2014 (12) TMI 1327 - HC - Indian Laws

Principles of forum conveniens - grant of leave or revocation to sue under Clause-12 of the Letters Patent - Whether the situs of the Trade Mark Registry in Chennai and the name being on its register would itself give rise to cause of action to institute a suit in the Madras High Court? - Whether the principles of forum conveniens or analogous principles apply to consideration of an application for leave to sue under Clause 12 of the Letters Patent in case part of cause of action arises at Chennai? Held that - Mere registration of the trademark at Chennai would not create the complete cause of action at Chennai. The registration of the mark is a fact but cause of action would consist of a bundle of facts. Thus more than one fact would have to be taken into account to determine the location of a particular trademark which connects the trademark to the place - The weight given to each factor should be related to the purpose for which the situs was being determined and thus mere registration of a trademark at a particular place would not be finally determinative of the situs of the trademark. The situs would depend upon the facts of each case and the factor that connect the trademark to that place. Thus the fact that the situs of the registration of trademark is with the Trademark Registry at Chennai by itself would not be sufficient to give rise to cause of action to institute the suit in the Madras High Court though it may be a factor to be taken into account among the bundle of facts for purposes of determining the situs of the cause of action. There is little doubt that the principles of forum conveniens though not applicable to civil proceedings have a role to play insofar as the consideration of grant of leave or revocation thereof under Clause 12 of the Letters Patent is concerned. This is irrespective of the fact as to what expression is used - in considering an application for grant of leave or revocation thereof the appropriateness or suitability of the forum would be material and to that extent principle akin to forum conveniens would apply. Appeal disposed off.

Issues Involved:
1. Whether the situs of the Trade Mark Registry in Chennai and the name being on its register would itself give rise to cause of action to institute a suit in the Madras High Court?
2. Whether the principles of forum conveniens or analogous principles apply to consideration of an application for leave to sue under Clause 12 of the Letters Patent in case part of cause of action arises at Chennai?

Issue-wise Detailed Analysis:

First Issue:
- Cause of Action and Situs of Trade Mark Registry:
- The judgment discusses whether the mere registration of a trademark at Chennai would be sufficient to confer jurisdiction to the Madras High Court. It is emphasized that a cause of action consists of a "bundle of facts" and not a single fact.
- The court refers to previous judgments (S.B.S. Jayam and Co. v. Gopi Chemical Industries Limited) which held that the registration of a trademark at Chennai could give rise to a cause of action. However, this view is challenged by the respondents, arguing that the registration alone should not determine jurisdiction.
- The court agrees with the respondents, stating that the mere registration of the trademark at Chennai would not create a complete cause of action. The court emphasizes the need to consider multiple factors to determine the location of a trademark.
- The court concludes that the registration of a trademark at Chennai may be a factor but not solely determinative for jurisdiction. The legal view that mere registration confers jurisdiction is overruled.

Second Issue:
- Principles of Forum Conveniens:
- The judgment discusses the applicability of the principles of forum conveniens in the context of granting leave to sue under Clause 12 of the Letters Patent.
- It is acknowledged that while forum conveniens is primarily applicable to international law, its principles can be relevant in determining the appropriateness or suitability of a forum in domestic cases.
- The court refers to several judgments, including Horlicks Ltd. v. Heinz India (Pvt.) Limited, which state that the principles of forum conveniens do not apply to civil proceedings governed by the Code of Civil Procedure but are relevant for discretionary remedies.
- The court emphasizes that the balance of convenience and appropriateness of the forum are key considerations in granting or revoking leave under Clause 12 of the Letters Patent.
- The court concludes that the principles of forum conveniens, though not directly applicable to civil proceedings, play a role in determining the appropriateness of the forum for granting leave to sue.

Conclusion:
- The court answers the first question by stating that the registration of a trademark at Chennai alone does not give rise to a cause of action to institute a suit in the Madras High Court. It may be a factor but not solely determinative.
- For the second question, the court concludes that the principles of forum conveniens or analogous principles apply to the consideration of an application for leave to sue under Clause 12 of the Letters Patent, focusing on the appropriateness and suitability of the forum.

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