Calcutta High Court
Rajat Agarwal & Ors vs Spartan Online Private Limited & Ors on 25 April, 2017
Author: Soumen Sen
Bench: Soumen Sen
IN THE HIGH COURT AT CALCUTTA
ORDINARY ORIGINAL CIVIL JURISDICTION
ORIGINAL SIDE
BEFORE:
THE HON'BLE JUSTICE SOUMEN SEN
G.A.No.1208 of 2017
C.S. No.35 of 2017
RAJAT AGARWAL & ORS.
VS.
SPARTAN ONLINE PRIVATE LIMITED & ORS.
For the Petitioners : Mr. Pratap Chatterjee, Sr. Adv.,
Mr. Ranjan Bachawat, Sr. Adv.,
Mr. P. Sinha, Adv.,
Mr. Debnath Ghosh, Adv.,
Mr. S. Sengupta, Adv.,
Mrs. Arunima Lala Sengupta, Adv.,
Mr. Ayan Dey, Adv.
For the Respondent Nos.1, 2 and 3 : Mr. S.K. Kapur, Sr. Adv.,
Mr. M. K. Singh, Adv.,
Mr. Suman Kr. Mukherjee, Adv.
For the Respondent No.7 : Mr. Tilak Bose, Sr. Adv.,
Mr. Anindya Basu, Adv.,
Mr. Supriya Ranjan Saha, Adv.
Heard On : 27.02.2017, 07.03.2017, 20.03.2017,
07.04.2017.
Judgment On : 25th April, 2017
Soumen Sen, J. : - This is an application filed by the defendant No.7
for revocation of leave under Clause 12 of the Letters Patent.
The grounds for revocation are three-fold, namely:-
(a) No part of the cause of action has arisen within the jurisdiction of
this Court.
(b) Forum inconvenience.
(c) Accessibility of website within the jurisdiction in law cannot confer
jurisdiction on this Court.
It is submitted that the defendant No.7 is having its registered office at
5/19, Poddar Nagar, Kolkata - 700 068 and also has a corporate office at
504-505, Crescent Tower, Village : Oshiwara. Off: New Line Road, Andheri
(West), Mumbai - 400 053, both situated outside the jurisdiction of this
Court. The main business activities are carried out from Mumbai Corporate
Office with regard to present registered office at Poddar Nagar, Kolkata. The
defendant No.7 is planning to shift its office to some place not within the
Original Side Jurisdiction of this Court. All the directors of the company
function from its corporate office at Andheri (West), Mumbai outside the
jurisdiction of this Court. The suit against the defendant No.7 is principally
seeking to challenge removal of the plaintiff No.1 as director of the defendant
No.7. The plaintiff No.1 has already been removed by Extra Ordinary
General Meeting (EOGM) held on 25th February, 2017 at its corporate office
at Mumbai.
Mr. Rajat Agarwal made the application for registration of the domain
name "www.spartanpoker.com" with Bigrock on behalf of the defendant No.7
from his Mumbai residence. All the trademark applications filed by the
defendant No.7 since 2014 with regard to the registration of various
trademarks including "Spartan" is pending in the Mumbai Trademark
Registry. Rajat Agarwal used to operate its business from Mumbai at the
address at Chambur and looked after financial matter of the company from
its office at Andheri (West), Mumbai. The address of the plaintiff No.1 stated
in the cause title of the plaint, namely, at 137, Biplabi Rashbehari Basu
Road, Kolkata - 700 001 is irrelevant for the purpose of jurisdiction
inasmuch as there is no question of any copyright of the plaintiff No.1. The
plaintiff No.1 has since initiated trade mark objection to the trade mark
application of the defendant No.1 Company in Mumbai in October, 2016.
The plaintiff No.3 is a company registered at New Alipore, Kolkata - 700 053,
outside the jurisdiction of the Court. The plaintiff Nos.1 and 2 both reside
in New Alipore outside the jurisdiction of this Court. In view thereof, it is
contended that no dispute has arisen between the parties within the
jurisdiction of this Court and no event took place within the jurisdiction of
this Court. All activities including the registration of domain names and the
trade mark, removal of the directors have taken place in Mumbai, outside
the jurisdiction of this Court. The natural forum for adjudicating the
disputes as against the defendant No.7, therefore, is also in Mumbai. In a
desperate attempt to attract jurisdiction the plaintiffs have even alleged that
business of the defendant No.7 is carried out at 21, Hemanta Basu Sarani.
