2014 (1) TMI 1657 - HC - Companies Law

Infringement of trademarks - trade mark Ultra Tuck - territorial jurisdiction of this Court - accrual of cause of action - Held that - In view thereof, the contentions raised by the Defendants that the cause of action can be said to have occurred only where the actual infraction of the Plaintiffs right has taken place or that Clause XIV of the Letters Patent mandates that at least one cause of action should have arisen within the jurisdiction of this Court or Clause XIV specifically contemplates the accrual of cause of action within the jurisdiction of this Court or recourse to Clause XIV of the Letters Patent cannot be taken to in a case where the entire cause of action arises outside the jurisdiction of the concerned Court cannot be accepted. The case law relied upon by the Defendants in support of the above contentions is also not relevant in the facts and circumstances of the present case. There is no doubt that this Court has jurisdiction to grant relief of infringement and is therefore also empowered to grant leave under Clause XIV of the Letters Patent to the Plaintiff. The contention of the Defendants that their mark consisting of the words Ultra Tuck is registered is, as submitted by the Plaintiffs, irrelevant inasmuch as it is a settled position of law that the suit for infringement is maintainable even in a case where the defendants mark is registered. In the present case to avoid multiplicity of proceedings, it would be appropriate to grant leave under Clause XIV of the Letters Patent and allow the Plaintiffs to combine the cause of action for passing off along with the cause of action for infringement.

Summary

Issues Involved:
1. Jurisdiction of the Court.
2. Grant of leave under Clause XIV of the Letters Patent.
3. Applicability of Section 134(2) of the Trade Marks Act, 1999.
4. Relevance of Section 20 of the Civil Procedure Code (CPC).
5. Impact of Defendants' registered trademark on the Plaintiffs' infringement claim.
6. Avoidance of multiplicity of proceedings.

Issue-wise Detailed Analysis:

1. Jurisdiction of the Court:
The Plaintiffs argued that the Bombay High Court has jurisdiction to grant reliefs for trademark infringement because they carry on business within its jurisdiction, with Plaintiff No.1 having its Registered Office and Plaintiff No.2 having its Corporate Office within the jurisdiction. The Defendants, however, contended that no cause of action arose within the jurisdiction of this Court, as their business operations and the alleged infringement occurred in Haryana, Punjab, and Himachal Pradesh. The Court concluded that jurisdiction was established under Section 134(2) of the Trade Marks Act, 1999, which allows the registered proprietor to institute a suit where they reside or carry on business.

2. Grant of Leave under Clause XIV of the Letters Patent:
The Plaintiffs sought leave under Clause XIV of the Letters Patent to combine the causes of action for passing off with trademark infringement to avoid multiplicity of proceedings. The Defendants opposed this, arguing that Clause XIV mandates that at least one cause of action should arise within the jurisdiction of this Court. The Court held that Clause XIV does not require that one of the causes of action should have arisen within the jurisdiction of this Court. The key words in Clause XIV are "the said High Court shall have original jurisdiction in respect of one of such causes of action," and the clause merely requires the High Court to have jurisdiction.

3. Applicability of Section 134(2) of the Trade Marks Act, 1999:
The Defendants argued that Section 134(2) of the Act renders the "accrual of cause of action" within the jurisdiction of such Court irrelevant, allowing the registered proprietor to maintain an action for infringement at a place where they reside or carry on business. However, they contended that Clause XIV of the Letters Patent specifically contemplates the accrual of the cause of action within the jurisdiction of the Court. The Court disagreed, stating that Section 134(2) provides an additional ground for jurisdiction over and above the normal grounds laid down in Section 20 of the CPC.

4. Relevance of Section 20 of the Civil Procedure Code (CPC):
The Defendants argued that the Court should give deference to the scheme and/or principle contained in Section 20 of the CPC, which mandates that where a corporation has a subordinate office and the cause of action arises at such place, only the Court at such place will have jurisdiction. The Court found this argument irrelevant, noting that Section 134(2) of the Trade Marks Act provides an overriding effect, allowing the suit to be filed where the registered proprietor resides or carries on business.

5. Impact of Defendants' Registered Trademark on the Plaintiffs' Infringement Claim:
The Defendants contended that since they are the registered proprietors of the mark "Ultra Tuck," no reliefs for infringement could be granted to the Plaintiffs. The Court rejected this argument, citing established legal principles that a suit for infringement is maintainable even if the Defendant's mark is registered. The Court referred to previous judgments which clarified that the registration of the Defendant's mark does not bar an infringement suit.

6. Avoidance of Multiplicity of Proceedings:
The paramount consideration for granting leave under Clause XIV is the avoidance of multiplicity of proceedings. The Court noted that granting leave would prevent the need for separate lawsuits in different jurisdictions, thereby avoiding undue hardship and inconvenience to the parties. The Court was satisfied that in the present case, to avoid multiplicity of proceedings, it was appropriate to grant leave under Clause XIV of the Letters Patent.

Conclusion:
The Court granted leave to the Plaintiffs under Clause XIV of the Letters Patent, allowing them to combine the cause of action for passing off with the cause of action for infringement. The leave petition was accordingly disposed of.