Delhi High Court
The Singer Company Limited & Anr vs M/S Chetan Machine Tools And Ors on 26 February, 2009
Equivalent citations: AIR 2009 (NOC) 1759 (DEL.), 2009 (4) AKAR (NOC) 714 (DEL.)
Author: Rekha Sharma
Bench: Rekha Sharma
REPORTABLE
* IN THE HIGH COURT OF DELHI AT NEW DELHI
I.A. Nos.612/2009 & 919/2009 in
CS(OS) No.2/2009
Date of Decision: February 26, 2009
THE SINGER COMPANY LIMITED & ANR ..... Plaintiffs
Through Mr. Sandeep Sethi, Senior Advocate
with Mrs. Anuradha Salhotra, Mr. Amritesh
Mishra & Ms. Bhawna Gandhi, Advocates
versus
M/S CHETAN MACHINE TOOLS AND ORS ..... Defendants
Through Mr. Ajay Sahni, Advocate with
Mr. Harshil, Advocate.
CORAM:
HON'BLE MS. JUSTICE REKHA SHARMA
1. Whether the reporters of local papers may be allowed to see the
judgment? Yes
2. To be referred to the reporter or not? Yes
3. Whether the judgment should be reported in the „Digest‟? Yes
REKHA SHARMA, J.
The Singer Company Limited and Singer India Limited are the plaintiffs before me. They claim that plaintiff No.1 is the largest and most successful sewing machine company. It manufactures and sells sewing machines besides other variety of goods in around 150 countries including India under the trademark "Singer" which is registered in India since the year 1942 and that plaintiff No.2 is an affiliate of plaintiff No.1 and is a licensed user of its trademark. Based on these averments, plaintiffs have filed the present suit against the CS(OS) No.2 of 2009 Page 1 of 10 defendants who are manufacturing and selling Milling Machines, on the allegation that they have adopted the trademark "Singer" which is deceptively similar to their trademark in colour scheme and font and consequently, they are infringing their trademark and are also passing off their goods by riding on their piggy back. Hence, they have prayed for a decree of permanent injunction against the defendants restraining them from using the trademark "Singer" or any other deceptively similar trademark.
The defendants in response to the suit have filed an application under Order VII Rule XI of the Code of Civil Procedure (hereinafter called the Code) and thereby seek rejection of the plaint, on the ground that it does not disclose any cause of action within the territorial jurisdiction of this Court. It is stated that there is not a whisper in the plaint that the defendants at the time of commencement of the suit actually and voluntarily reside or carry on business or personally work for gain or that the cause of action has, wholly or in part, arisen within the territorial jurisdiction of this Court. It is alleged that the only averment that has been made to invoke the jurisdiction of this Court is that the first plaintiff through the second plaintiff carries on its business within the territorial jurisdiction of this Court which averment, it is contended, is not enough to confer jurisdiction on this Court. Hence, it is further contended that the plaint is liable to be rejected.
Before I proceed to deal with the issue raised, it needs to be noticed that the plaintiffs have along with the plaint filed number of documents and one such document is the reply of the defendants dated August 06, 2008 to a notice from the plaintiffs dated CS(OS) No.2 of 2009 Page 2 of 10 July 31, 2008 calling upon them to desist from using their trademark "Singer". In their reply, the defendants had stated that they are established and reputed manufacturers and merchants of Milling Machines and machine tools since 1991 and that the said products are being sold throughout the country and have acquired a very vast and ever increasing reputation and goodwill. The reply so given was heavily relied upon by the plaintiffs to contend that this Court does have the territorial jurisdiction to entertain the suit.
What also needs to be noticed, is that after the filing of the application under Order VII Rule XI of the Code by the defendants, the plaintiffs moved an application under Order VI Rule XVII of the Code seeking amendment of the plaint so as to incorporate therein the following averments:-
"The cause of action has arisen within the jurisdiction of the Hon‟ble Court as the defendants are featuring its product namely Milling Machine over the internet on websites and thereby inviting people from all over India, to purchase its said product. The said websites are accessible within the jurisdiction of the Hon‟ble Court and targets and/or is likely to target the public/ customers residing within the jurisdiction of the Hon‟ble Court to sell the same to them. Further, the defendants in their letter of August 11, 2008 at para No.3 admitted that the Milling Machines, machine tools manufactured and/or marketed by them are being sold all over the country. The said admission in the defendants‟ said letter makes it clear/evident that the aforementioned product(s) of the defendants is available within the jurisdiction of the Hon‟ble Court and/or the defendants have the intention to sell the same and/or carry on business within the jurisdiction of this Hon‟ble Court."
Should the amendment, as proposed, be allowed? This is yet another issue which falls for determination.
