Delhi District Court
M/S Lachman Das Behari Lal vs M/S. Padam Trading Co on 27 July, 2010
IN THE COURT OF SHRI HARISH DUDANI,
ADDITIONAL DISTRICT JUDGE15 (CENTRAL), DELHI
Suit No.314/08/01
Unique Case ID No. 02401C5730112004
M/s Lachman Das Behari Lal
Sat Photo Building
B29, Jhilmila, Tahirpur Industrial Estate
Delhi - 110 095 ..........Plaintiff
Versus
1. M/s. Padam Trading Co.
121, Shanker Nagar, Katangi Road,
Jabalpur (M.P.) ..........Defendant No.1
2. Ghansham Dass Murjani
Son of Jetha Nand Murjani
1594/1595, Cherital, Chanderkanta Building,
Jabalpur, (M.P.) ..........Defendant No.2
3. Pritam Murjani,
son of Ghanshyam Dass Murjani,
1594/1595, Cherital, Chanderkanta Building,
Jabalpur, (M.P.) ..........Defendant No.3
4. Hiranand Murjani,
Suit No.314/08/01 1 of 47
son of Jetha Nand Murjani,
1594/1595, Cherital, Chanderkanta Building,
Jabalpur, (M.P.) (also at Parijat Building,
Cherital, Jabalpur (M.P.) .........Defendant No.4
5. Davinider Murjani
Son of Ghanshyam Dass Murjani
1594/1595, Cherital, Chanderkanta Building
Jabalpur (M.P.) ..........Defendant No.5
Date of Institution of Suit : 05.01.2001
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 trade mark, passing off, rendition of accounts etc. alongwith costs of the suit filed by the plaintiff.
2. The plaintiff has filed the abovenoted suit stating therein that the plaintiff is a registered partnership firm, originally Suit No.314/08/01 2 of 47 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. The firm is dealing in the manufacturing and selling of snuff through their licencee concerns having partners, namely, Manohar Lal Wadhwa, Bimla Kumari Wadhwa, Saraswati Devi, Hardwari Lal Wadhwa, Surender Kumar Wadhwa, Usha Wadhwa (w/o Late Shri Ramesh Kumar Wadhwa acting as legal guardian on behalf of her minor son Master Anmol Wadhwa), Ved Parkash Wadhwa, Jagdish Rai Wadhwa, Chaman Lal Wadhwa, Babu Ram Wadhwa, Subhash Chander Wadhwa, Som Parkash Wadhwa. Shri Manohar Lal Wadhwa who is one of the partners of the plaintiff firm is competent and is authorised to sign and verify the plaint and file this suit. 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 abovesaid 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 Suit No.314/08/01 3 of 47 Devnagari characters respectively and below the said word SWAMI, descriptive matter is printed. The position of seven portraits is unique. The portrait appearing at the centre of the label is bigger 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. The entire label has a distinctive colour scheme and distinctive arrangement of features. The label has yellow background. Other colours used are blue, red and black and the word SWAMI is printed in blue colours. 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 marks still subsist on the Register of Trade Marks. The said SWAMI label has been registered in copyright office under no. A 20545/78. It is stated in the plaint that to expand its business activities, the plaintiff has entered into Trade Mark Licence Agreement with some Suit No.314/08/01 4 of 47 firms/companies and applications for registration of the said registered user agreements have been filed in the Trade Marks Registry and the same are pending considerations.
3. It is stated in the plaint that the plaintiff's SWAMI snuff is of a very high quality and due to its purity it has become very popular among the trade and the public and the plaintiff's SWAMI snuff has 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 and during the year 19992000 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, key rings, bags, thailas, thermos, towels, banners, hoardings, sponsorship of cultural programmes and promotion schemes Suit No.314/08/01 5 of 47 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.
4. It is further stated in the plaint that in September, 2000, the plaintiff learnt that defendant No.1 was manufacturing and selling snuff in 25 grams tins bearing the trade mark label which was nearly identical to that of the plaintiff in colour scheme, same arrangement of all features and confusingly and deceptively similar essential features. Instead of the plaintiff's essential feature SWAMI, the said defendant is using the word SAVAMI in Roman and Devenagari characters as is done by the plaintiff. Visually, phonetically and structurally, SVAMI is deceptively similar to the plaintiff's word SWAMI. The plaintiff therefore filed FIR NO.550 dated 11.09.2000 in Gohalpur Police Station, Chowki Madhotal, Jabalpur against the defendant No.1 to 5. Thereupon, finished goods bearing the Suit No.314/08/01 6 of 47 said false trade mark alongwith snuff in bulk bags etc. were seized and released on Superdari.
