9911796707
TMI Blog2014 (12) TMI 1327X X X X Extracts X X X X X X X X Extracts X X X X ..... h application having been preferred before the Deputy Registrar of Trade Marks, Madras, in Class - 20 for goods, rubberised coir products - Mattresses, Pillows, Cushioning materials and Air Filters. The trade mark was registered on 10.02.1983. The appellant claims large sales throughout the country under the said Trade Mark. The Trade Mark is stated to have been published in the Trade Mark Journal dated 16.08.1987 and on registration, the Registration Certificate was issued on 12.08.1988. The appellant alleges that the respondent dishonestly adopted the trade mark 'DURO FLEXI PUFF', which came to the knowledge of the appellant in November, 2005. The Trade Mark is alleged to be deceptively similar and identical to the registered trade mark of the appellant with only the suffix 'PUFF' being added. The appellant thus sent a legal notice, but the respondent refused to oblige and the result is that the appellant filed a suit for perpetual injunction seeking a decree against the respondent, as also to deliver, for destruction and a preliminary decree for rendering accounts of profits. The respondent company being a private limited company with its registered office locate ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ennai by itself would give rise to a cause of action to seek leave to file the suit in the Madras High Court? In this context, two conflicting views of the Division Bench of this Court were brought to the notice of the Bench. The first view is reflected in Ramu Hosieries represented by M. Murugeshan v. Ramu Hosieries, represented by Pandela Ramu, (1999 PTC (19) 183), where it was opined that the jurisdiction of the Civil Court in relation to movable property has to be determined with reference to cause of action and the rights in Trade Mark being movable property, the registration of Trade Mark would suffice to give jurisdiction to this High Court. A contra view has been expressed in Shabbir Medical Hall v. Mohammed Naseer, (2010 (3) CTC 864), that the location of Trade Mark Registry cannot be the basis for cause of action. 4. The other aspect which arose was qua the principle of forum conveniens, which was not applicable to domestic disputes governed by the Code of Civil Procedure, as observed by a Division Bench of the Delhi High Court in Horlicks Ltd., and another v. Heinz India (Pvt.) Limited, (2010 (42) 156 PTC (Delhi) (DB), authored by one of us (S.K.K. CJ.,) relying upon th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he location of the property must be considered in order to determine the jurisdiction of the Court. The scheme of Clause-12 of the Letters of Patent was thus held to confer jurisdiction upon the Court, with regard to suits other than suits for land, in the first instance in relation to the cause of action, which jurisdiction is not exercised 'in personam', because even though the defendant may not be within its jurisdiction, the Court can exercise its jurisdiction in relation to the subject-matter of the suit. 7. In the discussion in the aforesaid Judgments dealing with movable property, it has been observed that the existence of the movable property would be essential part of the cause of action and if the same is situated within the jurisdiction of the particular court, that part of cause of action would certainly arise within the jurisdiction of that court. Thus the situs or location of the movable property within the jurisdiction would invest the Court with the jurisdiction. 8. In the context of situs of a Trade Mark, learned counsel submitted that Trade Mark is an intangible, movable asset capable of transmitting an assignment. It is put up in a place. This can be a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ld to be at Madras. Since the fact of registration of the Mark constitutes part of cause of action, it must be held to be registered at Madras. (c) Amrutanjan Limited v. Ashwin Fine Chemicals & Pharmaceuticals reported in (A.I.R. 1991 Madras 277), wherein it has been held by the learned Single Judge that on the original side, the Letters Patent were held as applicable to a suit instituted at the High Court for infringement of a registered Trade Mark and since the defendants have not disputed the registration of the Trade Mark of the plaintiff at Madras and their manufacturing, marketing and selling their products throughout the country, a combined perusal of Clause-12 of the Letters Patent and Section 20 of the Code of Civil Procedure, 1981 as also Section 106 of the Trade and Merchandise Marks Act, would lead to a conclusion that the Madras High Court has jurisdiction to try the same. This was so even if the product with the alleged offending mark had not come to the Madras market, as the alleged infringement was not only at the place where the defendants marketed their goods, but also where the plaintiff's property itself was situated. The registration of the Trade Mark had ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... (Madras) (DB), wherein the situs of the Trade Mark being part of cause of action, it was held, that the part of the cause of action arose within the jurisdiction of this Court. The Trade Mark had been registered and reflected in the Head Office of the Trade Mark Registry at Mumbai, yet, the Trade Mark Registry's branch office being at Chennai, keeping in view the provisions of Section 18 of the Trade