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TMI Blog2020 (11) TMI 1074X X X X Extracts X X X X X X X X Extracts X X X X ..... he learned Single Judge has allowed Application Nos.4916, 4920 and 4923 of 2019 in C.S.No.410 of 2019 filed by the 1st to 3rd respondents (1st to 3rd defendants) and has revoked the leave granted to the appellant/plaintiff to sue them. Aggrieved by the same, these appeals have been filed by the plaintiff. 4. The above suit was filed by the appellant/plaintiff for the alleged violation of appellant's Patent No.282429 by the 1st to 3rd respondents/1st to 3rd defendants along with 4th respondent/4th defendant. 5. Earlier, an ex-parte order dated 03.07.2019 was passed in A.No.4512 of 2019 and a leave to sue the 1st to 3rd respondents/1st to 3rd defendants was granted under Clause 12 of the Letters Patent by a learned Single Judge of this Court. Pursuant to the said order, the above suit was numbered. In the above suit, the appellant/plaintiff had also filed O.A.No.647 of 2019 to injunct these respondents (i.e, the 1st to 3rd defendants) from infringing the aforesaid patent of the appellant herein. An ex-parte order was also passed on 05.07.2019. 6. Under these circumstances, the 1st to 3rd respondents/1st to 3rd defendants filed four different applications separately (in all 12 appl ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... eave to sue granted has to be revoked for lack of jurisdiction. The part of cause of action stated in the plaint to bring the suit within the territorial jurisdiction is insignificant. The proof required to decide the lis does not depend on those facts relating to 4th defendant, who is carrying on business at Chennai which only constitute an infinitesimally small part of cause of action. As a result, the Application Nos.4916, 4920 & 4923 of 2019, to revoke leave are allowed. The plaintiff is at liberty to present the suit before the appropriate Court having jurisdiction. 11. Though lengthy arguments were advanced on behalf of the appellant/plaintiff and respondents/defendants on merits, it would suffice to state that the suit was filed against the respondents/defendants based on three trap orders placed on the 4th respondent/4th defendant by the appellant on 10.06.2019, 11.06.2019 and 12.06.2019. 12. In the plaint, it was alleged that the 4th respondent/4th defendant sold the infringing products manufactured and marketed by the 1st to 3rd respondents/1st to 3rd defendants within the jurisdiction of the Court. It was alleged that such sales were in violation of the aforesaid paten ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of Civil Procedure, 1908 since the Defendants are distributing and selling its products in the city of Chennai within the jurisdiction of this Hon'ble Court. Also, the Defendant No.4 is the dealer and distributor based in the city of Chennai selling the Defendant No.1, Defendant No.2 & Defendant No.3's products on a commercial scale. Thus, the cause of action for institution of the present suit has arisen within the jurisdiction of this Hon'ble Court. Furthermore, the Plaintiff submits that a part of cause of action has arisen in Chennai as the Defendant No.1, Defendant No.2 & Defendant No.3 have their commercial operations in the city of Chennai within the jurisdiction of this Hon'ble Court. This Hon'ble Court therefore has jurisdiction to try and entertain the suit as the Defendants are selling the impugned product under the mark Nano Sulf-W.G. at Chennai. In the circumstances, this Hon'ble Court has jurisdiction to entertain and try the suit. However, as a matter of abundant caution, the plaintiff has applied for leave to sue the Defendants." (Emphasis added) 15. The ground for revoking the leave and also for rejecting the plaint in respective affidavit ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... clined to grant any interim order to the appellant/plaintiff in those cases, the appellant/plaintiff resorted to forum shopping by filing C.S.No.410 of 2019 before the Original Side of this High Court. 20. According to the contesting respondents, i.e, 1st to 3rd respondents/1st to 3rd defendants, the 4th respondent/4th defendant was a stranger who had been set up as is evident from the fact that a similar purchase order placed on the 4th respondent/4th defendant and was used by the appellant/plaintiff in C.S.No 396 of 2019 and after obtaining ex-parte order, the appellant/plaintiff managed to settle the dispute by entering into a compromise by arm-twisting the defendants therein. 