5. It is further averred in the plaint that according to the information received by the plaintiff, the defendant No.1 is a partnership firm and the defendant Nos.2 to 5 who belong to one and the same family, are its partners. Defendants have misrepresented on SAVAMI snuff tin as MKTD by SOMNATH AGENCY VIVAR (Rajasthan). On enquiry, the plaintiff learnt that no such firm exists. It is stated that earlier the defendant Nos.2 to 3 had also formed a partnership firm being M/s. Raj Chemicals of 1470 Saraswati Colony, Jabalpur and imitated the plaintiff's name SWAMI snuff trade mark label. The plaintiff had filed FIR No.389 dated 13.10.1999 in Kotwali Police Station, Jablapur. Police raided the premises and seized 36000 labels of false SWAMI trade mark, 35 empty snuff gunny bags, 27 tins of 2 kg. packing and 18 tins of 1 kg. packing. Approximate value of the seized goods was about Rs.10,000/. The seized goods were having the trade mark label which was deceptively similar to the plaintiff's said Suit No.314/08/01 7 of 47 registered SWAMI trade mark label. The plaintiff thereafter filed Suit No.2596 of 1999 on 26.11.1999 against the said M/s. Raj Chemicals in the Hon'ble High Court of Delhi and vide order dated 29.11.1999, passed by Hon'ble Court, the defendants were restrained from using the SWAMI trade mark label or any other trade mark deceptively similar thereto. Subsequent the aforesaid order dated 29.11.1999, the said defendants M/s Raj Chemicals continued to copy the main/essential features, colour scheme and arrangement of features including the descriptive matter, although they had amended their SWAMI label by making minor changes. The plaintiff, therefore, had to file the second suit being suit No.695 of 2000 in the Hon'ble High Court of Delhi against the said defendants M/s. Raj Chemicals and Hon'ble Court vide order dated 03.05.2000 restrained the said defendants from copying/infringing the plaintiff's SWAMI snuff label. While amending its trade mark lable, the said defendants M/s. Raj Chemicals committed an offence under section 81 of The Trade and Merchandise Marks Act, 1958 by misrepresenting as a registered trade mark and a show cause notice dated 15.03.2000 Suit No.314/08/01 8 of 47 was sent by the Registrar of Trade Marks to M/s. Raj Chemicals.
6. It is further averred in the plaint that defendant Nos.2 and 3 alongwith defendant No.4 & 5 have formed a partnership firm M/s. Padam Trading Co. and imitated the plaintiff's said SWAMI trade mark label. The defendants have printed the word SAVAMI in Roman and Devanagari characters in blue colour at the same place. The defendants' SAVAMI is visually, phonetically and structurally similar to the plaintiff's essential feature SWAMI. It is averred in the plaint that the present defendant's (Padam Trading Co. & Others) subsequently amended third label also contains similar essential features, the same descriptive words, the same colour scheme and the same arrangement of features, the defendant's third amended label is also deceptively similar to that of the plaintiff's SWAMI label. The defendants have infringed the plaintiff's trade mark registered under No.301792 in Class 34 and infringed the plaintiff's label in which the plaintiff has copyright registered under No.A20545/78 and of which the plaintiff is the owner Suit No.314/08/01 9 of 47 and has been passing off their inferior spurious snuff as that of the plaintiff. It is also averred in the plaint that the profits earned by the defendants by imitating the plaintiff's SWAMI trade mark label are losses incurred by the plaintiff. It is stated that all the goods, cartons, wrappers, tins, pouches, labels, blocks, literature, pamphlets and other incriminating material bearing SAVAMI trade mark label are liable to be destroyed. It is stated that cause of action in the present suit arose in September 2000 when the plaintiff learnt that the defendants were making infringed copies of plaintiff's artistic work and also using them as trade marks in respect of spurious snuff and the same is continuous one. It is also averred that Shri Manohar Lal Wadhwa who is the author of the said artistic work resides at Delhi and the plaintiff which is the owner of the artistic work in which copyright subsists are having business at Delhi and therefore according to the provisions of Section 62 (2) of the Copyright Act this Court has jurisdiction to entertain and try the present suit. It is prayed that an order for permanent injunction restraining all the defendants through their proprietor/partners, servants, agents, representatives, dealers Suit No.314/08/01 10 of 47 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 SAVAMI or any other trade mark which may be deceptively similar to the plaintiff's registered trade mark SWAMI, an order for permanent 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 SAVAMI or another trade mark which may be deceptively similar to the plaintiff's trade mark SWAMI and from committing any such act which is/are likely to cause confusion or deception amounting to passing off, for an order for delivery upon Suit No.314/08/01 11 of 47 affidavit by the defendants to the plaintiff of all the offending counterfeit labels, cartons, literature and all other incriminating material bearing the offending trademark SAVAMI under the possession and/or control of 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 SAVAMI 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.
