Madras High Court
Ajay Kumar Aggarwal vs Officine Lovato S.P.A on 22 August, 2005
Author: P.K. Misra
Bench: P.K. Misra
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 22/08/2005
CORAM
THE HONOURABLE MR. JUSTICE P.K. MISRA
AND
THE HONOURABLE MR. JUSTICE N. KANNADASAN
O.S.A.NO.130 OF 2005
and
C.M.P.NOs.10227, 11366 to 11368 OF 2005
1. Ajay Kumar Aggarwal
Trading as M/s.S.A. Engineers,
Old Ghas Mandi, Ambala City,
Haryana
2. Ajay Bansal
Trading as M/s.Eco Gas Equipments
3827 A/7, Kanhaiya Nagar,
Tri Nagar, Near Baba Balgh Mandir,
Delhi 110 035. .. Appellants
-Vs-
Officine Lovato S.p.A.,
Strada Comunakle Castle,
175-36100 Vicenza, Italy
Having Its Liaison Office at
No.89, Bishop Garden,
Greenways Road, Chennai 28.
Rep. by its Constituted Attorney
Mr. Ciryl Anand .. Respondents
Appeal filed under Order XXXVI Rule 11 of the O.S. Rules read with
Clause 15 of the Letters Patent against the order dated 1.4.2005 passed in
Appln.No.3352 of 2004 in Appln.No.2306 of 2004 in C.S.No.512 of 2004.
!For Appellants : Mr. Sathish Parasaran &
Mr. Madhan Babu
^For Respondent : Mr. A.A. Mohan
:J U D G M E N T
P.K. MISRA, J The present appeal is directed against the order dated 1.4.2005 passed by the learned single Judge in Appln.Nos.2306 and 3352 of 2004 arising out of C.S.No.512 of 2004.
2. The respondent filed C.S.No.512 of 2004 under Order IV Rule 1 of Madras High Court Original Side Rules and Order VII Rule 1 of C.P.C. read with Sections 27, 28, 29, 134 & 135 of the Trade Marks Act, 1999 and Sections 51, 55 & 62 of the Copyright Act, 1957, against the present appellants for the alleged infringement of the plaintiffs registered trademark and for other consequential reliefs, including permanent injunction. At that stage, the plaintiff filed Appln.No.2306 of 2004 under Clause 12 of the Letters Patent seeking leave to file the suit. Such leave was granted by order dated 23.6.2004. Thereafter, the defendants (present appellants) filed Appln. No.3352 of 2004 seeking to revoke the leave granted. In such application, the main contention of the defendants was to the effect that they are situated outside the territorial jurisdiction of this court; the goods in respect of which there is violation of trademark are not sold within the jurisdiction of this Court and the plaintiff does not reside or carry on business or personally works for gain within the jurisdiction of this Court, and, therefore, in the absence of any territorial jurisdiction, the leave should not have been granted. It is further stated that the plaintiff being a foreign company has to comply with the provisions contained in Sections 592 to 597 of the Companies Act and without complying with such provisions, the plaintiff is disabled from bringing any action in a court of law as contemplated under Section 599 of the Companies Act.
3. A counter had been filed by the plaintiff / respondent to the aforesaid application.
4. The learned single Judge after hearing the counsels for both sides, came to the conclusion that the situs of the trademark allegedly infringed being situated in the appropriate office of the Trade Marks Registry at Chennai, the cause of action can be stated to have arisen within the jurisdiction of this Court. Learned single Judge has also negatived the contention of the defendants regarding applicability of Section 599 of the Companies Act. On the basis of the aforesaid conclusion, the application for revoking the leave granted to the plaintiff/respondent to file the suit has been dismissed and the leave already granted in Appln.No.2306 of 2004 has been confirmed. The said order is challenged under the present appeal.
5. We have heard the learned counsel appearing for the appellants as well as the learned counsel appearing for the respondent / plaintiff, who has entered appearance by filing a caveat.
