Bombay High Court
A.D. Varangaonkar, Proprietor Of M/S. ... vs M/S. Kharpe Gruh Udyog And 2 Others on 7 April, 1997
Author: R.M. Lodha
Bench: R.M. Lodha
ORDER R.M. Lodha, J.
1. The Defendants by this chamber summons pray for revocation of leave granted ex parte under Clause 12 of the Letters Patent.
2. Arun Digamber Varangaonkar, the Plaintiff has filed the suit before this court on original side against the Defendants praying therein that Defendants by themselves, their servants, agents, stockists and distributors be restrained by perpetual injunction from using the house-cum-trade mark being the device of a crude house cum-roof top or any other mark which is deceptively similar to the trade mark of the Plaintiff being the device of a triangular roof top with chimney of the Plaintiff in relation to Defendant's masala product and spices preparation so as to pass off and/or likely to pass off and/or enable others to pass off the said preparation as and for the preparation of the plaintiff bearing their trade mark GHARKUL and device mark aforesaid. The plaintiff also prays that Defendants be restrained by perpetual injunction from using the label or package being Exhibit O and P annexed to the plaint which is deceptively similar to and/ or a colourable imitation of the package/carton/label of plaintiff being exhibit. L and M annexed to the plaint so as to pass off and/or likely to pass off and/or enable others to pass off Defendants preparations as advertisement for the preparation of Plaintiff. The plaintiff has also sought perpetual injunction against the Defendants from publishing, printing and causing to be printed and/or using whether in relation to goods or not the infringed piratical work as depicted in Exhibit O and P annexed to the plaint and thereby infringing or causing to be infringed the original artistic work or Plaintiff and thereby committing an infringement of the copyright of the Plaintiffs' said original artistic work. A decree of Rs. 2 lacs is also prayed by the Plaintiff against the Defendants by way of damages for the use of the impugned trade mark and device of the label, carton and package complained.
3. In the plaint of plaintiff has averred that he carries business as sole proprietor in the name and style of M/s. Gharkul Utpadane at Badnera Road, Amravati. He resides at Amravati and also resides at 101-A, Garden View, Borivali (East), Bombay. The plaintiff manufacturers and markets spices, masalas and condiment powders meant for cooking purposes for both vegetarian and non-vegetarian dishes and pickles. These preparations are sold in Maharashtra including Bombay and in other States of Karnataka, Andhra Pradesh, Madhya Pradesh and Gujarat. According to Plaintiff the Defendants carry on business inter alia of manufacturing and marketing spices, masalas and condiment powders used for cooking purposes and the Defendants' said preparations are sold in Amravati and also at Bombay. The Plaintiff avers in the plaint that with effect from 12th August, 1986 the firm's preparations such as mutton-masala and various kinds of similar food preparations under the trade mark GHARKUL and GHARKUL UTPADANE were placed in the market and the words GHARKUL and GHARKUL UTPADANE in the Roman script as also the word GHARKUL in Devnagari script were and are used as trade mark for the said preparations of the Plaintiff. It is the case of the plaintiff that in combination with the words GHARKUL and GHARKUL UTPADANE he uses an original artistic work which is a distinctively triangular shaped device of house-cum-roof top with chimney which original artistic work-cum-trade mark has been used by the Plaintiff and his predecessor-in-title since 12th August, 1986. The Plaintiff states in the plaint that the triangular device rendered in the Roman script and in the Devnagari script appears on all preparations of the plaintiffs or on all packages, cartons, letter heads and visiting cards of the Plaintiff. According to plaintiff the word marks "GHARKUL" and "GHARKUL UTPADANE" and the distinctive devices are trade marks which belong to him and Plaintiff is the owner and proprietor of the said trade marks. According to him applications for registration of the various trade marks in the offices of the Registrar of Trade Marks at Bombay have been filed, details of which have been given in the plaint and the said applications are pending in the Trade Marks Registrar's office in Bombay. The Plaintiff claims to have acquired considerable goodwill and good reputation amongst the trade and the consumers in relation to spices. food preparations and pickles bearing the trade mark 'GHARKUL' 