Marks Act, 1999, the situs of the Trade Mark can be said to be at Chennai. (h) Dhora House v. S.K. Maingi reported in 2006-3-L.W. 96(SC) : 2006(1) TMR 1 (SC), it was held that in the context of the requirement of an application for registration of a Trade Mark to be filed either at Mumbai or Ahmedabad, it was held that the sequester was that the objection thereto was also required to be filed at the same place. (i) Motorola Inc v. Modi Wellvest reported in (2005(79) DRJ 173), wherein it has been held by the learned Single Judge of the Delhi High Court that under Section 2(46) of the Companies Act, 1956, a share is defined to mean a share in the share capital of the company and consequently a share in a corporation held by any person is located where the registered office of th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ess, or personally work for gain, as aforesaid, acquiesce in such institution; or (c) the cause of action, wholly or in part, arises." Clause 12 of the Letters Patent "12. Original jurisdiction as to suits - And we do further ordain that the said High Court of Judicature at Madras, in exercise of its ordinary original civil jurisdiction, shall be empowered to receive, try, and determine suits of every description if, in the case of suits for load and other immovable property, such land or property shall be situated, or, in all other cases, if the cause of action shall have arisen, either wholly, or, in case the leave of the Court shall have been first obtained, in part, within the local limits of the ordinary original jurisdiction of the said High Court: or if the defendant at the time of the commencement of the suit shall dwell or carry on business or personally work for gain, within such limits; except the said High Court shall not have such original jurisdiction in cases falling within the jurisdiction of the Small Cause at Madras, in which the debt or damage, or value of property the sued for does not excited hundred rupees." 12. Learned counsel submitted that S.B.S. Jay ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ade Marks Act, 1999 read with the provisions of the Code of Civil Procedure or any other law in force in India. The legal fiction was thus pleaded to be unnecessary. 14. Reference was also made to the Judgement of the Honourable Supreme Court in R. Vishwanathan v. Ruken-ul-Mulk Syed Abdul Wajid reported in (1963) 3 S.C.R 22) : (AIR 1963 SC 1), to contend that the Apex Court did not state that the situs of the shares where the registered office of the company is situated or where the Register of share is maintained, but the situs of the shares is where the property could be effectively dealt with. The company registered Office also happened to be a place where the shares could be dealt with and thus, the finding was fact-specific. Apart from this, the principle applicable as to where the shares can be dealt with effectively is different from a case involving infringement of a Trade Mark, since there is no question of dealing with the Trade Mark which has been infringed and so consideration of situs of the Trade Mark cannot be determined by applying the same test. 15. It is submitted that there are in fact multiple levels of fiction created. The first fiction involved the registeri ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the jurisdiction of the Delhi High Court as the Trade Marks Act, 1999 did not allow registration of a Trade Mark within the jurisdiction of a Court to be a ground for filing a suit in that Court. For the sake of argument, even if the location of a particular property, the rights in respect of which are in dispute and the registration of the Trade Mark is in Chennai, at best it could be construed to be a part of the cause of action, but that by itself would be insufficient to grant leave to institute the suit before this Court. 19. Lastly, it was projected that in case of infringement of Trade Mark, courts in United States have observed that it is not Trade Mark itself which is infringed, but the right of public to be free of confusion, and the synonymous right of a Trade Mark owner to control its product's reputation. The Trade Mark laws exist not to protect Trade Marks, but to protect the consuming public from confusion, concomitantly protecting the Trade Mark owner's right to a non-confused public. (Judgments referred to - James Burrough Ltd. v. Sign of Beefeater Inc. (540 F.2d 266) and Accord dull as Cowboys Cheerleaders Inc v. Pussycat Cinema Ltd. (604 F.2d 200). If th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rty or some other endowment. 23. Insofar as the applicability of the principles of forum conveniens to Civil proceedings is concerned, the Division Bench of the Delhi High Court in Horlicks Ltd., and another v. Heinz India (Pvt) Limited reported in (2010 (42) 156 PTC) (Del) (DB), has opined that the principle emerged as a principle of Admiralty Law applicable primarily to foreign forum and finds no place in a domestic forum in India. The plaintiff is always the dominus litus and so long as the Court has jurisdiction to try a suit, a party cannot be non-suited. A suit has to be governed by the provisions of the said Code. Relying on the observations of the Honourable Supreme Court in Abdul Gafur and Another v. State of Uttarakhand and others reported in (2008) 10 SCC 97, where the Honourable Supreme Court observed that Section 9 of the Civil Procedure Code provides that a Civil Court shall have jurisdiction to try all suits of civil nature excepting suits, of which cognizance is either expressly or impliedly barred. It was further held that law confers on every person an inherent right to bring a suit of civil nature of one's choice at one's peril, howsoever frivolous the c ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... undue hardship was likely to be caused to the respondents, if the appellant was allowed to combine the action of trade mark and passing off along with the action of infringement of copy right. 