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TMI Blog2008 (5) TMI 614X X X X Extracts X X X X X X X X Extracts X X X X ..... re is a legend within a blurb mentioning the fact that this is a new pack. * The column immediately next to it contain the same features in the Devnagri script. * A third column sets out the details including Composition, Weight, MRP and Manufacturers Name etc. * The top half of the third column contains an oval shaped device containing a diagrammatic representation of the herbs that constitute the ingredients of Plaintiffs product." 4. It was alleged that the said carton constituted an 'artistic work' within the meaning of Section 25-C of the Copyright Act, 1957 (the 1957 Act). Respondent is said to have been using an identical colour scheme lay out, arrangement of features and get up as that of the plaintiffs, the essential features whereof are : * "One column has the words RED TOOTH POWDER within a yellow blurb. * A column which contains the representation of a family in an oval shape picture. * There is a similar representation in the Devnagri script in another column. * The details of the product are set out in another column. * Above the details of the product there is advice of a lotus, similar to the positioning of the plaintiff's herbs in the plaintiff's c ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s of the counsel appearing for the appellant that the composite suit of infringement of copyright and passing off would lie in the same forum. We also do not find any error in the judgment of the learned Single Judge as in our considered opinion so far the relief for passing off is concerned, the same is covered by the decision of the Supreme Court in Dhodha House case." 9. Mr. Fali S. Nariman, learned senior counsel appearing on behalf of the appellant, submits that the Division Bench of the High Court committed a serious error in passing the impugned judgment in so far as it failed to take into consideration the effect of a consolidated suit under the 1957 Act as also the Trade Marks Act, 1958 (for short 'the 1958 Act'), as would be evident from the following excerpts of Dhodha House (supra) : "22. We are not concerned in this case with the maintainability of a composite suit both under the 1957 Act and the 1958 Act. Indisputably, if such a situation arises, the same would be permissible; but the same may not be relevant for the purpose of determining the question of a forum where such suit can be instituted. Sub-section (2) of Section 62 of the 1957 Act provides for a non obst ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... specified therein must be fulfilled, the requisites wherefor are that the plaintiff must actually and voluntarily reside to carry on business or personally work for gain." 10. Learned counsel would contend that the jurisdiction of the court to entertain a composite suit under the 1957 Act and the 1958 Act should be determined having regard to the provisions of Section 55 of the former. Then term 'Law' within the meaning of the said provision, it was submitted, would not only include a statute law but also the common law and, thus, viewed from that perspective a composite suit for infringement of a copyright as also passing of shall be maintainable. Strong reliance in this behalf has also been placed on Exphar Sa & Anr. v. Eupharma Laboratories Ltd. & Anr. [(2004) 3 SCC 688]. 11. Mr. Shailen Bhatia, learned counsel appearing on behalf of the respondent, on the other hand, would submit that this Court in Dhondha House (supra) categorically held that the cause of action for infringement of the 1957 Act and that of the 1958 Act are distinct and separate. 12. Order II Rule 3 of the Code, it was submitted, deals with pecuniary jurisdiction and not the territorial jurisdiction of the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... use the trade mark complained of in the suit he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was on the register or that the plaintiff was registered user using by way of permitted use; and (ii) that when he became aware of the existence and nature of the plaintiffs right in the trade mark, he forthwith ceased to use the trade mark in relation to goods in respect of which it was registered; or (c) where in a suit for passing off the defendant satisfies the court-- (i) that at the time he commenced to use the trade mark complained of in the suit he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was in use; and (ii) that when he became aware of the existence and nature of the plaintiffs trade mark, he forthwith ceased to use the trade mark complained of." 14. We may also at this stage notice the provisions of the Trade Marks Act, 1999, (for short, '1999 Act'), Section 134 whereof reads :- "Section 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 trad ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... udge noticed some precedents and opined :- "13. Normally, I would have felt myself bound by the aforesaid two judgments which are not only of this court but relate to same subject matter, namely, joining of two causes of action under trademark and copyright law. Even if I hold different opinion, the normal course of action would have been to refer the matter to the Division Bench. However, this is not necessary in the instant case in view of the fact that the controversy now stands settled by the Supreme Court in Dhodha House (supra)." 18. The Division Bench of the High Court on the other hand while holding that the High Court has jurisdiction to adjudicate and decide upon the relief of infringement of copyright observed that it would be open to the appellant to file a fresh suit in the court of competent jurisdiction in respect of its action for passing off and thus the plaint is required to be returned for filing in the court of competent jurisdiction only in relation thereto. 19. In Dhodha House (supra) this Court was concerned with the correctness of judgments of the Allahabad High Court in Surendra Kumar Maingi v. M/s. Dodha House, [AIR 1998 Allahabad 43] and the decision o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ch otherwise had the necessary jurisdiction to decide all the issues." 22. What would, however, be the nature of composite suit, was also be taken note of. The Court observed :- "55. In this case we have not examined the question as to whether if a cause of action arises under the 1957 Act and the violation of the provisions of the Trade Marks Act is only incidental, a composite suit will lie or not, as such a question does not arise in this case." It is in the aforementioned context, submission of Mr. Nariman that a composite suit would be maintainable having regard to sub-section (1) of Section 55 of the 1957 Act must be considered. 23. Sub-section (1) of Section 55 of 1957 Act provides for the remedies in terms whereof the plaintiff shall be entitled to all reliefs by way of injunction, damages, accounts and otherwise as are or may be conferred by law for the infringement of a right. It must be read as 'ejusdem generis'. It must take its colour from the words, 'any proceeding' namely the right to obtain a decree by way of injunction, decree for damages, accounts or other incidental reliefs which can be granted by a civil court. Such a provision can be found in the Code of Ci ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ction of a court under sub-section (2) of Section 62 of the 1957 Act is wider than that of the court specified under the Code of Civil Procedure and thus a person instituting a suit having any claim on the ownership of the copy right which has been infringed, would not be a ground for holding that he would not come within the purview of subsection (2) Section 62 of the 1957 Act, as he had been served with a 'cease and desist' notice, opining :- "13. It is, therefore, clear that the object and reason for the introduction of sub-section (2) of Section 62 was not to restrict the owners of the copyright to exercise their rights but to remove any impediment from their doing so. Section 62(2) cannot be read as limiting the jurisdiction of the District Court only to cases where 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 presently works for gain. It prescribes an additional ground for attracting the jurisdiction of a court over and above the "normal" grounds as laid down in Section 20 of the Code." 27. There cannot be any doubt whatsoever that the Parliament ha ..... X X X X Extracts X X X X X X X X Extracts X X X X
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