'GHARKUL UTPADANE' and the distinctive device referred above. The grievance of the Plaintiff is that the Defendants have introduced in the market preparation packed in packages and/or cartons having the same get-up, same colour scheme and same scheme of arrangement as appears on the genuine cartons and packages of the Plaintiff. These packages also have the main feature of the red colour background with the device of crude house-cum-roof top with chimney in yellow and white background and in place of trade mark GHARKUL the word 'PHUL CHHAP' is rendered in Devnagri script in the same yellow colour as used by the plaintiff. By this act of the Defendants the semi-illiterate or illiterate consumers of the Plaintiff are likely to be confused or deceived. The Plaintiff caused enquiry and found that these preparations of the Defendants were available in Bombay and caused its purchases to be made. Two cash memos in respect of the test purchases made by the Plaintiff from Messrs Amruta Traders have been placed on record to demonstrate the preparation being the impugned trade mark and infringing copy of artistic work of the Plaintiff. Plaintiff before filing the suit served a notice to the Defendants through its advocate on 28th July, 1993 and they were asked to desist from using the crude house-cum-roof top and get-up colour scheme and scheme of arrangement similar to that of Plaintiff. The Defendants though their trade mark attorney replied to the notice given by the plaintiff and denied and disputed Plaintiff's claims and contentions. In paragraph 27 of the plaint it is averred by the Plaintiff that part of the cause of action of the manufacture of the impugned preparation bearing the impugned trade mark and impugned get-up of the package complained of has arisen in Amravati outside local limit of jurisdiction of this court, though material part of cause of action has occurred in Bombay and accordingly sought leave under Clause 12 of the Letters Patent.
4. On 30th September, 1993 this court granted leave to the Plaintiff under Clause 12 of the Letters Patent.
5. In the affidavit accompanying the chamber summons the Defendants have stated that false and incorrect statements have been made in the plaint. According to the Defendants, they have been residing and carrying on business of manufacturing and sale of spices bearing the trade mark complained of at Amravati and at no point of time they ever sold their spices complained of in Bombay nor are their said goods commercially available for sale in Bombay. According to Defendants they have not appointed any stockist, dealer or distributor for sale of spices bearing the trade mark in question in Bombay nor any retail sales of the said spices bearing the disputed trade mark have been effected in Bombay. The Defendants have not employed any salesman to sell the said goods in Bombay and according to them they have no commercial dealing with any party in Bombay. Regarding the two cash memos annexed by the plaintiff with the plaint, the defendants state that on visit to the premises of M/s. Amruta Traders, Tulsi Baug, 2/26, 1st Floor, Manmala Tank Road, Matunga West from where the plaintiff alleges to have purchased the goods, it transpired that it was residence-cum-business premises of one Mr. V. P. Pande and at that place business of selling, servicing and repairing of typewriters was being carried out under the name and style of M/s. Vishal Typewriter Service Centre. The visiting card of the said Mr. V. P. Pande has been placed on record. According to the defendants no finn by the name M/s. Amruta Traders is carrying on business from the said place, nor had carried on business from the said place. As regards other address mentioned in cash memos viz., 14A/A1, Avdhut Nagar, Chhatrapati Shivaji Road, Dahisar (East), Bombay, it is averred that the said place is the residence of Mr. S. R. Saraf and he is a relative of and connected with the plaintiff. M/s. Amruta Traders were acting as agents of the plaintiff and for some time promoted and/or sold and/or distributed the goods of the plaintiff in Bombay, and the said cash memos were obtained from M/s. Amruta Traders without actually selling the defendant's spices. In the affidavit the defendants also stated that plaintiff as well as defendants No. 2 and 3 have been residing and carrying on business at Amravati and both of them have been manufacturing and selling spices bearing their respective trade marks in and around Amravati. The entire evidence relating to business of the plaintiff is at Amravati and, therefore, balance of convenience for the trial of the suit is at Amravati.