7. The defendants have filed common written statement and have contested the suit. In the written statement, 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 stated that features which have been explained by the plaintiff Suit No.314/08/01 12 of 47 in his plaint are different from the defendants' product and the defendants product is known as SAVAMI in the market which is phonetically different from the plaintiff's product. Regarding registration of said SWAMI trade mark label in the Trade Marks Registry under No.301792 in Class 34 as of 28.12.1974, the defendants have taken plea that the same does not require any reply and the same has to be proved by the plaintiff. Defendants have also not preferred to reply to plaintiff's plea that said SWAMI label has been registered in Copyright office under No.A 20545/78. Regarding contentions of plaintiff regarding Trade Mark Licence Agreements with some firms/companies by plaintiff and its sale figures from the year 199596 to 19992000, the defendant's have sought production of documents to substantiate claim of the plaintiff. Defendants has denied allegations of plaintiff that the defendants are selling snuff in 25 grms. tin pack and the same is identical to the plaintiff's product. The defendants have taken plea that they are selling their products in the name and style of SAVAMI and colour arrangement as well as photos/emblem on the tin is entirely different in numbers and shapes. It is stated that FIR Suit No.314/08/01 13 of 47 No.550 dated 01.09.2000 in Gohalpur Police Station, Jabalpur has been registered by making false allegations to pressurise the defendants for making compromise in the pending suit. Defendants have admitted that defendant Nos.2 & 3 have formed M/s. Raj Chemicals but the allegations that it was formed for the purpose of imitating the plaintiff's trade mark has been denied. It is admitted by defendants that in Suit No.2596/99 an order of injunction has been passed in favour of plaintiff but defendants have pleaded that they have never disobeyed the order of Court and stopped the production of the respective products. Defendants have stated that they are complying with the order of the Hon'ble High Court passed in Suit No.695/2000. Defendants have admitted forming a new partnership firm but denied having copied the essential features of plaintiff's product. It is stated that the defendant has never infringed the plaintiff's trade mark registered under No.301792 in Class 34 and similarly never violated the copyright registration under No.A20545/78 and never sold the spurious snuff in the name of the plaintiff. It is stated that the downfall in the sale of the plaintiff's product is not because of defendants Suit No.314/08/01 14 of 47 but due to certain other reasons but plaintiff is trying to put the liability on the defendants for their losses. It is stated that the defendants' firm is a small scale firm/industry and production is seasonal and according to the demand in the market and therefore, defendants are not maintaining their account like large business firms. It is stated that the defendants are the manufacturer of SAVAMI SNUFF and having their factory at 121, Shanker Nagar, Katanga Road, Jabalpur having Central Excise Road No.21/24/RI/JBP/2000. It is stated that the defendants' product is having its distinct and independent feature and defendants never copied the trade mark of the plaintiff and the suit is liable to be dismissed.
8. The plaintiff has filed replications to the written statement of 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 statements. It is stated that Shri M.L. Wadhwa is a partner in the plaintiff firm and by virtue of the implied authority of partner, he derives the competence to sign and verify the suit on behalf of the firm. It Suit No.314/08/01 15 of 47 is stated that the defendants' contention that their SAVAMI trade mark label is not deceptively similar to that of the plaintiff's SWAMI trade mark label because of nonexistence of phonetic similarity of SAVAMI to SWAMI and due to differences in the number of photos, colour scheme and pictures is totally wrong and denied. It is stated that essential feature SAVAMI is visually, phonetically and structurally similar to the plaintiff's essential feature SWAMI. It is further stated that taking into account the likely class of purchasers of snuff, their level of education and intelligence, the fact that these purchasers largely reside in the urban and rural areas, and the well settled principle of imperfect recollection, it is stated that the defendants' label is deceptively similar to that of the plaintiff. It is stated that the defendants' contention that their trade mark label is not deceptively similar to that of the plaintiff's is totally wrong and denied.