21. It was further submitted that pesticides was a regulated commodity under the provisions of the Essential Commodities Act, 1955 and its sale is governed by the provisions of the Fertiliser (Control) Order, 1985 as amended from time to time. It is submitted that, the 4th respondent/4th defendant, the alleged seller on whom the trapped orders were placed by the appellant/plaintiff had filed a plaint counter affidavit before the learned Single Judge and stated that he was not registered person under the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Ganapathy, the learned counsel for the 4th respondent/4th defendant in all these O.S.As. 28. On behalf of the appellant/plaintiff, Mr.Arun C.Mohan placed reliance on the following decisions:- i. Wipro Limited and Others Vs. Oushadha Chandrika Ayurvedic India (P) Limited and Others, reported in 2008 SCC OnLine Mad 172. ii. Parle Products Private Limited Vs. Surya Food and Agro Limited, reported in2009 (40) PTC 638 (Mad). iii. Micro Labs Limited Vs. Eris Life Sciences Pvt. Ltd., reported in 2015 (64) PTC 9 (Mad). iv. Lalli Enterprises Vs. Dharam Chand and Sons, reported in 2003 (26) PTC 239 (DB). v. Delight Chemicals Private Limited and Others Vs. Ganga Yallappa, reported in 2012 SCC OnLine Mad 5434. vi. MCD Vs.Jegannath Ashok Kumar, reported in AIR 1987 SC 2316. vii. M.K.Shah Engineers Vs. State of M.P, reported in (1999) 2 SCC 594. viii. National Highways Authority Vs.Bumihiway DDB Limited, reported in (2006) 10 SCC 763. ix. MrutunjayPani and Another Vs. Narmada BalaSasmal and Another, reported in AIR 1961 SC 1353. x. Associate Builders Vs. Delhi Development Authority, reported in (2015) 3 SCC 49. xi. SsangyongEngg. & Construction Co. Ltd. Vs. NHAI, reported in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... and the High Court have jurisdiction to entertain civil suits relating to violation of Patent. Under Clause12 of the Letters Patent, a plaintiff may file a suit in the High Court before the Original Side when the cause of action has wholly or partly arisen within its territorial limits, notwithstanding the fact that the defendant may not be carrying on business within its territorial limits. 32. Chartered High Courts governed by the Letters Patent have been given discretion to grant a leave to sue to the plaintiff/plaintiff under Clause 12 of the Letters Patent. Where either a part of cause of action arises within its jurisdiction or where the defendant(s) reside(s) outside its jurisdiction, the High Court exercises this discretion at the threshold even before the plaint is received for being numbered as a suit. 33. Under Article 226(2) of the Constitution of India and Clause (c) to Section 20 of the Code of Civil Procedure, there is no question of leave. Suit or a Writ petition can be filed straight away if a part of cause of action arises within the Courts jurisdiction. Original side of the High Court is not governed by these provisions. 34. Relevant part of these provisions a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nstitutionality of a parliamentary Act was not be maintainable in the High Court of Delhi merely because the seat of the Union of India was in Delhi. On forum convenience, the Hon'ble Supreme Court held as follows:- "We must, however, remind ourselves that even if a small part of cause of action arises within the territorial jurisdiction of the High Court, the same by itself may not be considered to be a determinative factor compelling the High Court to decide the matter on merit. In appropriate cases, the Court may refuse to exercise its discretionary jurisdiction by invoking the doctrine of forum conveniens. [See Bhagat Singh Bugga v. Dewan Jagbir Sawhney [AIR 1941 Cal 670 : ILR (1941) 1 Cal 490] , Madanlal Jalan v. Madanlal [(1945) 49 CWN 357 : AIR 1949 Cal 495] , Bharat Coking Coal Ltd. v. Jharia Talkies & Cold Storage (P) Ltd. [1997 CWN 122] , S.S. Jain & Co. v. Union of India [(1994) 1 CHN 445] and New Horizons Ltd. v. Union of India [AIR 1994 Delhi 126]" 37. The Hon'ble Supreme Court merely held that a High Court may refuse to exercise its discretionary jurisdiction by invoking the doctrine of forum conveniens. Thus, there is no question of granting leave to file Writ ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ent. (2) The costs of all parties in a suit for a declaration brought by virtue of this section shall, unless for special reasons the court thinks fit to order otherwise, be paid by the plaintiff. (3) The validity of a claim of the specification of a patent shall not be called in question in a suit for a declaration brought by virtue of this section, and accordingly the making or refusal of such a declaration in the case of a patent shall not be deemed to imply that the patent is valid or invalid. (4) A suit for a declaration may be brought by virtue of this section at any time [after the publication of grant of a patent], and references in this section to the patentee shall be construed accordingly. 