6. The learned counsel appearing for the defendants submitted that plaintiff has been served of this chamber summons on 7-10-1996 through their advocates on record. He undertakes to file an affidavit of service to that effect. Despite service of chamber summons upon the plaintiff, no affidavit in reply has been filed by the plaintiff.
7. Clause 12 of the Letters Patent reads thus :
"Original jurisdiction as to suits. And we do further ordain that the said High Court of Judicature at Bombay in the exercise or 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 properly, such land or properly shall be situated or on all other cases if the cause of action shall have arisen, either wholly, or, in case the leave of the court shall have been first obtained, in part, within the local limits of the ordinary original jurisdiction of the said High Court, or if the defendant at the time of the commencement of the suit shall dwell or carry on business, or personally work for gain, within such limits; except that the said High Court shall not have such original jurisdiction in cases falling within the jurisdiction of the Small Cause Court at Bombay, in which the debt or damage or value of the property sued for, does not exceed one hundred rupees."
8. The present suit is not a suit for land or any immovable property and, therefore, provision relating thereto in Clause 12 has no application. The claim here relates to other than land or immovable property and would be entertainable and triable by this court under clause 12 of Letters Patent if the whole of cause of action has arisen within the jurisdiction of this court or by the leave of this court obtained first if part of cause of action has arisen within the local limits of the jurisdiction of this court.
9. In the present suit filed by the plaintiff, the claim is made in respect of the infringement of the copyright under the Copyright Act, 1957 and Section 62 of the Copyright Act which is relevant reads thus :
62. (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 (I), a "district court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 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 business or personally works for gain."
10. From the perusal of the plaint itself, it transpires that plaintiff mainly resides at Amravati and he carries on business also at Amravati. The goods are also manufactured by plaintiff at Amravati. The defendants reside at Amravati and they also manufacture the goods concerning the disputed trade mark and the device at Amravati. Except two cash memos produced by the plaintiff alongwith the plaint there is no other material prima facie showing the sale of the disputed goods manufactured by the defendants in Bombay or within the jurisdiction of this Court. Sub-section (2) of Section 62 of the Copyright provides that the suit in respect of the infringement of the copyright or any right conferred under the Copyright Act shall be instituted in the district court within local limits of whose jurisdiction the person instituting the suit actually and voluntarily resides or carries business or presently works for gain. Obviously sub-section (2) of Section 62 enables the suitor to file the suit or initiate civil proceedings arising under Chapter XII of Copyright Act in the district court within whose jurisdiction he actually and voluntarily resides or carries on business or personally works for gain. This whole some exceptional provisions is intended to save suitor if he so desires for redressal of his grievance in respect of the infringement of copyright or any right conferred by the Copyright Act from suing at the place where defendant resides or carries on business. Section 62 of Copyright Act, of course, cannot take away the jurisdiction of this court which it has under Letters Patent but at the same time this court shall not entertain and try a suit under the Copyright Act where whole of cause of action has not arisen within it's jurisdiction or material part of cause of action has not arisen within its jurisdiction or where though some part of cause of action has arisen within its jurisdiction but balance of convenience strongly and definitely is in favour of the suit being proceeded within some other court. In applying the doctrine of forum of convenience the court may consider the place of residence or business of the parties, the place where transactions took place, the volume of evidence and convenience of producing it at a particular forum, expenses of trial and such other relevant considerations. As already observed earlier, plaintiff in his plaint has himself come out with the case that he resides at Amravati and also at Bombay. The principal residence of the plaintiff, therefore appears to be at Amravati. The goods are also manufactured at Amravati. The defendants, according to plaintiff himself reside at Amravati and carry on business at Amravati. The volume of evidence that may be led by the parties can be conveniently produced at Amravati. The trial at Amravati shall save the parties from unnecessary expenses, and, therefore, balance of convenience definitely would be if the suit is tried at Amravati.
11. Taking into consideration the entire facts and circumstances of the case, I am of the view, that ex parte leave granted by this court deserve to be revoked which I hereby do.
12. Chamber summons is accordingly allowed. No costs.