The territorial jurisdiction to entertain a suit is governed by Section 20 of the Code except in relation to immovable properties or where the suit is for the compensation for wrongs to person or CS(OS) No.2 of 2009 Page 3 of 10 movables. Those are governed by Sections 16 & 19 of the Code. In so far as Section 20 of the Code is concerned, it provides that every suit shall be instituted in a Court within the local limits of whose jurisdiction the defendant actually and voluntarily resides, or carries on business, or personally works for gain or where the cause of action, wholly or in part, arises.
The plaintiffs do not dispute that the plaint does not contain averments to the effect that the defendants actually and voluntarily reside, or carry on business, or personally work for gain or that the cause of action, wholly or in part, has arisen within the territorial jurisdiction of this Court. This being so, should the plaint be rejected? The answer is in the negative and the reason is that while examining whether a plaint discloses a cause of action, it is not the plaint alone which is to be seen but also the documents filed along with the plaint and thereby forms part of the plaint. I say so on the strength of a judgment of the Apex Court in Liverpool and London S.P. and I Asson. Ltd. Vs. M.V.Sea Success I and Anr., reported in 2004(9) SCC 512 which says that having regard to Order VII Rule XIV of the Code not only the plaint but also the documents filed along with the plaint are required to be taken into consideration for the purpose of disposal of the application under Order VII Rule XI of the Code.
The plaintiffs, as has been noticed above, have filed along with the plaint reply of the defendants to their notice dated July 31, 2008 calling upon them to desist from using the trademark "Singer". Learned counsel for the plaintiffs on the basis of the said reply has argued that the defendants having themselves admitted that their products were being sold throughout India which obviously would be CS(OS) No.2 of 2009 Page 4 of 10 taken to include Delhi cannot be allowed to contend that this Court does not have the territorial jurisdiction to entertain the plaint and that the failure of the plaintiffs in not making an averment that the defendants‟ products were being sold in Delhi was not of much consequence and that at the most, it was a mere omission which the plaintiffs by virtue of application under Order VI Rule XVII of the Code are seeking to make good.
The defendants, on the other hand, have contended that their reply dated August 06, 2008 is of a general nature and it cannot be taken to be an admission on their part so as to be conferring territorial jurisdiction on this Court. As regards the application of the plaintiffs for amendment, it is contended that where the plaint is completely silent on the question of jurisdiction, the lacuna cannot be permitted to be filled-up by allowing the application for amendment or by looking into the documents filed along with the plaint, for documents can only supplement the averments made in the plaint but cannot act as substitute to the missing averments.
Having considered the rival submissions, I feel that in view of the judgment of the Apex Court in Liverpool‟s case, it will not be right to hold that the documents filed along with the plaint can be looked into as supplementing the plaint only and not beyond that. It is on a conjoint reading of the plaint and the documents filed along with it that the Court should come to a conclusion, whether the suit filed by the plaintiff discloses a cause of action within the territorial jurisdiction of the concerned Court. As noticed above, the defendants in their reply dated August 06, 2008 had clearly stated that their products were being sold throughout the country. Prima-facie, the reply goes to show CS(OS) No.2 of 2009 Page 5 of 10 that they are being sold in Delhi too. Of-course, the plaintiffs during the course of trial shall have to prove that the products of the defendants are actually being sold in Delhi but that will be a matter of evidence. At the present stage of the proceedings, in view of the reply dated August 06, 2008, it cannot be said that this Court lacks inherent jurisdiction to entertain the suit. The mere failure under the circumstances to set out this assertion in the plaint cannot be treated as fatal.
There is yet another aspect which needs to be noticed. The plaintiffs have made two-fold grievances against the defendants; one, that they are infringing their trademark, and the other that they are passing off their goods as that of the plaintiffs. In so far as the suit against relief of infringement is concerned, it is stated that the suit can even be filed within the local limits of the jurisdiction of a Court where at the time of institution of the suit or other proceeding, the person instituting the suit or proceeding actually and voluntarily resides or carries on business or personally works for gain. In support, reference is made to Section 134(2) of the Trade Marks Act, 1999 and to paragraph No.31 of the plaint where it is stated that the first plaintiff through second plaintiff carries on its business within the territorial jurisdiction of this Court.
It is not disputed by learned counsel for the defendants that a suit alleging infringement under Section 134 of the Trade Marks Act, 1999 can be instituted within the jurisdiction of a Court where the plaintiff actually and voluntarily resides or carries on business or personally works for gain. However, it is submitted that no suit for infringement is maintainable against the defendants in view of CS(OS) No.2 of 2009 Page 6 of 10 Section 30(2)(e) of the Trade Marks Act, 1999. This Section lays down that a registered trademark is not infringed where the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trademark given by registration under this Act. Relying upon the said Section, it is argued that no suit can be instituted by a person claiming to be the proprietor of a registered trademark against another person who too has been granted proprietary right of the same trademark and that the only remedy in such a situation is to file a cancellation petition for removal of the registered trademark before the Registrar of Trade Marks which the plaintiffs, as per the averments made in the plaint, have already done.