6. Section 134 of the Trade Marks Act, 1999 provides for the forum for institution of the suit for infringement. Such provision is to the following effect :-
134. Suit for infringement, etc., to be instituted before District Court -
(1) No suit-
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiffs trade mark, whether registered or unregistered, shall be instituted in any Court inferior to a District Court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of sub-section (1), a District Court having jurisdiction shall, notwithstanding anything contained in the Code of Civiil 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 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.
Explanation.- For the purposes of sub-section (2), person includes the registered proprietor and the registered user.
7. Section 62 of the Copyright Act, 1957 is to the following effect :-
62. Jurisdiction of court over matters arising under this Chapter (1) Every suit or other civil proceeding arising under this Chapter in respect of the infringement of copyright in any work or the infringement of any other right conferred by this Act shall be instituted in the district court having jurisdiction.
(2) For the purpose of sub-section (1), a district court having jurisdiction shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908), or any other law for the time being in force, include a district court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or other proceeding or, where there are more than one such persons, any of them actually and voluntarily resides or carries on business or personally works for gain.
8. Referring to the aforesaid provisions, the learned counsel for the appellants has submitted that in the present case, the plaintiff, which is a foreign company, has merely a Liaison Office at Chennai and it cannot be said that such plaintiff actually or voluntarily resides within the jurisdiction of this Court. Similarly it has been submitted that in view of the provisions contained in Sections 592 to 597 of the Companies Act, it cannot be said that the plaintiff voluntarily carries on any business and, since the plaintiff is not a natural person, it cannot be said that the plaintiff works for personal gain within that jurisdiction. It is further contended that since no part of the cause of action has arisen within the jurisdiction of this Court, the suit should not have been filed in this Court.
9. A mere comparison of the provisions contained in Section 62 of the Copyright Act and Section 134 of the Trade Marks Act, 1999 makes it clear that the provisions are very similar to each other. Section 134(1) of the Trade Marks Act, 1999 is similar to Section 105 of the Trade and Merchandise Marks Act, 1958, which was to the following effect :-
105. Suit for infringement, etc., to be instituted before District Court. -
No suit-
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiffs trade mark whether registered or unregistered, shall be instituted in any Court inferior to a District Court having jurisdiction to try the suit.
10. The above Act has been repealed by the Trade Marks Act, 1999 and most of the provisions have been re-enacted in the present Act. So far as Section 134(2) is concerned, there was no such corresponding provision under the Trade and Merchandise Marks Act, 1958. The object of incorporating Section 134(2) of the Trade Marks Act, 1999, is to bring such provision in line with the similar provisions contained in the Copyright Act, 1957. The provision contained in Section 134(2) of the Trade Marks Act, 1999, and Section 62(2) of the Copyright Act, 1957, contain additional provision relating to jurisdiction regarding filing of suit. These provisions supplement the ordinary provisions relating to filing of suit and do not supplant such provisions. Reading together all these provisions along with the provisions contained in the Code of Civil Procedure makes it clear that the suit can be filed in a place where the cause of action or part of cause of action has arisen or even where the defendant resides. In addition to the normal provisions contained in the Code of Civil Procedure, the provisions in Section 134(2) of the Trade Marks Act, 1999 and Section 62(2) of the Copyright Act, 1957 contemplate that the suits can also be filed where the person instituting the suit actually and voluntarily resides or carries on business or personall y works for gain.
11. In the present case, the learned single Judge has come to the conclusion that the situs of the trademark being a part of the cause of action, it can be said that the part of the cause of action arose within the jurisdiction of this Court. It has been concluded that though the trademark has been registered and reflected in the Head Office of the Trade Marks Registry at Mumbai, yet, the Trade Marks Registrys branch office being at Chennai, it can be said, keeping in view the provisions contained in Section 18 of the Trade Marks Act, 1999, that the situs of the trade mark involved in the present case is in Chennai. For the aforesaid purpose, the learned single Judge has relied upon the decision of this Court reported in 1977-1-M.L.J. 286 (S.B. S. Jayam & Co. v. Krishnamoorthi). In the said case, it has been observed :-
... A registered trade mark is a proprietary right and therefore it is property; though the head office is at Bombay, the branch office, including the one at Madras have independent territorial jurisdiction regarding the powers conferred under the Act; therefore there can be no doubt that in respect of the trade mark registered at the Madras office, the situs of the property in the mark is at Madras and therefore there can be a little doubt that the alleged infringement is not only at a place where the defendant markets his goods but also where the plaintiffs property itself is situated.