Such allegation is false and not even alleged in the cause title. The
defendant No.7 has never mentioned 21, Hemanta Basu Sarani (wrongly
mentioned as 10, Hemanata Basu Sarani) as its place of business. The
allegation that all website is accessible within the jurisdiction of this Court
cannot confer jurisdiction of this Court.
The petitioner in the alternative has prayed for deletion of the
defendant No.7 from the array of defendants.
It is a trite law that in considering an application in the nature of
demurer, the averments made in the plaint are taken to be true and correct.
Leave under Clause 12 of the Letters Patent is a discretionary relief. This
High Court being a chartered High Court assumes jurisdiction under Clause
12 of the Letters Patent to try, adjudicate and determine a suit. The Court
in an appropriate situation like forum convenience or situs of the dispute is
more inextricably connected with the other forum may revoke leave under
Clause 12 of the Letters Patent. Unlike Section 20 of the Code of Civil
Procedure, the Court under Clause 12 of the Letters Patent assumes
jurisdiction if the defendant carries on business within the jurisdiction of
this Court irrespective of the fact that whether a cause of action has arisen
within or not. The registered office of the defendant need not to be within
the jurisdiction in order to attract Clause 12 of the Letters Patent. The
person applying for revocation of leave under Clause 12 of the Letters Patent
on the ground of forum inconvenience has to establish that the other forum
is inextricably connected with the dispute and the trial in this Court would
be inconvenient, oppressive and result in hardship.
In order to decide the said issue, it is necessary to refer to some of the
Paragraphs in the plaint on the basis of which leave was granted.
The said Paragraphs are:-
"20. The parties hereto put in enormous effort, skill and labour for
establishing the business of the joint ventures, by reason, inter alia, of
the persistence, hard work and labour put in by the plaintiff No.1 the
site, spartanpoker.com, was launched on 25th March, 2015. The said
spartanpoker.com is a webpage accessible from within the jurisdiction
of this Hon'ble Court.
50. The defendants no.2 to 5 in the meantime purported to cause a
new company to be incorporated on December 9, 2016, i.e. the
defendant No.1, which is situated within the jurisdiction of this
Hon'ble Court, with the object of diverting the partnership business.
The defendant nos.2 to 5 are the shareholders and directors thereof
and own and control the said company. It appears that the said joint
venture business has been diverted to the defendant No.1 which has
started operating the same facilities under the name,
"thespartanpoker" and using the same and/or a deceptively similar
Spartan helmet logo. Use of the same is in violation of the plaintiff's
rights as also an infringement of copyright thereon.
74. The plaintiffs and the defendant Nos.2 to 6 have unequivocally
agreed that the joint venture partners would not enter into any
competitive business and/or in the same line of business as that of
the joint venture. The said clause in the agreement is an express
negative covenant and the defendants have breached the said
covenant by incorporating the defendant No. 1 and the domain name,
"thespartanpoker.com" having similar name as that of the website
platform of the joint venture business and/or the domain name which
has been permitted by the plaintiffs to be used by the said joint
venture.
88. Inasmuch as the plaintiffs are the owner of the artistic work
"Spartanpoker" and carrying on business at 137, Biplabi Rashbehari
Basu Road, Kolkata - 700 001, which is within the jurisdiction of this
Hon'ble Court, and this Hon'ble Court has the territorial jurisdiction
to try, entertain and determine the instant suit under Section 62 of
the Copyright Act, 1957. Further, the defendant No.7 has its
registered office at 21, Hemanta Basu Sarani, Centre Point, Police
Station Hare Street, Kolkata - 700 001 and is seeking to infringe the
plaintiff's trademark "Spartanpoker" and pass off its business from
the web page "www.spartanpoker.com" from the said address, this
Hon'ble Court has the territorial jurisdiction to try, entertain and
determine the instant suit. The defendant no.1 on and from
December 9, 2016 has in any event filched the entire business of the
joint venture to the prejudice of the plaintiffs, from 21, Hemanta Basu
Sarani, Centre Paints, Kolkata - 700 001, within the jurisdiction of
this Hon'ble Court.
