Delhi District Court
M/S. Lachhman Das Behari Lal vs Pritam Murjani on 27 July, 2010
IN THE COURT OF SHRI HARISH DUDANI,
ADDITIONAL DISTRICT JUDGE15 (CENTRAL), DELHI
T.M. No.315/08/2000
Unique Case ID No. 02401C5729242004
M/s. Lachhman Das Behari Lal
Sat Photo Building
B29, Jhilmil Tahirpur Industrial Estate,
Delhi110095. ..........Plaintiff
Versus
1. Pritam Murjani
Proprietor/Partner of M/s Raj Chemicals,
1470, Saraswati Colony,
Jabalpur. ..........Defendant No.1
2. M/s. Raj Chemicals,
1470, Saraswati Colony,
Jabalpur.
(Also at 1594/1595, Cherital, Chander
Kanta Building, Saraswati Colony,
Jabalpur) ..........Defendant No.2
3. Ghanshyam Dass Murjani
son of Jetha Nand Murjani,
1594/1595, Cherital, Chanderkanta
Building, Saraswati Colony,
Jabalpur) ..........Defendant No.3
Suit No. 315/08/00 1 of 43
Date of Institution of the Suit : 25.04.2000
Date of reserving judgment : 16.07.2010
Date of pronouncement : 27.07.2010
J U D G E M E N T
1. This is a suit for permanent injunction, infringement of copyright and trademark, passing off, rendition of accounts and cost of the suit filed by the plaintiff.
2. The plaintiff has filed the above noted suit stating therein that the plaintiff is a registered partnership firm originally constituted in 1925 and is dealing in the manufacturing and selling of snuff. It is stated that since the year 1968, the plaintiff has been using SWAMI trade mark label for its snuff and said SWAMI label contains seven portraits of late Shri Narain Dass who was the grandfather/great grand father of the partners of the plaintiff firm. The word SWAMI is printed prominently on the left and right side of the said seven portraits in Roman and Devnagari characters respectively. Below the said word SWAMI, description matter is printed. The position of seven portraits is unique. The portrait appearing at the centre of the label is bigger Suit No. 315/08/00 2 of 43 in size compared to other six portraits. Three portraits are on the left side of the central portrait while the rest three portraits are on the right side of the central portrait. Except the central portrait, other six portraits are in circles and they are of uniform size. The words SEVEN PICTURES appear below the central larger portrait and the entire label has a distinctive colour scheme and distinctive arrangement of features. The label has yellow background and other colours used are blue, red and black. The word SWAMI is printed in blue colours. To protect its proprietary rights, the plaintiff has registered its said SWAMI trade mark label in the Trade Marks Registry under No.301792 in Class 34, as of 28.12.1974 and the said registration has been renewed from time to time and the said mark still subsists on the Register of Trade Marks. It is stated that said SWAMI label has been registered in copyright office under No.A 20545/78. To expand its business activities, the plaintiff has entered into Trade Mark Licence Agreement with some firms/companies and applications for registration of the said registered user agreements have been filed in the Trade Marks Registry and the same is pending consideration. The plaintiff's SWAMI snuff has Suit No. 315/08/00 3 of 43 acquired tremendous reputation and goodwill and SWAMI trade mark is associated and identified by the public and trade as that of the plaintiff. About 80% of the plaintiff's total sales pertain to SWAMI trade mark snuff. During the year 199899 sale of the plaintiff's snuff bearing SWAMI trade mark exceeded Rupees ten crores. The plaintiff's SWAMI trade mark is very well advertised by the plaintiff and its said licencees and lacs of rupees have been spent on advertisements made by means of wall paintings, advertisement display on buses, news paper advertisements, calendars, sign boards, tin plates, diaries, silver coins, keyrings, bags, thailas, thermas, towels, banners, hoardings, sponsorship of cultural programmes and promotion schemes etc. Due to huge advertisements, SWAMI trade mark has become very popular with the trade and among consumers who associate SWAMI snuff as that of the plaintiff. Whenever any person imitated the plaintiff's SWAMI trade mark, the plaintiff promptly instituted legal proceedings to protect its proprietary rights.