9. 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.
Suit No.314/08/01 16 of 47
2.Whether the plaintiff is entitled to the rendition of accounts and the decree of damages as prayed?OPP
3.Relief.
10. 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.
11. 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 PW 5, 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.
12. In order to prove its defence, the defendants have examined Shri Pritam Murjani/defendant no.3 as DW1.
Suit No.314/08/01 17 of 47
13. I have heard ld. Counsel for the plaintiff and carefully perused the record. My findings on the specific issues are as follows :
14. 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 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.
Suit No.314/08/01 18 of 47 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 in September, 2000 the plaintiff learnt that defendant No.1 was manufacturing and selling snuff in 25 grams tins bearing the trade mark label which was nearly identical to that of the plaintiff in colour scheme, same arrangement of all features and confusingly and deceptively similar essential features. By way of present suit, the plaintiff has prayed for decree of permanent injunction for restraining the defendants from manufacturing, selling, 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 Suit No.314/08/01 19 of 47 conferred upon the plaintiff's owner of the said copyright.
15. The defendants examined Shri Pritam Murjani/Defendant No.3 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 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 05.01.2001 and the provisions of Trade and Merchandise Marks Act, 1958 are applicable to this Suit No.314/08/01 20 of 47 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.
16. 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 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.
17. 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 Suit No.314/08/01 21 of 47 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 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 Suit No.314/08/01 22 of 47 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.
18. 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 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 Suit No.314/08/01 23 of 47 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."
19. 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 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 subsection (1) of Section 62, suit Suit No.314/08/01 24 of 47 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 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 Suit No.314/08/01 25 of 47 jurisdiction would be nullity."
20. 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 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 Suit No.314/08/01 26 of 47 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 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 Suit No.314/08/01 27 of 47 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."
21. 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 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, Suit No.314/08/01 28 of 47 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 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."
Suit No.314/08/01 29 of 47
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 which otherwise had the necessary jurisdiction to decide all the issues."
22. 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 September, 2000 the Suit No.314/08/01 30 of 47 plaintiff learnt that defendant No.1 was manufacturing and selling snuff in 25 grams tins bearing the trade mark label which was nearly identical to that of the plaintiff in colour scheme, same arrangement of all features and confusingly and deceptively similar essential features. Instead of the plaintiff's essential feature SWAMI, the said defendant is using the word SAVAMI in Roman and Devenagari characters as is done by the plaintiff. Visually, phonetically and structurally, SVAMI is deceptively similar to the plaintiff's word SWAMI. In para 24 of the plaint, the plaintiff has stated that infringement took place at Jabalpur (M.P). In para 29 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 Suit No.314/08/01 31 of 47 Jabalpur (M.P.) and the plaintiff has filed 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, Suit No.314/08/01 32 of 47 or carry on business, or personally work for gain, as aforesaid, acquiesce in such institution; or
(c)the cause of action, wholly or in part, arises.