89. Further, the web page of the defendants
"www.thespartanpoker.com", which is accessible from various places
within the jurisdiction of this Hon'ble Court, namely, Park Street,
Esplanade area, Bidhan Sarani, Old Court House Corner, Central
Avenue, Chandni Chowk and various other places and upon clicking
of the said website the link by which online poker games can be
played is accessible from the aforesaid addresses within the
jurisdiction of this Hon'ble Court and the contents can also be
downloaded there from. The said website is an interactive website
accessible at various places within the jurisdiction of this Hon'ble
Court. As such this Hon'ble Court has the territorial jurisdiction to
try, entertain and determine the instant suit. (emphasis added)
In Paragraph 88 of the plaint, however, in the second sentence the
defendant No.1 has been wrongly described as defendant No.7.
The registered office of the applicant/defendant is at Alipore outside
the original jurisdiction of this Court. The case of the plaintiff is that the
entire business of the defendant No.7 is now being carried out at the
registered office of the defendant No.1 situated within the jurisdiction of this
Court. The plaintiffs claimed to be the owner of the artistic work
"Spartanpoker" and carrying on business within the jurisdiction of this
Court. The defendant No.7 is seeking to infringe the plaintiff's trademark
"Spartanpoker" and pass off its business from the web page
"www.spartanpoker.com" from its office address at 21, Hemanta Basu
Sarani within the jurisdiction of this Hon'ble Court. The web page of the
defendants "www.thespartanpoker.com" is accessible from various places
within the jurisdiction of this Hon'ble Court, namely, Park Street, Esplanade
area, Bidhan Sarani, Old Court House Corner, Central Avenue, Chandni
Chowk and various other places and upon clicking of the said website the
link by which online poker games can be played is accessible from the
aforesaid addresses within the jurisdiction of this Hon'ble Court. In Indian
Mineral & Chemicals Co. & Ors. Vs. Deutsche Bank reported at (2004)
12 SCC 376 Paragraph 10 and Exphar SA Vs. Eupharma Laboratories
Ltd. reported at AIR 2004 SC 1682: (2004) 28 PTC 251: (2004) 3 SCC
688, the Hon'ble Supreme Court in no uncertain term has stated that the
objection to jurisdiction must proceed on the basis that the facts pleaded by
the plaintiff are to be taken as true and correct. These averments are
sufficient to invoke the jurisdiction of this Court. The truth and veracity of
the statements made in the plaint cannot be questioned at this stage.
In this regard, it may be useful to refer to the decision of our Court in
Muttra Electric Supply Company Vs. Gopal Saran Kulasresthi reported
at 59 CWN 419 in which the Hon'ble Justice P.B. Mukharji (later on His
Lordship became the Chief Justice of this Court) in his Lordship's inimitable
style discussed the scope of Clause 12 of the Letters Patent in the following
words:-
"The basic character of the jurisdiction of this Court under clause
12 of the Letters Patent requires a more thorough investigation than it
has received so far. Under this clause there is first a grant of power to
this Court to receive, try and determine suits of every description. Then
there is a broad classification of such suits into two divisions. The first
classification is concerned with suits for land and immovable property
and the second classification is with regard to other suits. Regarding
the first class of suits relating to land and immovable property the
limitation of jurisdiction of this Court is that such land or immovable
property must be situated within its jurisdiction. Regarding the second
class of suits other than those for land and immovable property the first
limitation is that the cause of action must arise wholly within its
jurisdiction. Then this clause deals with those cases where part of the
land or part of the cause of action is outside the jurisdiction of this
Court. It is here that the leave of this Court has first to be obtained
before the suit can be instituted in this Court, with the one exception
where the defendant at the time of the suit dwells or carries on
business or personally works for gain within the jurisdiction of the
Court.
A close scrutiny of this clause, therefore, reveals that there are
certain total and absolute jurisdictions of this Court. They are where
the whole of the land or immovable property is situated within its
jurisdiction when the suit is for such land or immovable property. That
is also the case where the whole of the cause of action arises within the
jurisdiction of the Court in suits other than suits for land and immovable
property. Also that is the case in such cases where the defendant at
the time of the institution of the suit dwells or caries on business or
personally works for gain within the jurisdiction of this Court
irrespective of the fact where the cause of action arises. These three
are the categories of total and absolute jurisdiction of the Court under
the grant of power in clause 12 of the Letters Patent. No question of the
litigant having to take the leave of the Court arises in these three cases.
So long as the litigant satisfies the test laid down in these three cases
his right to institute the suit in this Court is absolute and unfettered.
The court can neither assume nor renounce such jurisdiction.