3. It is further stated in the plaint that in October, 1999, the plaintiff Suit No. 315/08/00 4 of 43 learnt that in Jabalpur and its surrounding areas, some persons unknown to the plaintiff were selling snuff under false SWAMI trade mark. The plaintiff, therefore, lodged a criminal complaint in Kotwali Police Station at Jabalpur. Police raided the premises of the defendant no. 3 and seized 36000 labels of the seven photo Swami Narain Snuff, 35 empty snuff gunny bags in two bundles, 27 tins of 2 kg packing and 18 tins of 1 kg packing of SWAMI Narain snuff, totalling 72 kgs of packed/finished snuff ready for sale. The seized goods were having the trade mark label which was deceptively similar to that of the plaintiff's said SWAMI trade mark label. From the seized goods, it is clear that defendant no. 2 was manufacturing and selling snuff bearing imitated SWAMI trade mark label as its name appears on the label. Defendant no. 1 is either the proprietor or partner of defendant no. 2 firm/concern and defendant no. 3 who is father of defendant no. 1 has manufactured and kept ready for sale 72 kg of packed/finished snuff with 7 photos SWAMI Narain Label in the premises at 1594/1595, Chandra Kanta Building, Jabalpur. On comparing the defendants' label, it may be seen that defendant no. 2 has copied the colour scheme, arrangement of Suit No. 315/08/00 5 of 43 features of 7 portraits and also the decorative features. Even the portraits appearing in the defendants' imitation label is drawn in the similar manner as that of the portrait of late Shri Narain Das which appears in the plaintiff's label. By using the nearly identical trade mark label for the same goods, defendant no. 2 was infringing the plaintiff's registered copyright No. A20545/8 and registered trade mark No. 301792 in class 34 and passing off its inferior snuff as that of the plaintiff. The defendants have not only imitated the plaintiff's SWAMI Trade Mark label but they also violated certain other statutory provisions i.e. the defendants had committed an offence under Section 81 of the Trade and Merchandise Marks Act, 1958 by misrepresenting an unregistered trade mark as a registered trade mark, the defendants had avoided payment of Central Excise Duty by clandestinely manufacturing snuff at the address which was different from the address given in the "Declaration of approval of list of Goods" to the Central Excise Department, the defendants had violated the provisions of Standards of Weights and Measurements Act by not mentioning maximum retail price, unit sale price, manufacturing date, net weight and complete Suit No. 315/08/00 6 of 43 address of the manufacturer on the package of false Sat Photo SWAMI Narain label and the defendants had also committed an offence under Section 295A of the Indian Penal Code by printing on the snuff label the photograph of Baba Shri Shri Gurvinder Singh Dhillon of the Radhaswami Satsangh Beas, which is against the religious sentiments of the said Satsangh. According to their own statement made in the "declaration of approval of list of Goods" the defendants had used imitated SWAMI Narain label with effect from 21.05.1999. As the plaintiff suffered losses during the months of May 1999 to October 1999, the plaintiff filed on 26.11.1999 a suit for permanent injunction, infringement of copyright and trade mark, passing off, rendition of accounts, etc. being Suit No. 2596 of 1999 against the above mentioned defendants in the High Court of Delhi alongwith which an interim application being no. 11909 of 1999 under Order 39 rules 1 & 2 read with Section 151 CPC was filed for exparte interim injunction and the Hon'ble Court was pleased to pass a restrain order against the defendants. Subsequent to the said suit no. 2596 of 1999 and interim order dated 29.11.1999 passed therein, the defendants have changed their SWAMI label.
Suit No. 315/08/00 7 of 43 On comparing the earlier label used before filing of the suit and the subsequently amended label it is seen that the defendants have made minor changes and retained main or essential features like SWAMI, NARAYAN, colour scheme and arrangement of features. On the left side panel, instead of three portraits on each of the left and right side of the central portrait, four portraits are printed on each side. Above the central portrait, the word "APPLIED" has been printed below the words "TRADE MARK" and below the central portrait, the words "SANT PICTURES" have been substituted in place of the words "SEVEN PICTURES". Regarding portraits a slight change has been made in the colour of the triangular portion of the turban appearing on the forehead of the person and in the portion below the beard of the person and below the portraits, instead of the words SWAMI NARAYAN SNUFF the words NARAYAN SWAMI SNUFF are printed and the word NARAYAN has been made less prominent. On the right side of the panel, on the top the words "SAAT PHOTO" in Devnagari characters have been replaced by the words "SANT PHOTO" in Devnagari characters and the word NARAYAN in Devnagari characters which was Suit No. 315/08/00 8 of 43 printed earlier below the prominent word SWAMI has been printed now above the prominent word SWAMI. When the defendants amended their SWAMI label, they also violated the provisions of the Standards of Weights and Measures Act by not mentioning the address of manufacturer, net weight, manufacturing/packing date, sale price of the package and unit sale price and, therefore, some packings of the defendants were seized on 14.02.2000 and 15.02.2000 by the Weights and Measurement Department, Jabalpur. Even in the amended SWAMI labels, the defendants have printed the letter "R" in a circle on the right side of the word SWAMI printed in Devanari characters and the defendants have thereby committed an offence under Section 81 of the Trade and Merchandise Marks Act, 1958.
