2015 (9) TMI 1739 - HC - Indian Laws

Rejection of plaint for want of territorial jurisdiction - infringement of trademarks - principal place of business and place of suit shoulb necessarily be same? - whether the Suit for infringement and passing off filed by the plaintiff is maintainable before this Court in the light of Section 134 of the Trade Marks Act? - HELD THAT - With regard to the expression notwithstanding anything contained in the Code of Civil Procedure contained in Section 62(2) of the Copyright Act and Section 134(2) of the Trade Marks Act, it was pointed out that the same does not oust the applicability of the provisions of Section 20 of the Code of Civil Procedure and it is clear that additional remedy has been provided to the plaintiff so as to file a suit where he is residing or carrying on business etc; as the case may be, that Section 20 of the Code of Civil Procedure enables a plaintiff to file a suit where the defendant resides or where cause of action arose. It was further pointed out that Section 20(a) and Section 20(b) usually provides the venue where the defendant or any of them resides, carries on business or personally works for gain. Section 20(c) of the Code of Civil Procedure enables a plaintiff to institute a suit where the cause of action wholly or in part, arises. Further, the Explanation to Section 20 C.P.C., has been added to the effect that Corporation shall be deemed to carry on business at its sole or principal office in India or in respect of any cause of action arising at any place where it has subordinate office at such place. Thus, 'corporation' can be sued at a place having its sole or principal office and where cause of action wholly or in part, arises at a place where it has also a subordinate office at such place. The provisions of Section 62 of the Copyright Act and Section 134 of the Trade Marks Act have to be interpreted in a purposive manner and 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 and 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 at a place where cause of action, wholly or in part, has arisen, he has to file a suit at that place. The interpretation given by the learned Single Judge in the impugned judgment holding that under Section 134 of the Trade Marks Act, no suit for infringement of registered trade mark could be filed if the plaintiff does not carry on business within the jurisdiction of that Court, is held to be incorrect. The impugned order is set aside and the suit is restored to the file of this Court and the defendant is directed to file their written statement within a period of three weeks from the date of receipt of a copy of this order - Appeal allowed.

Summary

Issues:
1. Territorial jurisdiction under Section 134 of the Trade Marks Act, 1999 for maintaining a suit for infringement and passing off.

Analysis:
The appeals were against an order rejecting the plaint due to lack of territorial jurisdiction for the suit. The plaintiff, a pharmaceutical company, sought injunction against the defendant for infringing its trademark 'OLAMIN.' The defendant argued against the suit's maintainability within the jurisdiction of the Court. The Single Judge accepted the defendant's application, leading to the appeals.

The plaintiff contended that since their trademark was registered in Chennai, the suit was maintainable there. The defendant argued that without substantial cause of action within the Court's jurisdiction, the suit was not viable. The Single Judge, citing Section 134 of the Trade Marks Act, held that the plaintiff must conduct business within the Court's jurisdiction to file the suit, leading to the rejection of the plaint.

The plaintiff challenged this decision, citing precedents and interpretations of Section 134. They argued that the plaintiff's residence or business location should determine the suit's venue, not the defendant's. The defendant, however, supported the impugned order, emphasizing the Trade Marks Act's provisions over the Code of Civil Procedure.

The Court analyzed the legal issue of maintainability under Section 134 of the Trade Marks Act. Referencing a Supreme Court decision, it clarified that the plaintiff's residence or business location was crucial for determining the suit's venue. The Court found the Single Judge's interpretation incorrect, as the plaintiff's trademark registration in Chennai made the suit maintainable there.

The Full Bench also considered previous judgments and held that the plaintiff's residence within the Court's jurisdiction sufficed for maintaining the suit. Consequently, the appeals were allowed, the impugned order was set aside, and the suit was restored for further proceedings, directing the defendant to file a written statement within three weeks.

In conclusion, the Court clarified the interpretation of Section 134, emphasizing the plaintiff's business location for determining territorial jurisdiction in trademark infringement suits. The decision highlighted the importance of the plaintiff's residence or business place in deciding the suit's venue, overturning the earlier rejection of the plaint based on territorial jurisdiction.