12. Apart from the aforesaid decision, which directly supports the contention of the plaintiff, the learned single Judge has also referred to the decisions reported in A.I.R. 1991 Madras 277 (Amrutanjan Limited v. Ashwin Fine Chemicals & Pharmaceuticals) and 1999 P.T.C. (19 ) 183 (Ramu Hosieries rep. by M. Murugeshan v. Ramu Hosieries, rep. by Pandela Ramu and another). From the latter two decisions, it is apparent that in the suit relating to violation of trademark, the situs of the trademark can be construed as the place where cause of action has arisen.
13. Learned counsel appearing for the appellants has sought to distinguish the aforesaid decisions on the footing that those decisions were rendered under the Trade and Merchandise Marks Act, 1958, and that the provisions contained in Section 3 of the said Act, relating to jurisdiction of the High Court, are not re-enacted under the new Act, and, therefore, those decisions are of no consequence. In support of the aforesaid submission, the learned counsel has also placed reliance upon the commentary of Law of Trade Marks & Geographical Indications by K.C. Kailasam / Ramu Vedaraman, wherein the authors have opined that the jurisdiction for filing a suit for infringement or passing off under Section 134 is not to be based on or linked with the operative jurisdiction of the head office or the branch offices.
14. We are unable to accept such submission made by the learned counsel for the appellants and, in our opinion, the ratio of the decision reported in 1977-1-M.L.J. 288 (cited supra) is still applicable notwithstanding the slight change in the provisions contained in the Trade Marks Act, 1999.
15. Learned counsel appearing for the appellants has also submitted that in view of the provisions contained in Sections 592 to 597 of the Companies Act and the prohibition contained in Section 599, the respondent is not entitled to bring any suit. The learned single Judge has repelled such contention by observing that in the present case the suit was not based on any contract and therefore such provision was inapplicable. In our opinion, the question as to whether the plaintiff was disabled from filing any suit in view of the provisions contained in Sections 592 to 597 of the Companies Act was not a relevant factor for deciding the question as to whether the leave which was already granted should be revoked or not. In our opinion, this question need not have been considered at that stage. If any such contention is raised in the written statement, it can be considered at the stage of final decision.
While considering the question of grant of leave or revocation of leave, the Court is not required to go into the question as to whether the plaintiff was disabled from filing of any suit and whether ultimately the plaintiff is likely to succeed in the suit or any defence taken or to be taken by the defendant is likely to be upheld. In such view of the matter, in our opinion, the observations made by the learned single Judge in the impugned order being unnecessary at that stage, would not stand in the way of such a question being considered ultimately if such a plea is taken in the written statement. It is made clear that no opinion has been expressed by us on this aspect and the question is left open.
16. Learned counsel appearing for the appellants by relying upon several decisions of this Court has submitted that since the defendants admittedly carry on business in Delhi and there is alleged violation of the trademark and the witnesses would have to come from Delhi for either side, it would be more convenient to try the suit in Delhi or any other place and because of this the leave should have been revoked.
17. We have carefully analysed the decisions cited by the learned counsel for the appellants, including the decision reported in 2002(1) CTC 134 (PARAMESWARI VELUCHAMY AND 2 OTHERS v. T.R. JAYARAMAN AND 7 OTHERS). The said case related to a suit for partition where except three properties all other properties situated outside the jurisdiction of this Court. The parties were residing outside the jurisdiction and the witnesses also had to come from outside. In such view of the matter, the Division Bench upheld the order of the learned single Judge where under the leave had been revoked. We do not think in the peculiar facts and circumstances of the present case the aforesaid decision can be made applicable.
18. For the aforesaid reasons, we do not find any merit in this appeal, which is accordingly dismissed, subject to the observations made. There would be no order as to costs.
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