4. It is further stated in the plaint that the defendants' subsequently amended label contains the same essential features, the same descriptive words, the same colour scheme and the same arrangement of features, the defendants' amended label is also deceptively similar to that of the plaintiff's label. By copying the Suit No. 315/08/00 9 of 43 plaintiff's label and by using it in respect of the same goods for which the plaintiff has used and registered its SWAMI trade mark, the defendants have infringed the plaintiff's registered trade mark no. 301792 in class 34 and the plaintiff's label in which the plaintiff has copyright registered under no. A 20545/78 and of which the plaintiff is the owner and the defendants have been passing off their inferior spurious snuff as that of the plaintiff. The profits earned by the defendant by imitating the plaintiff's SWAMI trade mark label are losses incurred by the plaintiff and the sales of the plaintiff have fallen since June, 1999. As the infringement took place at Jabalpur, Madhya Pradesh, the licencees seriously affected in the sale of snuff are those whose area of operation is mainly in Madhya Pradesh and its adjoining states Maharashtra. The plaintiff is suffering from losses in its business because of the unlawful activities of the defendants. The plaintiff estimates that by illegal trade activities the defendants might have earned profit to the tune of Rs.5,00,000/ (Rupees five lacs only). The cause of action in the present suit arose in January, 2000 when the plaintiff learnt that the defendants were making infringed copies Suit No. 315/08/00 10 of 43 of the plaintiff's "Artistic Works" and also using them as trade marks in respect of spurious snuff. Shri Manohar Lal Wadhwa who is the "author" of the said "Artistic Work" resides at Delhi and the plaintiff which is the "owner" of "Artistic work" in which copyright subsists are having business at Delhi and therefore according to the provisions of section 62(2) of Copyright Act, this Court has jurisdiction to entertain and try the present suit. It is prayed that a an order for permanent injunction restraining all the defendants through their proprietor/partners, servants, agents, representatives, dealers and all others acting for and on their behalf from infringing or reproducing copies of "artistic work" in respect of which plaintiff is the owner and or to do anything the exclusive right to do which is conferred upon the plaintiff, an order for permanent injunction restraining all the defendants through their proprietors/ partners, servants, agents, representatives, dealers and on their behalf from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in snuff under the Trade Mark Label SWAMI or any other trade mark which may be deceptively similar to the plaintiff's registered trade mark SWAMI, an order for permanent Suit No. 315/08/00 11 of 43 injunction restraining all the defendants through their proprietors/partners, servants, agents, representatives, dealers and all others acting for and on their behalf from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in snuff under the trade mark SWAMI or another trade mark which may be deceptively similar to the plaintiff's trade mark SWAMI and from committing any such act which is likely to cause confusion or deception amounting to passing off, for an order for delivery upon affidavit by the defendants to the plaintiff of all the offending counterfeit labels, cartons, literature and all other incriminating material bearing the offending trademark SWAMI under the possession and/or control or the defendants for destruction and/or erasure purposes and for an order for rendition of accounts so as to ascertain the profits earned by the defendants on the sale of offending goods as aforementioned bearing the trade mark SWAMI label and on decree for an amount so found due on the basis of sales thus made by the defendants alongwith costs of the suit be passed in favour of the plaintiff and against the defendants.
Suit No. 315/08/00 12 of 43
5. The defendants have filed common written statement. In their written statement, the defendants have taken the objections that Shri Manohar Lal Wadhwa, who is one of the partners in the firm has asserted that he is authorised to sign and verify the plaint and file this suit, but he has neither filed any authority letter nor filed power of attorney to prove that he is authorised by other partners to file this suit. It is denied that defendants are selling snuff under the false swami trade marks, whereas the defendants are yet to start the production of their product "SWAMI NARAYAN" snuff but the plaintiff in connivance with local police authorities has raided the premises of defendant no. 3 and seized certain articles and labels. It is stated that the above seizure was in relation to matter pending before the Hon'ble Court in Suit no. 2596/99 but regarding the present product of the defendants, namely, Narayan Swami, the police has never seized anything from the premises of defendants. The defendants have never sold their product in the name of Swami Trade Mark and the defendants products, namely, Narayan Swami is having distinct feature from the product of the plaintiff and, therefore, the contention of the plaintiff is misconceived Suit No. 315/08/00 13 of 43 and baseless. The defendants have never imitated the label of the plaintiff and, therefore, there is no question of violation of any provisions of Trade Marks Act. It is stated that the defendants never produced the snuff in the name and style of plaintiff and in the month of October, 1999 the plaintiff was preparing for launch of their produce Swami Narayan but the plaintiff in November, 1999 filed a civil suit before the Hon'ble Court and got an injunction order in its favour and the defendants thereafter started the production of their new product Narayan Swami snuff which is entirely different from the product of the plaintiff. It is denied that the defendants product Narayan Swami is having any resemblance with the plaintiff product. It is stated that the plaintiff's product's name is "SWAMI" snuff whereas the defendants product is called as "NARAYAN SWAMI" which itself shows the difference between the two names. The amended label of defendant is different in colour scheme and arrangement of feature and, therefore, there is no question of deceptive similarity and, therefore, the allegation of infringement of plaintiff's trade mark is denied. It is denied that the defendants are selling the inferior Suit No. 315/08/00 14 of 43 snuff. It is stated that the defendants have not earned any profit by any unlawful trade activities and, therefore, there is no question of rendition of accounts nor there is any question for destroying the material bearing the trade mark Narayan Swami because the defendants are using this label which is having different and distinct feature and the contention of the plaintiff that the defendants have copied their label is not true. The defendants have not copied the label of the plaintiff and, therefore, no cause of action survives in the matter and therefore, this Court has no jurisdiction to try this case. The defendants have refuted rest of the allegations made in the plaint and have sought dismissal of the suit.