But then there is another class of jurisdiction which this Court
can avail under clause 12 of the Letters Patent where the reality or the
cause of action is not wholly but only partly within its jurisdiction. It is
an inchoate jurisdiction which comes into action upon the Court granting
the leave to institute the suit. It is the nascent jurisdiction which lies
dormant in this Court and can only be put into life and operation by an
act of the Court in granting leave to institute the suit. No act of the
Court is necessary to assume jurisdiction in those three cases, which I
have just described where the jurisdiction is total and absolute. There
the Court in its inception is invested with jurisdiction. But here the
Court has to acquire it. Here the jurisdiction does not depend only on
the fact of the Court but also on the act of the Court." (emphasis added)
In a fairly recent decision in Chainrup Sampatram v. Punjab &
Sind Bank reported at 2009 (1) CHN 346 at Paragraph 24, the Court
summarized the principle on the basis of which the Court assumes
jurisdiction under Clause 12 of the Letters Patent which reads:-
"24. There are three limbs to Clause 12 of the Letters Patent: the first
limb covers suits for land or other immovable property, which is
not germane for the present purpose; the second limb speaks of
the place of accrual of the cause of action in the suit, requiring no
previous leave if the cause of action arises wholly within
jurisdiction but requiring previous leave if only a part - however
infinitesimal or significant - of the cause of action arises within
jurisdiction; and, the third is the situs of the defendant at the time
of commencement of the suit. A suit for land (or other immovable
property) stands on a different pedestal and it is unnecessary to
go into that aspect of Clause 12 here. But in a suit which is not a
suit for land (or other immovable property) the plaintiff has a
choice of invoking the jurisdiction of this Court on either of the two
remaining limbs of Clause 12. If there is a solitary defendant in a
suit which is not a suit for land (or other immovable property), the
plaintiff may unquestionably institute it on the Original Side of
this Court if the entirety of the cause of action arises within the
original jurisdiction of the Court and irrespective of where the
defendant may dwell or carry on business or personally work for
gain. If there is a solitary defendant in a suit which is not a suit
for land (or other immovable property), the plaintiff may institute
it on the original side of this Court if a part of the cause of action
arises within the original jurisdiction of this Court irrespective of
where the defendant may dwell or carry on business or
personally work for gain, subject, however, to obtaining prior
leave under Clause 12 to institute the suit. If there is a solitary
defendant in a suit which is not a suit for land (or other
immovable property), the plaintiff may institute it on the original
side of this Court if the defendant, at the time of the
commencement of the suit, dwells or carries on business or
personally works for gain within the original jurisdiction of this
Court, irrespective of where the cause of action may be arisen.
The second and third limbs of Clause 12 that cover suits other
than suits for land (or other immovable property) are, in a sense,
mutually exclusive; in that the plaintiff has the choice of either
founding territorial jurisdiction on situs of cause of action or on
location of the defendant at the time of commencement of the suit.
In a suit other than a suit for land (or other immovable property)
where the plaintiff sues more than one defendant, either of the
last two limbs of Clause 12 of the Letters Patent has to be
satisfied in respect of each defendant in the suit for the action to
be launched on the Original Side of this Court." (emphasis added)
The averments noted above along with other averments in the plaint
goes to show that the plaint discloses cause of action against the defendant
No.7.
Turning on to the question of balance of convenience and
inconvenience, it is significant to mention that the defendant No.7 has filed
a suit against the plaintiff No.1 and plaintiff No.3 in Alipore Court during the
pendency of the interlocutory application being G.A. No.687 of 2017 filed by
the plaintiffs which goes to show that the defendant No.7 would not be
inconvenienced in the event trial of the suit takes place in and around
Kolkata. Moreover, it is significant to mention that State of Maharashtra
does not permit poker gaming and it was for that reason that the poker
gaming business was launched at Kolkata by the defendant No.7 from a
place provided by the plaintiff which is only few kilometres from High Court
within the municipal limits of Kolkata Municipal Corporation but beyond the
territorial jurisdiction of the Original Side, High Court, Calcutta. In fact, the
defendant No.7 was incorporated on 20th March, 2014 but commenced its
business only on 25th March, 2015 upon launching of the site
"spartanpoker.com" from its registered office at Alipore provided by the
plaintiff.
The learned Counsel has referred to the decisions of the Delhi High
Court in World Wrestling Entertainment Inc. Vs. Reshma Collection &
Ors. reported at 2014 (58) PTC 52 (Del) for the proposition that access to
website at a place would not confer the jurisdiction of the Court where such
website is accessed and Indian Performing Rights Society Limited Vs.
