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TMI Blog2001 (12) TMI 865X X X X Extracts X X X X X X X X Extracts X X X X ..... e CATERPILLAR has become extremely well known around the world, primarily for the manufacture of heavy machinery for the construction, mining, road building and agricultural industries. 2. It is also stated in the plaint that the products manufactured by the plaintiff include Track-type tractors, Waster Disposal Arrangements, Agricultural products, Motor Grades, Excavators, Mass Excavators, Front shovels. Articulated Trucks, Wheel Tractors, Soil Compactors, Landfill Compactors, Track-Loaders, Integrated Tool Carriers, Backhoe Loaders, Wheel Loaders, Cold Planers, Asphalt Pavers, Road Reclaimers/Soil Stabilisers, Vibratory Compactors, Pneumatic Tired Compactors, Log Loaders, Feller Bunchers, Forest Machines, Track Skidders, Pipe-layers, Scrapers, Trucks, Tractors, Engines, etc. 3. It is further stated in the plaint that the plaintiff's earth moving equipment, engines, construction and road building equipment have been regularly imported to India for the last several decades. Consequently, the plaintiffs trade marks CAT/CATERPILLAR are well known in India. The plaintiff's product were distributed through Larsen Toubro, General Marketing and Manufacturing Company Limit ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ntiffs goods, the trade mark CATERPILLAR also forms a predominant feature of the plaintiff's corporate name and trading style. The new Oxford Dictionary defines CATERPILLAR as a proprietary name. There is, thus, no doubt that the trade mark CATERPILLAR is known the world over. In a recent decision of the Hon'ble Madras High Court in Suit No. 785/96 instituted by the plaintiff against one M/s. Jorange, the Division Bench of the said Court has taken note of the repute of the plaintiff's trade marks in respect of articles of clothing and granted an interim injunction restraining the defendant from using the trade marks CAT and CATERPILLAR for garments. 6. The cause of filing the present suit is the adoption of the trade marks CATERPILLAR/CAT by the defendants in respect of garments particularly branded jeans. It is stated that by adopting the name of CATERPILLAR branded jeans, the defendants are indulging in counterfeiting by dishonestly copying the plaintiff's trade marks CAT/CATERPILLAR and infringing the copyright of the plaintiff in respect of these trade marks. The defendant No. 2 is engaged in export of garments. The defendant No. 1 is the proprietor of the de ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ant No. 3 concern and met with Mr. Nilesh Shah who showed him an album containing CAT/CATERPILLAR branded labels. The operative also spoke with two employees of the defendant No. 3 concern who confirmed that the said defendant dealt in labels, tokens and other items branded with the CAT/CATERPILLAR mark. 7. The plaintiff further alleges that operations of the defendants are spread far beyond the city of Mumbai and their major area of sale is also in Delhi among other places which is also evidenced by the fact that the defendants had a internet site namely, www. memberstripod.com.cf. 8. Along with the plaint, the plaintiff filed IA. 7522/99 which is an application under Order XXXIX, Rules 1 and 2 red with Section 151, CPC praying for grant of ex-parte ad interim injunction Order. On 9th August, 1999 while registering the Suit and directing service of summons on the defendants, ex-parte ad interim Order was passed restraining the defendants 1 and 2, their partners, or proprietors, their officers, servants, agents, distributors, stockists and representative from using the trade mark CAT/CATERPILLAR in any of their products. A local Commissioner was also appointed to visit the pr ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... fendants argued this aspect only and was candid enough to admit that IA. 7522/99 filed by the plaintiff in fact stood disposed of by Order dated 31st August, 2000 whereby Interim Order was made absolute although it was not stated in that Order in specific words that this application stood disposed of. Learned counsel for the defendants was also candid in submitting that he was not arguing the injunction application on merits and was confining his submissions only on the territorial jurisdiction. Therefore, in these applications the only point which calls for consideration is as to whether this Court has territorial jurisdiction to entertain the present suit. 13. As already pointed out above, the plaintiff has its registered office in U.S.A. All the defendants have their offices in Mumbai. On this basis, learned counsel for the defendants 1 and 2 submitted that the present suit could not be filed in Delhi. It was more so, when the plaintiff did not submit any prima facie evidence to prove that the defendant No. 1 sold any fool wear/garments in Delhi. It was also submitted that as per the plaintiff's own showing in the plaint. It's Regional Director in Bahrain observed in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... it is the CPC which is applicable. It was also submitted that the object of territorial jurisdiction under Section 20 CPC was that Justice should be brought as near as possible to everyman's hearthstone and the defendant is not to be put to the trouble and expose to travel long distance to defend himself in cases where he is involved. 