6. The plaintiff has filed replications to the written statement of the defendants. In the replications, the plaintiff has reiterated the contents of plaint and has controverted the allegations of the defendants as alleged in the written statement. It is stated that Shri M. L. Wadhwa is a partner in the plaintiff's firm, by virtue of the implied authority of partner, he derives the competence to sign and verify the suit on behalf of the firm. It is stated that Suit No. 315/08/00 15 of 43 applications for registration of registered user agreements have been filed in the Trade Marks Registry and that they are pending consideration. The allegation that there was a connivance between the police and the plaintiff is emphatically denied. In regard to the contention of the defendants that the seized goods do relate to the present product of the defendants, it is submitted that initially the defendants had used the label "Sat Photo Swami Narayan". After issue of the injunction order dated 29.11.1999 in Suit No. 2596/99, the defendants had changed their label as "Sant Photo Narayan SWAMI snuff" and this being again deceptively similar and misleading, the plaintiff had filed another suit in S. No. 695/2000 and the Hon'ble Court was pleased to grant ad interim ex parte injunction in IA No. 3387/2000 in suit no. 695/2000. Even after the above restraint, the defendants have not stopped selling their product under the deceptively similar trade mark resembling that of the registered trade mark of the plaintiff firm and this time the defendants have used the name "SAVAMI" adopting the colour and portrait as used in their earlier label and stated to be manufactured and packed by M/s Padam Trading Company. Thus, as on date with Suit No. 315/08/00 16 of 43 three different labels, "Sant Swami Narayan", "Narayan Swami"
and "Savami" all resembling the registered trade mark of the plaintiff firm, the defendants are selling their products in the market.
7. From the pleadings of the parties, following issues were framed by my ld. Predecessor on 23.01.2007 :
1. Whether the plaintiff is entitled to the permanent injunction as prayed for? OPP.
2. Whether the plaintiff is entitled to rendition of accounts and decree of damages as prayed? OPP.
3. Relief.
8. Vide order dated 05.05.2008 passed in Suit No. 153/03/99 (New Suit No. 316/08/99), the present suit was consolidated with Suit No. 153/03/99 (New Suit No. 316/08/99) for the purpose of recording evidence.
9. To prove its case, the plaintiff examined Shri Manohar Lal Wadhwa as PW1, Shri Subhash as PW2, Shri Jagmal Singh as PW3, Shri Kanwal Juneja as PW4, Shri O. P. Makkar as PW5, Suit No. 315/08/00 17 of 43 Shri Yogesh Kansal as PW6, Shri Sandeep Kumar Wadhwa as PW7, Shri Bhagwati Charan Aggarwal as PW8, Shri Mahesh Chhabra as PW9, Shri Sandeep Kumar Wadhwa as PW10, Shri Om Prakash Kubba as PW11, Shri Sanjeev Singhal as PW12 and Shri Ashwini Kubba as PW13.
10. In order to prove its defence, the defendants have examined Shri Pritam Murjani/defendant no. 1 as DW1.
11. I have heard ld. Counsel for the plaintiff and carefully perused the record. My findings on the specific issues are as follows :
12. Issue No.1 The case of the plaintiff is that the plaintiff is dealing in the manufacturing and selling of snuff of tobacco and since the year 1968, the plaintiff has been using SWAMI trade mark label for its snuff and the said label contains seven portraits of late Shri Narain Das who was the grandfather/great grandfather of the partners of the plaintiff and the word SWAMI is printed prominently on the left and right side of the said seven portraits Suit No. 315/08/00 18 of 43 in Roman and Devnagari characters respectively and the position of seven portraits is unique. The portrait as appearing on the centre of the label is bigger in size compared to other six portraits and three portraits are on the left side of the central portrait while the rest three portraits are on the right side of the central portrait. The plaintiff has registered its SWAMI label trade mark vide number 301792 in class 34 as of 28.12.1974 and the said registration has been renewed from time to time. The said SWAMI label has been registered with copyright office under no. A20545/78. The case of the plaintiff is that in order to expand its business activity, the plaintiff has entered into licence agreement with some firms/companies and in October, 1999, the plaintiff learnt that in Jabalpur and its surrounding areas, some persons unknown to the plaintiff were selling snuff under false SWAMI trade mark and the plaintiff lodged complaint with the police to this effect in Kotwali Police Station, Jabalpur, (M.P) and police was able to recover the goods under the infringing trade mark and FIR no. 389/99 was registered. By way of present suit, the plaintiff has prayed for decree of permanent injunction for restraining the defendants from manufacturing, selling, Suit No. 315/08/00 19 of 43 offering for sale, advertising, directly or indirectly dealing in snuff under the trademark label SWAMI or any other trade mark which may be deceptively similar to the plaintiff's registered trade mark and or committing any act which is likely to cause confusion or deception amounting to passing off and the plaintiff has also prayed for decree of permanent injunction restraining the defendants from infringing or reproducing copies of "artistic work" in respect of which the plaintiff is the owner ad or to do anything, the exclusive right to do which is conferred upon the plaintiff's owner of the said copyright.
13. In para 29 of the WS, the defendants have taken the objection that this Court has no jurisdiction to try this suit. The defendants examined Shri Pritam Murjani as DW1 who adduced evidence by way of affidavit Ex.DW1/1. In para 14 of the affidavit Ex.DW1/1, DW1 has pleaded that the defendant is residing and working for gain at Jabalpur and they do not have any agent or dealer in Delhi and no cause of action has arisen in Delhi, hence, this Court has got no jurisdiction to try and entertain the suit. Hence, the defendants have challenged the jurisdiction of this Suit No. 315/08/00 20 of 43 Court to try the present suit. The plea as taken by the defendants in para 14 of the affidavit Ex.DW1/1 is that the defendants are residing and working for gain at Jabalpur and they are not selling their products in Delhi and no cause of action has arisen in Delhi, hence, this Court has no jurisdiction to try and entertain the present suit. The contention of ld. Counsel for the plaintiff is that in view of Section134 of Trade Marks Act, 1999, this Court has the jurisdiction to entertain and try the present suit. The present suit was filed on 25.04.2000 and the provisions of Trade and Merchandise Marks Act, 1958 are applicable to this case as the present suit has been filed prior to enforcement of the Trade Marks Act,1999 which came into force w.e.f. 15.09.2003.