27. In Smithkline Beecham Plc and another v. Sunil Singhi and another reported in (2001 (PTC) (Del.) 321), Section 62 of the Copy Right Act was observed to be making an obvious and significant departure from the norm back the choice of jurisdiction should primarily be governed by the convenience of the defendant. 28. In Ramchander Laxminarayanan Karva v. Jaganath Khubchand Karva and Another reported in 1994(14) PTC 218 (Mad.), a Division Bench of this High Court made reference to Halsbury's Laws of England on the balance of convenience and stated as under: "We do not say that in considering the balance of convenience as to the forum for instituting a suit, it would be necessary [like the principles of injunction] to see the ultimate injury that a party may suffer but we do find support to our view we state in no uncertain terms that in deciding whether to refuse leave or not, it would be necessary to see on facts and not, on assumptions, who shall suffer the plaintiff the defendant, i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... demark infringement :-- "(i) The plaintiff resides within the jurisdiction and thus irrespective of situs of Trademark and act of infringement or residence of defendant, no prior leave would be required in view of Section 134(2) of the Trade Marks Act. (ii) The defendant resides within the jurisdiction of the Court and thus irrespective of the situs of Trademark/act of infringement, Clause 12 of the Letters Patent would apply and no prior leave would be required. (iii) The place where the plaintiff and defendant reside/carry on business decides the jurisdiction of the Court. The situs of the Trademark registry is within the jurisdiction, which gives the part of cause of action where prior leave could be required under Clause -12 of the Letters Patent." 31. In the context of the aforesaid three situations, it was contended that the situs of the Trade Mark at the appropriate Office of the Trade Mark Registry gives the part of the cause of action, which would be sufficient under Clause-12 of the Letters Patent, to grant leave to entertain the suit. In this context, the facts pleaded in the plaint would have to be examined keeping in mind the intent of the Legislature in view of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ng the question of forum conveniens. It is really not convenience, but appropriateness or suitability of the forum. The non-applicability of the doctrine of forum conveniens is limited to the consideration of the position under Section 20 of the Code of Civil Procedure and not Letters Patent, which distinction is elucidated in Madanlal Jalan v. Madanlal and others reported in AIR 1949 Cal. 495. It has also been held that the jurisdiction of the Court under Section 20 of the Code is different from its jurisdiction under Clause-12 of the Letters Patent - vide Food Corporation of India v. Evdomen Corporation reported in 1999-2 SCC 446), and thus the same considerations would not apply in the determination of jurisdiction of courts under Section 20 CPC and Clause 12, the plaintiff does not have an absolute right to bring proceedings in the High Court and can only do so with the prior leave of the Court. 34. Learned counsel emphasised that it has been the consistent practice of the Madras High Court to consider the issue of convenience of parties in ascertaining appropriateness of jurisdiction. In Seshagiri Row v. Nawab Askur Jung Aftal Dowlah Mushral Mulk, reported in (ILR 30 Mad. 438 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Another reported in 2004 (6) SCC 254, inter alia holding that High Court may refuse to exercise its discretionary jurisdiction even if a small part of the cause of action arises within its territorial jurisdiction, applying the test of 'forum conveniens'. 36. Learned counsel for the respondent referred to different judicial pronouncements on the principles of 'forum conveniens', referring to relevant passages therein :-- "(a) In P.J. Parameswara Pattar v. Viyathan Mahadevi reported in (AIR 1923 Mad. 272), the Division Bench has observed that "5. The real question to be considered is the balance of convenience. Nearly the whole of the alleged cause of action arise in Malabar. There would be no ground at all in my judgment for bringing it here if it did not happen that two of the defendants reside here who, it is alleged, have in their power here a very material document...." (b) In Clan Line Steamers Co. Ltd. v. Gordon woodroffe and Co. and others reported in (1979) 1 MLJ 349), it has been held thus: "It is asserted now before us on behalf of the respondent/plaintiff that the entire evidence regarding the subject matter of the suit would be available only in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... limits, the Court may decline to give leave to sue/." "As regards the law of this Country, so far as we are aware, it has never been held the question