41. Section 104A of the Patent Act, 1970 is not concerned with Jurisdiction of the Court. It is concerned with burden of proof in case of a process patent as is evident from a reading of Section 104A of the Patent Act, 1970 which is reproduced below:- 104A. Burden of proof in case of suits concerning infringement- (1) In any suit for infringement of a patent, where the subject matter of patent is a process for obtaining a product, the court may direct the defendant to prove ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ever, the scope of review is very limited. It is perhaps for this reason, applications are filed under Clause 12 of Letter Patent and it has become the practice of the Court to entertain such application even though Clause 12 does not contemplate the revocation of leave. 48. In fact, the Calcutta High Court in Madanlal Jalan Vs. Madanlal, AIR 1949 Cal 495, which was cited by the learned counsel for the respondent, summarised the position of law based on the practice of other Charted High Courts including that of this High Court. In paragraph No.25, it has summarised as follows: "25. On a consideration of the legal principles established by the judicial decisions mentioned above it seems to me that balance of convenience is a material consideration in the exercise of discretion under cl. 12. From these judicial authorities the following propositions may, I think, be enunciated: (a) that an application lies for revoking leave granted under cl. 12 of the Letters Patent; (b) that such an application should be made at an early stage of the suit and delay and acquiescence may be a bar to such an application; (c) that if the application depends on difficult questions of law or fa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... bbiah). In para 14, this Court has held as follows: 14. In view of the dictum laid down in the above judgment, I am of the opinion that the submission made by the learned counsel for the applicant with regard to the territorial jurisdiction cannot be entertained. Further, I am of the opinion that the invoice dated 24.5.2006 (available at page No. 40 of the second additional typed set of documents) filed on the side of the respondents would show that they are marketing their product within the jurisdiction of this Court. Though it was contended by the learned counsel for the applicant that the said document cannot be taken as an authenticated document, the veracity and genuineness of the same could be gone into only at the time of trial and not at this stage. It is well settled principle that the averments made in the plaint alone should be taken into consideration in order to decide the jurisdiction at the earlier stage. In the instant case, the averments of the plaint would show that the plaintiffs are carrying on business within the jurisdiction of this Court and marketing their products are sufficient to maintain the suit before this Court. Further, I am of the opinion that th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... int otherwise discloses a part of cause of action had arisen within its jurisdiction. 53. Volume of Sale of offending products within the jurisdiction of this Court also cannot be decided in a summary manner based on the averments of the respondents/defendants as it is a matter of evidence. Facts further indicate that the 1st respondent/1st defendant undertook to furnish Bank Guarantee for Rs.50,00,000/- and had practically acquiesced into the jurisdiction of this Court, even though 1st respondent/1st defendant had already filed application to revoke the leave vide A.No.4916 of 2019 on 14.07.2019, yet it agreed for a consent order and agreed to furnish Bank Guarantee. 54. The decision of the Hon'ble Supreme Court in Dhodha House Vs. S.K.Maingi, (2006) 9 SCC 41, cited by the learned counsel for the respondents/defendants, again does not further their case. It was rendered in the context of Section 20 of CPC and the Copyright Act, 1957 and The Trade and Merchandise Mark Act, 1958, In Para 31, the Court held as follows: "A cause of action will arise only when a registered trade mark is used and not when an application is filed for registration of the trade mark. In a given case, a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... use of action in a given case both under the 1957 Act as also under the 1958 Act may be overlapping to some extent. The territorial jurisdiction conferred upon the court in terms of the provisions of the Code of Civil Procedure