14. It is well settled proposition of law that in the hierarchy of Courts, this Court is bound by the decisions as rendered by the Hon'ble Supreme Court of India. The law as declared by the Hon'ble Supreme Court of India is binding on all the Courts and Tribunals in India. In the present case, the plaintiff has joined cause of action in respect of infringement of trade mark and copyright. The defendants have pleaded in their affidavit Suit No. 315/08/00 21 of 43 that this Court has no jurisdiction to try the suit and grant reliefs, as sought as no cause of action has arisen within the jurisdiction of this Court.
15. Section 159 (4) of the Trade Marks Act, 1999 provides that notwithstanding anything contained in other provisions of this Act, any legal proceeding pending in any court at the commencement of this Act may be continued in that court as if this Act has not been passed. Section 159(1) of the Trade Marks Act, 1999 provides that the Trade and Merchandise Marks Act, 1958 is hereby repealed. A bare reading of Section 159(4) of Trade Marks Act, 1999 provides that any legal proceeding pending in any Court at the commencement of the Trade Marks Act, 1999 may be continued in that Court as if the Trade Marks Act, 1999 had not been passed. The provisions of Section 159 (4) of Trade Marks Act, 1999 clearly show that the proceedings already continuing under the Trade and Merchandise Marks Act, 1958 shall continue as if the Trade Marks Act, 1999 has not come into existence which amply prove that the cases filed prior to enactment of the Trade Marks Act, 1999 shall be governed by Suit No. 315/08/00 22 of 43 the provisions of the Trade and Merchandise Marks Act, 1958. On account of provisions of Section 159(4) of Trade Marks Act, 1999, the provisions of the new Act i.e. Trade Marks Act, 1999 shall not apply to the present suit which was filed while the Trade and Merchandise Marks Act, 1958 was in force. However, ld. Counsel for the plaintiff has contended that in the present suit apart from relief in respect of infringement of trade mark, the plaintiff has also claimed relief in respect of violation of copyright and the same is governed by provisions of Section 62(2) of the Copyright Act, 1957, hence, this Court has the territorial jurisdiction to try the present suit.
16. In Dhodha House & Patel Field Marshal Industries vs. S. K. Maingi & P. M. Diesel Ltd., 2006 (32) PTC 1 (SC), the Hon'ble Supreme Court examined question of extent of jurisdiction of civil Court to determine a lis regarding infringement of the provisions of Copyright Act, 1957 and Trade and Merchandise Marks Act, 1958. In this case the Hon'ble Supreme Court held :
"19. Cause of action, as is wellsettled, is a Suit No. 315/08/00 23 of 43 bundle of facts which are necessary to be proved in a given case. Cause of action, it is trite, if arises within the jurisdiction of the court concerned empowers the court to entertain the matter.........."
20. The jurisdiction of the District Court to determine a lis under the 1957 Act as also the 1958 Act must, thus, be instituted where the whole or a part of cause of action arises. Sub section (2) of Section 62 of the 1957 Act provides for an additional Forum therefor in the following terms :
"(2) For the purpose of subsection (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 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."
21. Admittedly, no such additional Forum had been created in terms of the provisions of the 1958 Act."
Suit No. 315/08/00 24 of 43
17. In Dhodha House's case (supra), the Hon'ble Supreme Court held that the objects and reasons for engrafting the provisions of Section 62(2) of Copyright Act, 1957 was to enable the authors to file a suit for violation of the Copyright Act, 1957 at the place where they reside. It was further held that in terms of sub section (1) of Section 62, suit can be instituted and the proceedings can be initiated in respect of matter arising out of the said chapter for infringement of the copyright in any work or the infringement of any other right conferred thereunder and does not confer jurisdiction upon a District Court where the plaintiff resides, if a cause of action arises under the Trade and Merchandise Marks Act, 1958. The Hon'ble Supreme Court held that :
"24. Order II 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 Suit No. 315/08/00 25 of 43 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 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 nullity."
18. In The Jay Engineering Works Ltd. vs. Ramesh Aggarwal, 2006 (33) PTC 561 (Del.) which was a composite suit under the Trade and Merchandise Marks Act, 1958 claiming infringement of trade mark based on right in the trade mark and passing off and Copyright Act, 1957 for infringement of registered and unregistered copyright and Designs Act, 2000 for infringement of registered design, the Hon'ble Court observed :
"8. At this juncture, it may pertinently be pointed out that the defendant is not disputing the jurisdiction of this Court under Section 62 (2) of the Copyright Act, 1957 (though the infringement of copyright is naturally disputed), but seeks to anchor its case on the judgment Suit No. 315/08/00 26 of 43 delivered by the Apex Court in 2006 (32) PTC 1 (SC) Dhoda House and Patel Field Marshal Industries v. S. K. Maingi and P. M. Diesel Ltd. The contention of the defendant is that the plaintiff in the jurisdiction paragraph, as set out above, has claimed jurisdiction of this Court on the basis of a wrong view of law that : "Since the suit based on copyright is available in this Hon'ble Court, the plaintiffs are entitled to sue the defendant in this Hon'ble Court for passing off as well as infringement of trademarks and registered design". This proposition of the plaintiff, the defendant asserts, is contrary to the law laid down by the Hon'ble Supreme Court in the case of Dhoda House (supra)."