Sanjay Dalia & Anr. reported at (2015) 10 SCC 161 to contend that since
the plaintiffs do not actually and voluntarily reside or carry on business
within the jurisdiction of this Court an action for infringement of trade mark
or of copyright would not be maintainable in this Court. The applicant
perhaps would contend that since the plaintiff No.1 is also having a place of
business at Mumbai and the defendant No.7 is also having its corporate
office, proceeding at Kolkata would be considered to be a 'far flung' place
deliberately chosen to harass the defendant No.7.
In World Wrestling Entertainment (supra) the learned Single Judge
was considering the territorial jurisdiction of the Court in relation to Section
134(2) of the Trade Marks Act, 1999 and Sections 62(2), 65A, 65B of the
Copyright Act, 1957. The suit was filed for permanent injunction restraining
Infringement of Copyright, Infringement of Trademarks, Passing Off,
Dilution, Rendition of Accounts, Damages and Delivery up, etc., by World
Wrestling Entertainment Inc. The defendants were located in Mumbai and
were not claimed to be carrying on business within the jurisdiction of this
Court. The jurisdiction of the Court at Mumbai was involved by relying
upon Section 134(2) of the Trade Marks Act, 1999 and Section 62(2) of the
Copyright Act, 1957.
The Court after taking into consideration the aforesaid provisions and
some of the judgments on this point objectively construed Section 134(2) of
the Trade Marks Act, 1999 which uses the expression "carries on business"
and observed that the criteria required to be applied is that an essential part
of the plaintiff's business coupled with an element of control exercised by
the plaintiff, must exist in such place but the plaintiff claims to be carrying
on business either on its own or through an exclusive agent. The said
criteria would be equally applicable to a party that concluded transactions
with its customers over the medium of internet as opposed to a physical
retail space. Internet is another medium which provides audio-visual
interactive facility for doing business. Merely because a person has
embarked upon an e-commerce business model, the tests which apply for
determination of issues, such as - when and where the contract is made, or
whether the vendor carries on business at the place where the merchandise
may be sold, or service may be offered, would not change and would be the
same as apply to communications over telephone and fax. It was further
observed that if the plaintiff's submissions were to be accepted, it would
mean that the plaintiff could file a suit at any place which provides internet
access to the plaintiff's website, irrespective of the defendant's location, only
on account of the plaintiff's website being accessible in that State. The
insertion of Section 134(2) was with a view to enable the plaintiff to institute
a suit where it has actual and substantial business interest so that an
additional forum convenient to the plaintiff is available. The decision of the
Delhi Court in Banyan Tree Holding (P) Ltd. Vs. A. Murali Krishna
Reddy reported at 2010 (42) PTC 361 (Del) was considered and applied.
The said decision was founded upon the premise that a part of cause of
action arises at the place where the defendant sells its offending
merchandise/services.
In Banyan Tree Holding (P) Limited (supra), where the question of
jurisdiction for a passing off suit, in which neither the plaintiff nor the
defendant is located within the territorial jurisdiction of the court was
considered. The plaintiff is at Singapore and the defendants in Hyderabad,
and the suit is an action for passing off in which neither the plaintiff nor the
defendant voluntarily resides or carries on business within the local limits of
Delhi.
On a reference of this question by single Judge and after reviewing the
decisions in other common law jurisdictions (Canada, UK, Australia and
India), the Division Bench of the High Court held as follows:
1. For the purpose of a passing off action, or an infringement
action where the plaintiff is not carrying on business within
the jurisdiction of a court, and in the absence of a long-arm
Statute, in order to satisfy the Forum Court that it has
jurisdiction to entertain the suit, the plaintiff would have to
show that the defendant "purposefully availed" itself of the
Jurisdiction of the Forum Court. For this it would have to be
prima facie shown that the nature of the activity indulged in
by the Defendant by the use of the website was with an
intention to conclude a commercial transaction with the
website user and that the specific targeting of the forum state
by the defendant resulted in an injury or harm to the plaintiff
within the forum state.
2. For the purposes of Section 20(c) CPC, in order to show that
some part of the cause of action has arisen in the forum state
by the use of the internet by the defendant the plaintiff will
have to show prima facie that the said website, whether
euphemistically termed as "passive plus" or "interactive", was
specifically targeted at viewers in the forum state for
commercial transactions. The plaintiff would have to plead
this and produce material to prima facie show that some
commercial transaction using the website was entered into by
the defendant with a user of its website within the forum state
resulting in any injury or harm to the Plaintiff within the forum
state.
