiff in case such objection relating to jurisdiction is to be maintained as allowed by the Division Bench of the High Court in its appellate jurisdiction."
(Emphasis added)
35. In AIR 1954 SC 340 (KIRAN SINGH AND OTHERS v. CHAMAN PASWAN AND OTHERS), the plaintiffs filed the suit in the Court of the Subordinate Judge and valued it at Rs.2950/-. The said suit having been dismissed by the trial Court, plaintiffs filed an appeal before the Court of the District Judge. The First Appellate Court confirmed the judgment of the trial Court and dismissed the appeal. Plaintiffs filed a Second Appeal in the High Court. In the High Court Stamp Reporter raised an objection regarding the value of the suit. Question was referred to the Court and it was determined that correct valuation of the suit was Rs.9980/-. After revision of valuation, plaintiffs raised an objection in the High Court that the appeal from the decree of the Subordinate Judge (trial Court) would lie not to the District Court, but directly to the High Court and it was urged that the appeal should be heard as a first appeal ignoring the judgment of the District Court. The High Court rejected the said contention and dismissed the second appeal. Plaintiffs approached the Supreme Court. By an elaborate judgment, the Supreme Court negatived the contentions of the plaintiff and clarified the position of law. It was held by the Supreme Court as follows :-
"7. ... With reference to objections relating to territorial jurisdiction, Section 21 of the Civil Procedure Code enacts that no objection to the place of suing should be allowed by an appellate or Revisional Court, unless there was a consequent failure of justice. It is the same principle that has been adopted in Section 11 of the Suits Valuation Act with reference to pecuniary jurisdiction. The policy underlying Sections 21 and 99 of the Civil Procedure Code and Section 11 of the Suits Valuation Act is the same, namely, that when a case had been tried by a court on the merits and judgment rendered, it should not be liable to be reversed purely on technical grounds, unless it had resulted in failure of justice, and the policy of the legislature has been to treat objections to jurisdiction both territorial and pecuniary as technical and not open to consideration by an appellate court, unless there has been a prejudice on the merits. The contention of the appellants, therefore, that the decree and judgment of the District Court, Monghyr, should be treated as a nullity cannot be sustained under Section 11 of the Suits Valuation Act.
. . .
12. If the fact of an appeal being heard by a Subordinate Court or District Court where the appeal would have lain to the High Court if the correct valuation had been given is itself a matter of prejudice, then the decree passed by the Subordinate Court or the District Court must, without more, be liable to be set aside, and the words unless the overvaluation or undervaluation thereof has prejudicially affected the disposal of the suit or appeal on its merits would become wholly useless. These words clearly show that the decrees passed in such cases are liable to be interfered with in an appellate court, not in all cases and as a matter of course, but only if prejudice such as is mentioned in the section results. And the prejudice envisaged by that section therefore must be something other than the appeal being heard in a different forum. A contrary conclusion will lead to the surprising result that the section was enacted with the object of curing defects of jurisdiction arising by reason of overvaluation or undervaluation, but that, in fact, this object has not been achieved. We are therefore clearly of opinion that the prejudice contemplated by the section is something different from the fact of the appeal having been heard in a forum which would not have been competent to hear it on a correct valuation of the suit as ultimately determined."
(Emphasis added)
36. In AIR 2000 ALL 166 (KM. RAKHI AND ANOTHER v. Ist ADDITIONAL DISTRICT JUDGE, FIROZABAD AND OTHERS), it has been observed :-
"29. ... The Apex Court in the case of Kiran v. Chaman, AIR 1954 SC 340, had held that policy of legislation of Section 21 of the Code is the same as in Section 99 of the Code and Section 11 of the Suits Valuation Act."
The Allahabad High Court had also followed the ratio laid down in the decisions reported in AIR 1981 SC 1683 and AIR 1993 SC 2094 (cited supra).
37. In AIR 1962 SC 199 (HIRA LAL PATNI v. SRI KALI NATH), the appellant before the Supreme Court had engaged the services of the respondent to negotiate the bill relating to acquisition of shares in certain mills. The respondent instituted the suit on the original side of the Bombay High Court for recovery of his commission and the matter was referred to arbitration. One of the defences taken by the appellant was that the suit filed in the Bombay High Court was outside the territorial jurisdiction of the Bombay High Court in the Original Side. Ultimately, the award passed by the arbitrator was confirmed by the Bombay High Court. The decree incorporating such award was transferred to the District Court, Agra for execution. The appellant, as the judgment debtor, filed Objection under Section 47 and 151 of the Code of Civil Procedure objecting to the execution of the decree inter alia on the ground that Bombay High Court had no jurisdiction to entertain the suit and to make the award a decree of the court. The objection was rejected by the executing court and the appeal was dismissed by the Allahabad High Court. In appeal against such order before the Supreme Court, the only contention raised was to the effect that the suit instituted on the Original Side of the Bombay High Court was incompetent for want of territorial jurisdiction and, therefore, the award and the subsequent decree of the court were null and void. While repelling such contention, it was observed :-
"4. . . . In our opinion, there is no substance in this contention. There was no inherent lack of jurisdiction in the Bombay High Court where the suit was instituted by the plaintiff-decree holder. The plaint had been filed after obtaining the necessary leave of the High Court under clause 12 of the Letters Patent. Whether the leave obtained had been rightly obtained or wrongly obtained is not a matter which can be agitated at the execution stage. The validity of a decree can be challenged in execution proceedings only on the ground that the court which passed the decree was lacking in inherent jurisdiction in the sense that it could not have seizin of the case because the subject-matter was wholly foreign to its jurisdiction or that the defendant was dead at the time the suit had been instituted or decree passed, or some such other ground which could have the effect of rendering the court entirely lacking in jurisdiction in respect of the subject-matter of the suit or over the parties to it. But in the instant case there was no such inherent lack of jurisdiction.