16. Learned counsel summed up by submitting that :- (a) Section A href= javascript:fnOpenGlobalPopUp('/ba/disp.asp','720','1'); 62(2) confers jurisdiction over matters under Chapter XII only. (b) Section 62(2) confers jurisdiction in respect of the person instituting the suit or other proceedings. (c) Section 55 of Chapter XII states that the owner of a copyright shall be entitled to institute the proceedings. (d) Section 54 states that the owner of copyright may include an exclusive licensee. Hence, the person in Section 62(2) is either owner of copyright or its exclusive licensee. In this case, the plaintiff is the owner of copyright. (e) Either of them, according to Section 62(2) may invoke jurisdiction at Delhi if he actually or voluntarily resides or carries on business or personally work for gai ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ness in Delhi, this Court will have jurisdiction to entertain the Suit. Reliance was placed on : (i) para 13 of the judgment in the case of Deepchand Arya Industries v. Kiran Soap Works, 1981 PTC 108 : The plaintiffs admittedly reside and carry on their business in Delhi. Section 62 of the Copyright Act clearly gives jurisdiction to this Court to entertain the suit . (ii) Tata Oil Mills Company Ltd. v. Reward Soap Works, :- The defendant resists the suit and opposes the application for injunction, inter alia, on the grounds that the mark consisting of the numerals 507 does not constitute an infringement of the plaintiff's mark consisting of numerals 501 and is not identical with or deceptively similar to the mark of the plaintiff, that the wrapper used by the defendant is also neither identical with not deceptively similar to the wrapper used by the plaintiff in the marketing of its goods. Defendant, however, does not deny that the numerals 501, as in-deed, the design of the wrapper are registered trade marks of the plaintiff and the design of the wrapper is also registered under the Copyright Act. Defendant, however, challenges the jurisdiction of the Court in relat ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s are selling the infringed goods in Delhi and, therefore, this Court has jurisdiction to try this suit. It is true that there is no document which has been filed in support of this submission but that is a matter which will be gone into at the time of trial of the suit. (iv) Following observations in the case of Glaxo Operations, U.K. v. Samrat Pharmaceuticals, :- It is apparent from a plain reading of the aforesaid provision that the territorial jurisdiction with respect to any suit or other civil proceeding in respect of infringement of the copyright shall be the place where the plaintiffs or if there are more than one, any one of them is residing, carrying on business or personally works for gain. In this case it is stated by the plaintiffs that the plaintiff No. 2 has registered office at Dr. Annie Besant Road, Bombay and has local office at Mathura Road, New Delhi. It is apparent from what has been stated by the defendant in the written statement (reproduced above) that the defendant does not deny the existence of local office of plaintiff No. 2 at Delhi. Having regard to the fact that the local office of plaintiff No. 2 is situated at Delhi, the said plaintiff is obv ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... , i.e. manufacturing as well as packaging of the offending PARAMOL EXTRA and PAMACOL, within India, Once, this averment is countenanced, it is wholly immaterial that the Defendants' offending business activity is not carried out in New Delhi. The Act permits the Plaintiff to make a choice of the Court, and since Plaintiff No. 2 has its Registered Office in New Delhi, the choice is well founded. The Trademark PANADOL is registered in India. There is an assertion that Plaintiff No. 2 has its registered office at E-46, Greater Kailash - I, New Delhi. The legal propriety of piercing the corporate veil should not detain the decision at this threshold stage since it is intrinsically a mixed question of fact and law. For all these reasons I am satisfied that this Court has territorial jurisdiction to entertain the suit. 21. In fact it cannot be disputed that the plaintiff can file the suit at a place where it carries on its business. In the present case, the plaintiff is a company incorporated under the laws of the State of Delaware, U.S.A. The plaintiff has given distribution rights to Larsen Toubro, General Marketing and Manufacturing Company Ltd. and Tractor India Ltd. in Ind ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... circle and the statement A Licensed Product of Caterpillar Inc. on the tongue. 24. After giving my thoughtful consideration to the issue involved, I am inclined to agree with the submission of the learned counsel for the plaintiff. As already pointed out above, Section 62 of the Copyright Act is a significant departure from the normal rule. This Court has already observed in the case of Smithkline Beecham (supra) that this section of the Copyright Act makes an obvious and significant departure from the norm that the choice of jurisdiction should primarily be governed by the convenience of the defendant. The Legislature in its wisdom introduced this provision laying down absolutely opposite norm than the one set out in Section 20 CPC. It is done with a purpose. The purpose is to expose the transgressor/pirator with inconvenience rather than compelling the sufferer to chase after the former. Once this purpose is kept in mind for which Section 62 in the Copyright Act is enacted, it becomes very easy to answer the contention put forth by learned counsel for the defendant. The permissive provision allowing the person to file the suit or other proceedings whether he carries on busin ..... X X X X Extracts X X X X X X X X Extracts X X X X
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