3. The commercial transaction entered into by the defendant with
an internet user located within the jurisdiction of the Forum
Court cannot possibly be a solitary trap transaction since that
would not be an instance of "purposeful" availment by the
defendant. It would have to be a real commercial transaction
that the defendant has with someone not set up by the
plaintiff itself. If the only evidence is in the form of a series of
trap transactions, they have to be shown as having been
obtained using fair means. The plaintiff seeking to establish
jurisdiction on the basis of such trap transactions would have
to aver unambiguously in the plaint, and also place along with
it supporting material, to prima facie show that the trap
transactions relied upon satisfy the above test.
In the instant case, apart from the fact that the plaintiff No.1 carries
on business within the jurisdiction of this Court, the averments made in the
plaint clearly show that the defendant is "purposefully availed" itself in the
forum court and the nature of the activity indulged in by the defendant No.1
and defendant No.7 by use of the website was with an intention to conclude
a commercial transaction with the website user inasmuch as the plaintiffs
has disclosed the places where such transactions are likely to be concluded.
Moreover, the poker gaming is allowed in the State of West Bengal unlike
Maharashtra and it was for that purpose "Spartanpoker.com" was launched
on 25th March, 2015 from Calcutta. The petitioners provided office
accommodation at Poddar Nagar to the defendant No.7 and since then the
defendant No.7 was functioning from that place. The objection to the
jurisdiction must proceed on the basis that the facts pleaded by the plaintiff
are true and correct and applying that test it cannot be said that no part of
the cause of action has arisen within the jurisdiction of this Court.
The Trade Marks Act, 1999 in Section 134 provides that a suit in respect
of the following matters shall be filed only before a court, not inferior to a
District Court:-
(a) For the infringement of a registered trade mark; or
(b) Relating to any right in a registered trade mark; or
(c) For passing of arising out of the use by the defendant of any trade
mark which is identical with or deceptively similar to the plaintiff's
trade mark, whether registered or unregistered.
Apart from an action for infringement of a registered trade mark, the
law enables a suit for passing off also to be filed, arising out of the use of
any trade mark which is identical with or deceptively similar to the plaintiff's
trade mark, whether registered or unregistered. A suit for passing off
arising out of the use by the defendant of any trademark identical or similar
to the plaintiffs' mark (whether registered or unregistered) can be instituted
only in terms of the provision of Section 20 of the Civil Procedure Code
which in the instant case would be subject to Clause 12 of the Letters Patent
as by reason of Section 120 of the CPC Section 20 of CPC would not be
applicable to a chartered High Court.
In Indian Performing Rights Society (supra), the Hon'ble Supreme
Court applied the purposive construction rule in interpreting Section 62 of
the Copyright Act, 1957 and Section 134 of the Trade Marks Act, 1999. The
relevant observation can be found in Paragraphs 17, 18, 19, 20, 21, 22, 23,
25, 26 and 52 of the said report which reads:-
"17. Accrual of cause of action is a sine qua non for a suit
to be filed. Cause of action is a bundle of facts which is required
to be proved to grant relief to the plaintiff. Cause of action not
only refers to the infringement but also the material facts on
which right is founded. Section 20 of the CPC recognises the
territorial jurisdiction of the courts inter alia where the cause of
action wholly or in part arises. It has to be decided in each case
whether cause of action wholly or in part arises at a particular
place. As held by this Court in Rajasthan High Court Advocates
Association v. Union of India & Ors. [AIR 2001 SC 416]. Thus, a
plaintiff can also file a suit where the cause of action wholly or in
part arises.
18. On a due and anxious consideration of the provisions
contained in Section 20 CPC, Section 62 of the Copyright Act and
Section 134 of the Trade Marks Act, and the object with which the
latter provisions have been enacted, it is clear that if a cause of
action has arisen wholly or in part, where the plaintiff is residing
or having its principal office / carries on business or personally
works for gain, the suit can be filed at such place(s). The
plaintiff(s) can also institute a suit at a place where he is residing,
carrying on business or personally works for gain dehors the fact
that the cause of action has not arisen at a place where he / they
are residing or any one of them is residing, carries on business or
personally works for gain. However, this right to institute suit at
such a place has to be read subject to certain restrictions, such as
in case the plaintiff is residing or carrying on business at a
particular place / having its head office and at such place cause
of action has also arisen wholly or in part, the plaintiff cannot
ignore such a place under the guise that he is carrying on
business at other far-flung places also. The very intendment of
the insertion of provision in the Copyright Act and the Trade
Marks Act is the convenience of the plaintiff. The rule of
convenience of the parties has been given a statutory expression
in Section 20 CPC as well. The interpretation of provisions has to
be such which prevents the mischief of causing inconvenience to
the parties.