"15. As stated at the outset, there is no dispute that for the relief of infringement of Copyright, this Court is vested with jurisdiction by virtue of Section 62(2) of the Copyright Act, in as much as the plaintiff admittedly has its registered office in Delhi and carries on business and works for gain in Delhi. There is no quarrel thus far. The contention of the defendant, however, is that in view of the law laid down by the Apex Court in Dhodha House (supra), this Court has no territorial jurisdiction in respect of the cause of action pertaining to infringement of trade mark, infringement of design and passing off, which part of the cause Suit No. 315/08/00 27 of 43 of action will be governed by Section 20 of the CPC. The defendant is from Hyderabad from where it is manufacturing and exporting its products to the Middle East. It neither resides nor carries on business in Delhi.
"29. In view of the aforesaid discussion, it must be held that the ratio of the decision of the Supreme Court in Dhoda House (supra) is squarely applicable. So far as the reliefs pertaining to infringement of trademark, design and passing off are concerned, this court will have no jurisdiction to entertain the present suit. Needless to state that for the relief against infringement of copyright, this court has the jurisdiction. Accordingly, it will be open to the plaintiff to file a fresh suit in the court of competent jurisdiction so far as the reliefs for infringement of trademark, design and passing off are concerned."
19. In Dabur India Limited vs. K. R. Industries, 2008 (37) PTC 332 (SC) it was held :
"19. In Dhodha House (supra) this Court was concerned with the correctness of judgments of the Allahabad High Court in Surendra Kumar Maingi vs. M/s Dodha House, [AIR 1998 Allahabad 43] and the decision of the Delhi Suit No. 315/08/00 28 of 43 High Court in : P. M. Diesels Ltd. v. M/s Patel Field Marshal, [AIR 1998 Delhi 225]
20. It was clearly held that a judgment passed by a court having no territorial jurisdiction is a nullity. As regards the cause of action under the 1957 Act and a cause of action under the 1958 Act and or a passing off action, it was held that subsection (2) of Section 62 would confer jurisdiction on a court where the plaintiff resides. The cause of action in respect of others was stated to be where the defendant resides. It was also noticed that in a given case the petition under the 1957 Act or 1958 Act may be overlapping, holding : "44. The territorial jurisdiction conferred upon the court in terms of the provisions of the Code of Civil Procedure indisputably shall apply to a suit or proceeding under the 1957 Act as also the 1958 Act. Subsection (2) of Section 62 of the 1957 Act provides for an additional forum. Such additional forum was provided so as to enable the author to file a suit who may not otherwise be in a position to file a suit at different places where his copyright was violated. Parliament while enacting the Trade and Merchandise Marks Act in the year 1958 was aware of the provisions of the 1957 Act. It still did not Suit No. 315/08/00 29 of 43 choose to make a similar provision therein. Such an omission may be held to be a conscious action on the part of Parliament. The intention of Parliament in not providing for an additional forum in relation to the violation of the 1958 Act is, therefore, clear and explicit."
21. Noticing that whereas in Dhoda House (supra) the infringement complained of primarily was that of 1958 Act and not under the 1957 Act, in Patel Field Marshal (supra) 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 law was stated in the following terms : "54. 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 Suit No. 315/08/00 30 of 43 which otherwise had the necessary jurisdiction to decide all the issues."
20. This is a composite suit filed by the plaintiff in respect of infringement of trade mark and copyright. In para 12 of the plaint, the plaintiff has stated that in October, 1999, the plaintiff learnt that in Jabalpur and its surroundings, some persons unknown to the plaintiff were selling snuff under the false trade mark and complaint to this effect was lodged in Police Station Kotwali, Jabalpur (M.P). In para 26 of the plaint, the plaintiff has stated that infringement took place at Jabalpur (M.P). In para 31 of the plaint, the plaintiff has mentioned about the jurisdiction of this Court and in the said para, the plaintiff has stated that Shri Manohar Lal who is the author of the artistic work resides at Delhi and the plaintiff who is the owner of the artistic work in which copyright subsists are having business at Delhi and, therefore, according to provisions of Section 62(2) of the Copyright Act, 1957, this Court has the jurisdiction to entertain and try the present suit. As per plaint, the allegations of the plaintiff are that the defendants are selling products under the infringing mark at Jabalpur (M.P.) and the plaintiff has filed Suit No. 315/08/00 31 of 43 the present suit in Delhi in view of Section 62(2) of the Copyright Act, 1957 as violation of copyright of the plaintiff has also taken place. In view of the decision in Dhodha House & Patel Field Marshal Industries vs. S. K. Maingi & P. M. Diesel Ltd. (supra), in order to bring the suit within the territorial jurisdiction of this Court as regards the relief claimed in respect of Trade and Merchandise Marks Act, 1958 Act, 1958, the plaintiff was required to prove that the suit has been filed in terms of Section 20 of CPC which reads as under :
20.Other suits to be instituted where defendants reside or cause of action arises.Subject to the limitations aforesaid, every suit shall be instituted in a Court within the local limits of whose jurisdiction
(a)the defendant, or each of the defendants where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain; or
(b)any of the defendants, where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain, provided that in such case either the leave of the Court is given, or the defendants who do not reside, or carry on business, or personally work for gain, as Suit No. 315/08/00 32 of 43 aforesaid, acquiesce in such institution; or
(c)the cause of action, wholly or in part, arises.