Responding to the aforesaid submissions, counsel for the plaintiffs submits that there is no absolute bar to file a suit by the proprietor of a registered trademark against another registered proprietor of the same trademark and in support, he has relied upon Section 124 of the Trade Marks Act, 1999, which runs as under:-
"Where in any suit for infringement of a trade mark, the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendant‟s trademark, the Court trying the suit shall, -
(i) if any proceedings for rectification of the register in relation to the plaintiff‟s or defendant‟s trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings."
Having regard to the provisions of Section 124 of the Trade Marks Act, 1999, I am prima-facie of the view that a suit by a registered proprietor of a trademark against another registered CS(OS) No.2 of 2009 Page 7 of 10 proprietor of the same trademark cannot be declined to be entertained at the threshold. Such a suit can lie but may have to be stayed depending upon the defence raised by the defendants. I am, however, expressing no final opinion on the issue raised except saying that the suit cannot be rejected at the inception itself.
In any case, as noticed above, the plaintiffs have moved an application under Order VI Rule XVII of the Code for amendment of the plaint and thereby are seeking to make good the omissions. The defendants say that once an application under Order VII Rule XI of the Code for rejection of the plaint has been filed, an application for amendment cannot be entertained. Is it so?
It has been time and again held by the Courts that procedural laws are intended to facilitate and not to obstruct the course of substantive justice. The Supreme Court in M/s Ganesh Trading Co. Vs. Moji Ram reported in AIR 1978 Supreme Court 484 has held that the defective pleadings are generally curable if the cause of action sought to be brought out was not ab-initio completely absent. It has been further held that:-
"Even very defective pleadings may be permitted to be cured, so as to constitute a cause of action where there was none, provided necessary conditions, such as payment of either any additional court fees, which may be payable, or of costs of the other side are complied with. "
It goes on to say that:-
"It is only if lapse of time has barred the remedy on a newly constituted cause of action that the Courts should, ordinarily, refuse prayers for amendment of pleadings."
As I have already said that in view of the reply of the defendants dated August 06, 2008 this Court does not lack inherent jurisdiction to CS(OS) No.2 of 2009 Page 8 of 10 deal with the suit, I see no reason why the amendment should not be allowed. I am fortified in my view by a judgment of a learned Single Judge of this Court in the case of Wasudhir Foundation Vs. C. Lal & Sons & Ors. reported in 45 (1991) Delhi Law Times 556. What he wrote, I quote:-
"5. This is righteous path. And, if this be so, is it not necessary, in the ends of justice, to extend the beneficial legal principles ensconced in Order 6 rule 17? Moreso, when one hardly discerns anything in Order 7 rule 11 which may lead one to take the view that it takes away the power of the Court to allow amendments or places hurdles in performance of its duty. After all, what is the effect of Order 7 rule 11? It is, if I understand correctly, that the plaintiff would not be precluded from filing a fresh suit in respect of the same cause of action, if he so desires (see Order 7, Rule 13). If such be the effect, why not permit the amendment of the plaint so as to remove the defect and prevent the operation of the Rule? Why make him first invite the rejection of the plaint, then allow him to file a fresh suit at the expense of delay and heavy costs? Why not straight-away allow him to amend the plaint, remove the defect and permit him, thereby, to proceed with the same suit? Why this rigmarole? After all, procedural law is intended to facilitate and not to obstruct the course of justice. With respect, it has rightly been had in Gaganmal V. Hongkong and Shanghai Banking Corp. AIR 1950 Bombay 345:
"It is perfectly true that it is incumbent upon the Court to reject a plaint that does not disclose a cause of action, but it does not follow that it is not open to the Court to allow a plaint to be amended so that it should disclose a cause of action. It is only when a plaint does not disclose a cause of action that the Court is called upon to exercise its power under O.7 R.11. But the Court may prevent the operation of O.7 R.11, and may save the plaint being rejected by exercising its power under O.6 R.17, and allowing the plaint to be amended."
In view of the foregoing discussion, the application of the defendants under Order VII Rule XI of the Code is dismissed, and the application of the plaintiffs under Order VI Rule XVII of the Code is allowed. The amended plaint is taken on record.
CS(OS) No.2 of 2009 Page 9 of 10
Learned counsel for the defendants is directed to file written statement to the suit as also reply to the application under Order XXXIX Rules 1 & 2 of the Code within two weeks and rejoinder within two weeks thereafter.
List on April 06, 2009.
REKHA SHARMA, J.
FEBRUARY 26, 2009 k CS(OS) No.2 of 2009 Page 10 of 10