19. The intendment of the aforesaid provisions inserted
in the Copyright Act and the Trade Marks Act is to provide a
forum to the plaintiff where he is residing, carrying on business or
personally works for gain. The object is to ensure that the
plaintiff is not deterred from instituting infringement proceedings
"because the court in which proceedings are to be instituted is at
a considerable distance from the place of their ordinary
residence". The impediment created to the plaintiff by Section 20
CPC of going to a place where it was not having ordinary
residence or principal place of business was sought to be removed
by virtue of the aforesaid provisions of the Copyright Act and the
Trade Marks Act. Where the corporation is having ordinary
residence / place of business and cause of action has also arisen
at that place, it has to institute a suit at the said place and not at
other places. The provisions of Section 62 of the Copyright Act
and Section 134 of the Trade Marks Act never intended to operate
in the field where the plaintiff is having its principal place of
business at a particular place and the cause of action has also
arisen at that place so as to enable it to file a suit at a distant
place where its subordinate office situated though at such place
no cause of action has arisen. Such interpretation would cause
great harm and would be juxtaposed to the very legislative
intendment of the provisions so enacted.
20. In our opinion, in a case where cause of action has arisen
at a place where the plaintiff is residing or where there are more
than one such persons, any of them actually or voluntarily
resides or carries on business or personally works for gain would
oust the jurisdiction of other place where the cause of action has
not arisen though at such a place, by virtue of having subordinate
office, the plaintiff instituting a suit or other proceedings might be
carrying on business or personally works for gain.
21. At the same time, the provisions of Section 62 of the
Copyright Act and Section 134 of the Trade Marks Act have
removed the embargo of suing at place of accrual of cause of
action wholly or in part, with regard to a place where the
plaintiff or any of them ordinarily resides, carries on business
or personally works for gain. We agree to the aforesaid extent
that the impediment imposed under Section 20 CPC to a
plaintiff to institute a suit in a court where the defendant
resides or carries on business or where the cause of action
wholly or in part arises, has been removed. But the right is
subject to the rider in case the plaintiff resides or has its
principal place of business / carries on business or personally
works for gain at a place where cause of action has also
arisen, suit should be filed at the at place not at other places
where the plaintiff is having branch offices, etc.
22. There is no doubt about it that the words used in
Section 62 of the Copyright Act and Section 134 of the Trade
Marks Act, "notwithstanding anything contained in CPC or any
other law for the time being in force", emphasise that the
requirement of Section 20 CPC would not have to be complied with
by the plaintiff if he resides or carries on business in the local
limits of the court where he has filed the suit but, in our view, at
the same time, as the provision providing for an additional forum,
cannot be interpreted in the manner that it has authorised the
plaintiff to institute a suit at a different place other than the place
where he is ordinarily residing or having principal office and
incidentally where the cause of action wholly or in part has also
arisen. The impugned judgments, in our considered view, do not
take away the additional forum and fundamental basis of
conferring the right and advantage to the authors of the Copyright
Act and the Trade Marks Act provided under the aforesaid
provisions.
23. The provisions of Section 62(2) of the Copyright Act
and Section 134 of the Trade Marks Act are in pari materia.
Section 134(2) of the Trade Marks Act is applicable to clauses (a)
and (b) of Section 134(1) of the Trade Marks Act. Thus, a
procedure to institute suit with respect to Section 134(1)(c) in
respect of "passing off" continues to be governed by Section 20
CPC.
...