indisputably shall apply to a suit or proceeding under the 1957 Act as also the 1958 Act. Sub-section (2) of Section 62 of the 1957 Act provides for an additional forum. Such additional forum was provided so as to enable the author to file a suit who may not otherwise be in a position to file a suit at different places where his copyright was violated. The Parliament while enacting the Trade and Merchandise Marks Act in the year 1958 was aware of the provisions of the 1957 Act. It still did not choose to make a similar provision therein. Such an omission may be held to be a conscious action on the part of the Parliament. The intention of the Parliament in not providing for an additional forum in relation to the violation of the 1958 Act is, therefore, clear and explicit. The Parliament while enacting the Trade Marks Act, 1999 provided for such an additional forum by enacting sub-section (2) of Section 134 of the Trade Marks Act. The court shall not, it is we ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... court only because two causes of action joined in terms of the provisions of the Code of Civil Procedure, the same would not mean that thereby the jurisdiction can be conferred upon a court which had jurisdiction to try only the suit in respect of one cause of action and not the other. Recourse to the additional forum, however, in a given case, may be taken if both the causes of action arise within the jurisdiction of the court which otherwise had the necessary jurisdiction to decide all the issues. 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. 56. In Patel Field Marsahal (supra), however, we may notice that a subsequent development has taken place, namely, after the remand, a learned Single Judge of the Delhi High Court is said to have granted an order of injunction in favour of the plaintiff-respondent and the matter is pending before the Division Bench. As we have not expressed our views on the merit of the matter, it is needless to mention that the Di ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... encapsulates the concept that a cause of action arising within the jurisdiction of the Court would not itself constitute Court to entertain the matter. While exercising jurisdiction under Articles 226 and 227 of the Constitution of India, the Court cannot be totally oblivious of the concept of forum conveniens." 63. The Full Bench of this Court referred to the above passage in M/s.Duro Flex Pvt. Limited Vs. M/s.Duroflex Sittings System, in 2014 (5) L.W. 673 and observed as under:- "54.......In two eventualities, the question of obtaining prior leave would not arise, i.e., when the plaintiff resides within the jurisdiction of the Court, benefit conferred by Section 134(2) of the Trade and Merchandise Marks Act, 1958 and when the defendant resides within the jurisdiction of the Court. It is in the third eventuality which is material for the controversy. On the plea of the appellant that 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 whet ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e position be different when the Defendant, after service of the Writ of Summons, makes a substantive application complaining of inconvenience and hardship and prays for revocation of the leave? If our practice had been to give leave under cl. 12 on an application by the Plaintiff on notice to the Defendant, as it is or was in Madras, the Defendant would have had a chance, before the suit was received and admitted, to make out a case of inconvenience. Should a Defendant in our Court be deprived of that chance and be put in a worse position because our practice is to give leave ex parte? If questions of convenience are to be taken into consideration at the time leave is to be granted why should it not be considered when the Defendant applies for its revocation? I see no logic in differentiating between the two stages. The question, in my opinion, is the same at both stages, namely, should the Court allow the Plaintiff to proceed with his claim in this Court? The principles on which the answer to that question should be formulated must, therefore, be the same at both stages. I have endeavoured to show that according to our practice of giving leave ex parte, the main, if not the sole, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s "to find that forum which is the more suitable for trying the suit to meet the ends of justice, and is preferable because pursuit of the litigation in that forum is more likely to secure those ends. The onus lies on the defendant to show that there exists another forum which is more appropriate to try the action. The doctrine of Forum Non Conveniens was recognized in English law in the case of "The Atlantic Star Vs. Bona Specs, (1974) AC 436" by the House of Lords. The Latin tag Forum Non Conveniens is used to describe the principle that notwithstanding that an action has been properly brought before the Court, the Court has the power to stay the action as there exists another court having competent jurisdiction which is clearly and distinctly more appropriate to hear and determine the dispute in respect of which the action was brought within its jurisdiction. 