The decision of the Privy Council in the case of 13 Ind.App.134 (P.C.) is an authority for the proposition that consent or waiver can cure defect of jurisdiction but cannot cure inherent lack of jurisdiction. In that case, the suit had been instituted in the Court of the Subordinate Judge, who was incompetent to try it. By consent of the parties, the case was transferred to the Court of the District Judge for convenience of trial. It was laid down by the Privy Council that as the court in which the suit had been originally instituted was entirely lacking in jurisdiction, in the sense that it was incompetent to try it, whatever happened subsequently was null and void because consent of parties could not operate to confer jurisdiction on a court which was incompetent to try the suit. That decision has no relevance to a case like the present where there could be no question of inherent lack of jurisdiction in the sense that the Bombay High Court was incompetent to try a suit of that kind. The objection to its territorial jurisdiction is one which does not go to the competence of the court and can, therefore, be waived. In the instant case, when the plaintiff obtained the leave of the Bombay High Court on the original side, under clause 12 of the Letters Patent, the correctness of the procedure or of the order granting the leave could be questioned by the defendant or the objection could be waived by him. When he agreed to refer the matter to arbitration through court, he would be deemed to have waived his objection to the territorial jurisdiction of the court, raised by him in his written statement. It is well settled that the objection as to local jurisdiction of a court does not stand on the same footing as an objection to the competence of a court to try a case. Competence of a court to try a case goes to the very root of the jurisdiction, and where it is lacking, it is a case of inherent lack of jurisdiction. On the other hand, an objection as to the local jurisdiction of a court can be waived and this principle has been given a statutory recognition by enactments like Section 21 of the Code of Civil Procedure. . . ."
Incidentally that was a case where the original side jurisdiction of the Bombay High Court had been invoked.
38. In Dhodha House case, even though there is passing reference to the decision of the Supreme Court reported in AIR 1954 SC 340 (cited supra), no reference has been made to Sections 21(1), 99 CPC as well as the decisions of the Supreme Court in AIR 1962 SC 199, which was the decision rendered by four Judges, AIR 1981 SC 1683, which was the decision rendered by three Judges, and AIR 1993 SC 2094, which was the decision rendered by three Judges.
39. In the present case, as we have already emphasised several times, the sole contention, which was presented at the time of hearing and in the written submissions, is relating to lack of territorial jurisdiction regarding cause of action arising under the Trade and Merchandise Marks Act, 1958. There is no whisper either in the Memorandum of appeal or during the course of argument regarding any prejudice caused to the appellants on account of the trial of the suit by the Madras High Court. Learned counsel for the appellant has fairly conceded that the plaintiff could have filed the suit at Coimbatore. If such a suit would have been filed at Coimbatore on the allegation of violation of the Trade and Merchandise Marks Act, the appeal would have been heard and disposed of by the same High Court. Even assuming that such appeal would have been heard by a single Judge and the present appeal has been heard by a Division Bench, we do not think this can be considered as a prejudice (see AIR 1954 SC 340). It is not the case of the appellant that on account of the trial being taken up at Madras, the appellant was prevented from pursuing the matter diligently. Therefore, we do not find any prejudice whatsoever has been caused to the appellants, even assuming that the court had no territorial jurisdiction to deal with the matter. Under such circumstances, the question arises is whether the decision of the Supreme Court in Dhodha House case can be said to have been rendered per incuriam. One has to remember that the said decision was rendered in the context of the orders of injunction under Order 39 Rule 1 and 2 CPC., during pendency of the suit. Since on the face of it the courts did not have any jurisdiction, the Supreme Court apparently upheld such contention. Since the question relating to jurisdiction was raised in an interlocutory matter during pendency of the suit, the third condition envisaged under Section 21(1) of the CPC was not relevant as the trial was yet to take place.
40. In the above view of the matter, it can be argued fairly by the plaintiff / respondent that even assuming that there was no territorial jurisdiction, since no prejudice has been caused to the appellant and since substantial justice has been done, the appellate court should not interfere with the order of the trial court.
41. For the aforesaid reasons, we do not find any merit in these appeals, which are accordingly dismissed. No costs.
dpk To The Sub-Asst. Registrar, Original Side, High Court, Madras