21. As per the plaint, the defendants are based at Jabalpur (M.P.).
The plaintiff examined Shri Manohar Lal Wadhwa, Partner of the plaintiff as PW1 who adduced evidence by way of affidavit Ex.PA and in para 19 of the affidavit Ex.PA, PW1 has stated that in October, 1999, the plaintiff learnt that some unknown person was selling in and around Jabalpur snuff bearing false SWAMI trade mark and a criminal complaint in Police Station Kotwali at Jabalpur was lodged. In the plaint, the plaintiff has neither pleaded nor adduced any evidence to the effect that the defendants were selling the goods under the infringing mark in Delhi or that any part of cause of action has arisen in Delhi as regards the relief claimed in respect of Trade and Merchandise Marks Act, 1958. PW1 admitted in the crossexamination that the defendants do not have any office in Delhi. The plaintiff has not adduced any evidence to the effect that the defendants carried on any business activity which could bring the suit in respect of Trade and Merchandise Marks Act, 1958 within the territorial jurisdiction of this Court.
Suit No. 315/08/00 33 of 43
22. From the aforesaid discussions, it is clear that the plaintiff has failed to prove that any part of cause of action in terms of Section 20 of CPC has arisen in Delhi regarding reliefs of infringement of trade mark and passing off, as claimed in respect of the Trade and Merchandise Marks Act, 1958.
23. In order to bring the suit within the territorial jurisdiction of this Court, in para 31 of the plaint, the plaintiff has stated that this Court has the jurisdiction to entertain and try the present suit by virtue of Section 62(2) of Copyright Act, 1957 as the plaintiff is carrying on the business at Delhi. The contention of ld. Counsel for the plaintiff is that by way of present suit the plaintiff has sought relief of decree of injunction thereby restraining the defendants from infringing or reproducing copies of artistic work in respect of which the plaintiff is the owner of amounting to infringement of copyright of the plaintiff. Section 62 of the Copyright Act, 1957 reads as under:
62. Jurisdiction of court over matters arising under this Chapter -
(1) Every suit or other civil proceeding Suit No. 315/08/00 34 of 43
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 subsection (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.
24. In para 1 of the plaint, the plaintiff has stated that the plaintiff is a registered partnership firm originally constituted in 1925 with Head Office and factory at Gidderbaha, Punjab and later in 1981 due to expansion of business, having moved part of the business activities and Head Office at Delhi. PW1 Shri Manohar Lal Wadhwa adduced evidence by way of affidavit Ex.PA and in para 4 of the affidavit Ex.PA, PW1 has reiterated the contents of para 1 of the plaint. The defendants have not rebutted that the plaintiff is carrying on business in Delhi. Accordingly, in view of Section 62(2) of Copyright Act, 1957, this Court will have the Suit No. 315/08/00 35 of 43 jurisdiction only to adjudicate the dispute between the parties regarding infringement of copyright, as claimed by the plaintiff.
25. The case of the plaintiff is that since the year 1968, the plaintiff has been using SWAMI trade mark label for its snuff and the said label contains seven portraits of late Shri Narain Das who was the grandfather/great grandfather of the partners of the plaintiff and the word SWAMI is printed prominently on the left and right side of the said seven portraits in Roman and Devnagari characters respectively and the position of seven portraits is unique. The portrait as appearing on the centre of the label is bigger in size compared to other six portraits and three portraits are on the left side of the central portrait while the rest three portraits are on the right side of the central portrait and the plaintiff has registered the said SWAMI label in the Copyright office under number A20545/78. The plaintiff examined its partner Shri Manohar Lal Wadhwa as PW1 who adduced evidence by way of Ex.PA. In para 13 of the affidavit Ex.PA, PW1 has stated that plaintiff's label is registered in Copyright office under number A20545/78 and the same is Ex.PW1/4.
Suit No. 315/08/00 36 of 43 The label of the plaintiff which the plaintiff claims to have registered under number A20545/78 is Ex.PW1/87 and on Ex.PW1/87, the plaintiff has also produced the label of the defendants for comparison purposes. The comparison of the label of the plaintiff and that of the defendants shows that the label of the plaintiff consists of seven photographs of a person supporting turban and beard in which central photograph is bigger and on the sides of the central photograph, there are three smaller photographs of the same person and in its label, the defendants have also put nine photographs of a person supporting turban and beard and the said photographs have been arranged in the same fashion as have been arranged by the plaintiff in its label i.e. in the centre, there is a large photograph which has four photographs each on the left and right side in the same fashion as arranged by the plaintiff on its label.
26. In Associated Electronic and Electrical Industries (Bangalore) Pvt. Ltd. v. M/s. Sharp Tools, Kalapatti, AIR 1991 Karnataka 406 it was held:
"23.One of the surest test to determine whether or not Suit No. 315/08/00 37 of 43 there has been a violation of copy right is to see if the reader, spectator, or the viewer after having read or seen both the works would be clearly of the opinion that get an unmistakble impression that the subsequent work appears to be a copy of the first. In other words, dealing with the question of infringement of copy right of the applicant's work by the respondent's work, the court is to test on the visual appearance of the object and drawing, design, or artistic work in question and by applying the test viz., 'lay observer test' whether to persons who are not expert in relation to objects of that description, the object appears to be a reproduction. If to the 'lay observer', it would not appear to be reproduction, there is no infringement of the artistic copy right in the work."