of convenience is not a question which may be taken into consideration in dealing with applications under Clause 12, and we are certainly not prepared to hold that this question should be excluded from consideration." (e) In National Westminster Bank Ltd., U.K. v. M/s. Devraj Nensee and Company reported in (1997(1) LW 117), it has been observed by the Division Bench as: "30. Even while granting leave, this Court is bound to consider the forum non-convenience. In paragraph-5 of the affidavit filed in support of the Applications, the second defendant has stated the reasons why the leave should not be granted. It is said therein that both the defendants are carrying on business outside India, and even the credit report was received in England, and all the documents pertaining to the correspondence are in England. The defendants are also permanent residents of England, and even as against the first defendant, liquidation proceedings are pending only in England. If the second defendant is asked to contest the suit before this Court, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Madras High Court?" 39. A cause of action consists of a bundle of facts. The judgment Shiv Bhagwan Moti Ram Saroji's case (supra) has correctly emphasised the duty of the Court to ascertain what facts constitute the cause of action. For example, the cause of action is the existence of a property in case of a partition suit and thus, its location must be considered in order to determine the jurisdiction of the Court. In case of an immovable property, its existence would be an essential part of cause of action and thus, if the same is situated within the jurisdiction of a particular Court, a part of cause of action would certainly arise within the jurisdiction of that Court. 40. The right of a plaintiff to a registered trade mark is a proprietary right and therefore, it is property (S.B.S. Jayam and Co.'s case (supra)). It is capable of being transferred under the provisions of the Act and is a movable property as per the definition under Section 3(36) of the General Clauses Act. The principal seat of the Trademarks Registry is at Mumbai and the Register of Trademarks is also maintained at the same place. However, there are branch offices, including one at Chennai, where in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s, the civil suit for infringement of trademark would be filed at Mumbai. 43. We are in agreement with the submission for the learned counsel for the respondents that the 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. 44. We do believe that the course of action suggested by the learned counsel for the respondents of applying the 'connecting factors' test as enunciated in Cauda v. Folster's case (supra) would be the appropriate course of action. In terms of the said pronouncement, 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. 45. We are fortified in our view keeping in mi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f the Letters Patent in case part of cause of action arises at Chennai?" 49. Insofar as the second question is concerned, we have already observed in paragraph 21 aforesaid that learned counsel for the parties are ad idem that in matters of grant of leave under Clause 12 of the Letters Patent, the principles of forum conveniens would be applicable. It is trite to say that the principles of forum conveniens really have no application to civil proceedings governed by the Code of Civil Procedure and are applicable primarily to foreign forums (Horlicks case and Abdul Gafur's case supra). 50. A number of judgments were cited in the context of Section 62 of the Copyright Act, which gave the discretion to the litigant to decide the forum, including of this Court in Brooke Bond (India) Ltd. case (supra). Interestingly, this very Court in Glaxo Operations U.K. Ltd. (supra) observed that the expression 'carrying on business' is too wide to embrace the branch or branches where business activities are carried on. The jurisdiction of the Court under Section 20 of the Code of Civil Procedure is different from the jurisdiction under Clause 12 of the Letters Patent. In a proceeding u ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hat the situs of the Trademark Registry within the jurisdiction of the Court would give a part of cause of action on the issue of registration of the trademark alone being sufficient, we have already given a finding under the first question of law aforesaid. Thus, a bundle of facts would determine whether the cause of action has arisen qua the trademark infringement within the jurisdiction of the Court. 54. We may add that a Division Bench of this Court comprising two of us (S.K.K.,CJ. and M.S.N.,J.) had an occasion to examine the applicability of the principles of forum conveniens in a case of writ proceedings in Bharat Bhogilal Patel and others v. Union of India and others reported in 2014-5-L.W. 289 : (2014) 7 M.L.J. 641). In the context of that judgment, we referred to the decision of a five judges' bench of the Delhi High Court in Sterling Agro Industries Ltd. v. Union of India reported in (A.I.R. 2011 Delhi 74), which had gone into the doctrine of forum conveniens vis-`-vis the concept of cause of action. In the context of that judgement, it was observed in Sterling Agro Industries Ltd. case (supra) as under :-- "The concept of forum conveniens fundamentally means that ..... X X X X Extracts X X X X X X X X Extracts X X X X
|