68. In "The Blue Fruit, [1979] 2 M.L.J. 279, 280, the Singapore Court of Appeal led by Wee Chong Jin C.J. observed that "The authorities are clear that even though an action is well founded within the jurisdiction of the court there is always an inherent jurisdiction vested in the court whether to entertain such an action ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the [forum in which the plaintiff commenced proceedings]". 75. In De Dampierre Vs. Dampierre, [1988] A.C.92, the English Courts have effectively checked the evil, of "forum-shopping". It held that the proper approach is to take into account the content of the foreign law which would be applied in the more appropriate forum and measure it against the acceptable standards of civilised countries and thereby come to a conclusion as to whether the particular principle to be applied in the more appropriate forum is so barbaric such that the court should not stay the proceedings commenced with the jurisdiction. As longs as the foreign law to be applied in the more appropriate forum is not barbaric (measured against the laws of civilised countries) and as the plaintiff is consequently not denied substantial justice in the more appropriate forum, the court would stay the action commenced within the jurisdiction. 76. In Re Harrods (Buenos Aires) Ltd (No.2), [1991] 4 All E.R.348, the English Court of Appeal pointed out that after "The Spiliada", applications for stay of proceedings commenced within the jurisdiction were to be approached on the basis of a two-stage inquiry:- i. whether th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... inarily refuse a stay; (f) if there is another forum which prima facie is more appropriate the court will ordinarily grant a stay unless there are circumstances by reason of which justice requires that a stay should not be granted, and in this inquiry the court will consider all the circumstances of the case. But the mere fact that the plaintiff has a legitimate personal or juridical advantage in proceeding in the jurisdiction in which action has been commenced is not decisive; regard must be had to the interests of all the parties and the ends of justice. 78. In Brinkerhoff case referred to supra, the Court held that where there is a more appropriate forum, "a stay of the action would be ordered "unless there are circumstances by reason of which justice requires that a stay should not be granted, and in this inquiry the court will consider all the circumstances of the case." 79. If the defendant is not amenable to the other jurisdiction, the other jurisdiction cannot be said to be the more appropriate forum. The question therefore to be considered is whether there is another jurisdiction to which the defendant is amenable and is the forum conveniens? In answering this question ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... te or after notice to the defendants. In this case, we are of the view that this Court has jurisdiction to decide the lis between the parties in an action for infrigement of pattent. 83. The 1st to 3rd respondents/1st to 3rd defendants have not shown how other Courts are more appropriate to try the suit. Lengthy common counter filed by each of the 1st to 3rd respondents/1st to 3rd defendants has not addressed this issue. Even otherwise, there is insufficient material on record to show that jurisdiction of other courts was more appropriate than the jurisdiction of this court in the exercise of its original jurisdiction under Clause 12 of the Letters Patent. 84. We are therefore of the view that the following conclusions in the impugned order to revoke the leave already granted are not sustainable and are therefore liable to be set aside:- (i) The infinitesimally small part of cause of action namely the impugned product being sold in Chennai by the 4 th defendant, even assumed to be true, is not the pivotal issue which will determine the dispute.; (ii) Further, the plaintiff has not placed any prima facie material to show that the 4th defendant is the authorised dealer/Agent or ..... X X X X Extracts X X X X X X X X Extracts X X X X
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