27. In order to make out whether there has been violation of the copy right work by one party by another, it is not that both the works are to be kept side by side and minuet dissimilarities between two works are to be found. In determining the question whether there has been violation of copyright of work of one party by another, broad and essential features of both the works are to be seen and for that purpose one is not to keep both the works side by side to try and find the minuet details.
Suit No. 315/08/00 38 of 43
28. Section 2(m) of the Copyright Act, 1957 provides that infringing copy means in relation to a literary, dramatic, musical or artistic work a reproduction thereof otherwise then in the form of a cinematographic film. Section 14 (a) of the Copyright Act, 1957 reads as under :
14. Meaning of copyright. For the purposes of this Act, "copyright" means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely :
(a). in the case of a literary, dramatic or musical work, not being a computer programme,
(i) to reproduce the work in any material form including the storing of it in any medium by electronic means;
(ii) to issue copies of the work to the public not being copies already in circulation;
(iii) to perform the work in public, or communicate it to the public;
(iv) to make any cinematograph film or sound recording in respect of the work;
(v) to make any translation of the work;
(vi) to make any adaptation of the work;
(vii) to do, in relation to a translation or an adaptation of
the work, any of the acts specified in relation to the work in subclauses (i) to (vi);
29. Section 51 of the Copyright Act, 1957 envisages when copyright Suit No. 315/08/00 39 of 43 in work shall be deemed to be infringed. In particular Cl.(b) states that copyright shall be deemed to be infringed when any person.
(i) makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, or
(ii) distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright, or
(iii) by way of trade exhibits in public, or
(iv) imports into India, any infringing copies of the work.
30. Section 52 of the Copyright Act, 1957 enumerates the act, which shall not constitute an infringement of copyright.
31. In Associated Electronic (supra) it was observed:
"21. In the decision relied upon by the respondent AIR 1961 Madras 111 (C.cunniah and Co. v. Balraj) the Madras High Court applying the test of resemblances, Ganapati Pillai, J. observed:
"A copy is that which comes near to the mind of every person seeing it. Applying this test, where the question is whether the defendant's picture is a copy of colourable imitation on the plaintiff's picture the design of resemblance between the two pictures which is to be judged by the eye, must get the suggestion that it is the plaintiff's picture. One picture said to be a copy of Suit No. 315/08/00 40 of 43 another picture finds a place in the reproduction."
32. In R. G. Anand vs. M/s Delux Films, AIR 1978 SC 1613, it was held that in order to be actionable the copy must be a substantial and material one which at once leads to the conclusion that the defendant is guilty of an act of piracy. The comparison of the label of the plaintiff and that of the defendants shows that a person who has seen the artistic work in the label of the plaintiff, on seeing the artistic work as appearing on the label of the defendants shall form an impression that the label of the defendants is copy of the label of the plaintiff. In the circumstances, the plaintiff shall be entitled to decree of permanent injunction restraining the defendants from infringing or reproducing the artistic work in respect of which the plaintiff is the owner vide number A20545/78. This issue stands answered accordingly.
33. Issue No. 2 By way of the present suit, the plaintiff has also prayed for decree of damages and rendition of accounts on the ground that the defendants have infringed the trade mark of the plaintiff and Suit No. 315/08/00 41 of 43 thereby earned profits and on that account, the defendants are liable to make payment of damages and the defendants are also liable to render their accounts. In findings of issue no. 1 above, it has been held that this Court has no territorial jurisdiction to entertain the present suit regarding the reliefs as claimed under the provisions of Trade and Merchandise Marks Act, 1958. In view of findings on issue no. 1 above, the plaintiff shall not be entitled to decree of damages and rendition of accounts, as prayed. This issue stands answered accordingly.
34. Issue No. 3 (Relief) In findings on Issue No. 1 above, it has been held that this Court has no territorial jurisdiction to entertain the present suit regarding the reliefs as claimed under the provisions of Trade and Merchandise Marks Act, 1958. Hence, it is open for the plaintiff to file a fresh suit in a Court of competent jurisdiction so far as the reliefs of infringement of trade mark and passing off are concerned. In issue no. 1 above, it has been held that the defendants have committed infringement of copyright of the artistic work of the plaintiff as registered in the name of the plaintiff with Registrar of Copyright vide number A20545/78.
Suit No. 315/08/00 42 of 43 The suit of the plaintiff is decreed for decree of permanent injunction thereby restraining the defendants, their proprietor/partners, servants, agents, representatives, dealers and all others acting for and on their behalf from infringing or reproducing copies of the artistic work of the plaintiff as registered vide No. A20545/78. The suit of the plaintiff stands disposed of accordingly. Parties are left to bear their own costs. Decree sheet be prepared accordingly. File be consigned to Record Room.
(Announced in the open Court
on 27th July, 2010) HARISH DUDANI
ADDITIONAL DISTRICT JUDGE (CENTRAL15)
DELHI
Suit No. 315/08/00 43 of 43