25. Considering the first aspect of the aforesaid principle, the common law which was existing before the provisions of law were passed was Section 20 CPC. It did not provide for the plaintiff to institute a suit except in accordance with the provisions contained in Section 20. The defect in existing law was inconvenience / deterrence caused to the authors suffering from financial constraints on account of having to vindicate their intellectual property rights at a place far away from their residence or the place of their business. The said mischief or defect in the existing law which did not provide for the plaintiff to sue at a place where he ordinarily resides or carries on business or personally works for gain, was sought to be removed. Hence, the remedy was provided by incorporating the provisions of Section 62 of the Copyright Act. The provisions enabled the plaintiff or any of them to file a suit at the aforesaid places. But if they were residing or carrying on business or personally worked for gain already at such place, where cause of action has arisen, wholly or in part, the said provisions have not provided additional remedy to them to file a suit at a different place. The said provisions never intended to operate in that field. The operation of the provisions was limited and their objective was clearly to enable the plaintiff to file a suit at the place where he is ordinarily residing or carrying on business, etc. as enumerated above, not to go away from such places. The legislature has never intended that the plaintiff should not institute the suit where he ordinarily resides or at its or at its head office or registered office or where he otherwise carries on business or personally works for gain where the cause of action too has arisen and should drag the defendant to a subordinate office or other place of business which is at a far distant place under the guise of the fact that the plaintiff corporation is carrying on business through branch or otherwise at such other place also. If such an interpretation is permitted, as rightly submitted on behalf of the respondents, the abuse of the provision will take place. Corporations and big conglomerates, etc. might be having several subordinate offices throughout the country. Interpretation otherwise would permit them to institute infringement proceedings at a far-flung place and at an unconnected place as compared to a place where the plaintiff is carrying on their business, and at such place, cause of action too has arisen. In the instant case, the principal place of business is, admittedly, in Mumbai and the cause of action has also arisen in Mumbai. Thus, the provisions of Section 62 of the Copyright Act and Section 134 of the Trade Marks Act cannot be interpreted in a manner so as to confer jurisdiction on the Delhi Court in the aforesaid circumstances to entertain such suits. The Delhi Court would have no territorial jurisdiction to entertain it.
26. The avoidance of counter-mischief to the defendant is also necessary while giving the remedy to the plaintiff under the provisions in question. It was never visualised by the lawmakers that both the parties would be made to travel to a distant place in spite of the fact that the plaintiff has a remedy of suing at the place where the cause of action has arisen where he is having head office / carrying on business, etc. The provisions of the Copyright Act and the Trade Marks Act provide for the authors / trade mark holders to sue at provisions of law never intended to be oppressive to the defendant. The Parliamentary debate quoted above has to be understood in the manner that suit can be filed where the plaintiff ordinarily resides or carries on business or personally works for gain. Discussion was to provide remedy to the plaintiff at convenient place; he is not to travel away. Debate was not to enable the plaintiff at convenient place; he is not to travel away. Debate was not to enable the plaintiff to take the defendant to farther place, leaving behind his place of residence / business, etc. The right to remedy given is not unbridled and is subject to the prevention of abuse of the aforesaid provisions, as discussed above. Parliament never intended that the subject provisions be abused by the plaintiff by instituting suit in wholly connected jurisdiction. In the instant case, as the principal place of business is at Mumbai the cause of action is also at Mumbai but still the place for suing has been chosen at Delhi. There may be a case where the plaintiff is carrying on the business at Mumbai and cause of action has arisen in Mumbai. The plaintiff is having branch offices at Kanyakumari and also at Port Blair, if interpretation suggested by the appellants is acceptable, mischief may be caused by such plaintiff to drag a defendant to Port Blair or Kanyakumari. The provisions cannot be interpreted in the said manner devoid of the object of the Act."
52. In our opinion, the provisions of section 62 of the Copyright Act and section 134 of the Trade Marks Act have to be interpreted in the purposive manner. No doubt about it that a suit can be filed by the plaintiff at a place where he is residing or carrying on business or personally works for gain. He need not travel to file a suit to a place where defendant is residing or cause of action wholly or in part arises. However, if the plaintiff is residing or carrying on business etc. at a place where cause of action, wholly or in part, has also arisen, he has to file a suit at that place, as discussed above." (emphasis added) The tests laid down are essential considerations in a matter where the Court finds that the discretion exercised by the Court earlier in granting leave under Clause 12 of the Letters Patent is required to be revoked on the ground of forum inconvenience or on a satisfaction being recorded that the dispute is inextricably connected with the other forum. This, in my view, is clear from the observations made in Paragraphs 18 and 52 of the report.
In the instant case, as observed earlier, the defendant No.7 would not be inconvenienced in the event, the suit is tried in this Court inasmuch as there are categorical averments made in the plaint that the website is an interactive website accessible at various places within the jurisdiction of this Court and upon clicking of the said website the link by which online poker games can be played is accessible from the addresses mentioned in Paragraphs 88 and 89 of the Plaint.
Under such circumstances, the application for revocation of leave under Clause 12 of the Letters Patent is dismissed. However, there shall be no order as to costs.
Urgent Photostat certified copy of this judgment, if applied for, be given to the parties on usual undertaking.
(Soumen Sen, J.)