23. The contention of ld. Counsel for the plaintiff is that the question of jurisdiction has been decided by the Hon'ble Court vide order dated 13.09.2002 passed on application u/o 7 rule 11 CPC r/w Section 151 CPC. Vide order dated 13.09.2002, the Hon'ble Court disposed of application u/o 7 rule 11 CPC r/w Section 151 CPC filed by the defendants for rejection of plaint. On page 3 of the order dated 13.09.2002, the Hon'ble Court has observed that at this stage while dealing with the defendants' application u/o 7 rule 11 CPC, the Court has to go by the averments made in the plaint only and not by the defence raised by the defendants and if the averments made in the plaint even primafacie suggest that this Court has territorial jurisdiction, the suit has to be proceeded with in accordance with law. The Hon'ble Court further held that the defendants are at liberty to raise this plea in their written statement also so that this issue is tried and decided by the Court. On page 4 of the order dated 13.09.2002, the Hon'ble Court has observed that a perusal of Suit No.314/08/01 33 of 47 the averments made by the plaintiff in the plaint shows that the plaintiff is not alleging violation of its trade mark only but violation of its copyright also in regard to its product and as such Section 62(2) of Copyright Act, 1957 comes into play and this Section is an exception to the rules relating to the territorial jurisdiction of the Court and permits the plaintiff to bring an action for the violation of the copyright even at a place where the plaintiff voluntarily resides or carries on business or works for gain. On page 5 of the order dated 13.09.2002, the Hon'ble Court referred to a Division Bench judgment of M/s P. M. Diesel Limited wherein it was held that in a case where the plaintiff brought a composite suit based on infringement of trade mark, copyright, passing off and rendition of accounts seeking to restrain the defendants from infringing its trade mark and copyright, there may be an overlapping between the two remedies but there is no doubt about jurisdiction of the Court in relation to infringement of copyright. Vide order dated 13.09.2002, the Hon'ble Court was pleased to hold that :
"Therefore, this Court is of the considered view that in view of averments in the plaint in regard to the infringement of its copyrights, Section 62 (2) Suit No.314/08/01 34 of 47 of the Copyright Act, 1957 comes into play. The plaintiff being a firm functioning at Delhi, the suit filed by it in Delhi Courts is maintainable and is not liable to be rejected under Order 7 Rule 11 of the CPC as prayed. It may be added that the plea regarding want of territorial jurisdiction is not covered by Order 7 Rule 11 of CPC. Even if it is held that this Court has not territorial jurisdiction, the plaint cannot be rejected. At the most it can be returned for presentation to the proper Court."
24. Hence, as per order dated 13.09.2002, the Hon'ble Court was pleased to hold that this Court has the territorial jurisdiction in view of Section 62(2) of the Copyright Act, 1957 and the aforesaid order dated 13.09.2002 of the Hon'ble Court is in consonance with the decision in Dhodha House & Patel Field Marshal Industries vs. S. K. Maingi & P. M. Diesel Ltd., 2006 (32) PTC 1 (SC) as per which this Court has the territorial jurisdiction in respect of infringement of copyright.
25. 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 Suit No.314/08/01 35 of 47 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 para 35 of the affidavit Ex.PA, PW1 has stated that the defendants changed their trade name or trading style from Raj Chemicals to Padam Trading Company and they also changed their trade mark label and the defendants changed the essential feature of their label SWAMI to SAVAMI. In para 36 of the affidavit Ex.PA, PW1 has stated that the defendants SAVAMI trade mark label which is the defendants third label was also deceptively similar to the plaintiff's SWAMI trade mark label. 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. In the crossexamination, PW 1 was put a specific question to the effect that whether the plaintiff has filed any document on record to show that Suit No.314/08/01 36 of 47 defendants are selling their products in Delhi to which PW1 replied that the Hon'ble Court has already decided the territorial jurisdiction, hence, there is no need to file any such document. Thereafter, 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.
26. 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.
27. In order to bring the suit within the territorial jurisdiction of this Court, in para 29 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 Suit No.314/08/01 37 of 47 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, 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 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.
Suit No.314/08/01 38 of 47
28. 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 jurisdiction only to adjudicate the dispute between the parties regarding infringement of copyright, as claimed by the plaintiff.
29. 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 Suit No.314/08/01 39 of 47 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. 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, Suit No.314/08/01 40 of 47 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.
30. 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 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, Suit No.314/08/01 41 of 47 there is no infringement of the artistic copy right in the work."
31. 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.
32. 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 : Suit No.314/08/01 42 of 47
(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);
33. Section 51 of the Copyright Act, 1957 envisages when copyright 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.
Suit No.314/08/01 43 of 47
34. Section 52 of the Copyright Act, 1957 enumerates the act, which shall not constitute an infringement of copyright.
35. 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 another picture finds a place in the reproduction."
36. 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 Suit No.314/08/01 44 of 47 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 A 20545/78. This issue stands answered accordingly. 37. 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 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 Suit No.314/08/01 45 of 47 plaintiff shall not be entitled to decree of damages and rendition of accounts, as prayed. This issue stands answered accordingly.
38. 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. 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 Suit No.314/08/01 46 of 47 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.314/08/01 47 of 47