2001 (7) TMI 1314 - HC - Indian Laws

Jurisdiction not based on Registrar's office location for trademarks; cause of action key.

The court rejected the argument that jurisdiction is based on the location of the Registrar's office for trade marks. It clarified that filing a trade ... - Issues Involved:Jurisdiction of the court based on the location of the Registrar's office for trade marks, relevance of filing an application for registration in a passing off suit, distinction between passing off and infringement actions, cause of action in passing off suits, relevance of deceit in passing off actions, the importance of proving registration in infringement suits, and the impact of distance between locations on jurisdiction.Jurisdiction of the Court Based on Registrar's Office Location:The plaintiff sought leave to sue for an injunction against passing off by the defendant, claiming a part of the cause of action arose in Chennai due to filing a trade mark registration application there. The defendant challenged this, leading to an appeal. The argument that the cause of action arises where the Registrar's office is located was rejected, emphasizing that the location of the Registrar's office is not determinative of the cause of action.Relevance of Filing Application for Registration in Passing Off Suits:The plaintiff argued that filing a trade mark registration application establishes a cause of action for passing off. However, the court clarified that the action for passing off is distinct from registration and can be pursued independently. The plaintiff's failure to apply for registration does not affect their right to seek relief in a passing off suit.Distinction Between Passing Off and Infringement Actions:The court highlighted the difference between passing off and infringement actions. While registration is crucial in infringement cases, it is irrelevant in passing off suits. The plaintiff's actions regarding registration do not impact their ability to claim passing off.Cause of Action in Passing Off Suits:In passing off suits, the cause of action is based on deceit by the defendant in misrepresenting their goods as those of the plaintiff. This deceit must be proven with evidence, and the cause of action arises where the deceit occurs, not necessarily where administrative actions like filing for registration take place.Importance of Proving Registration in Infringement Suits:For infringement suits, registration is essential, and the failure to prove registration can lead to dismissal. In passing off suits, however, registration is not a prerequisite, and the plaintiff's registration status does not affect the cause of action for passing off.Impact of Distance Between Locations on Jurisdiction:The argument that proximity between locations should influence jurisdiction was dismissed. The court emphasized that the cause of action, not convenience or distance, determines jurisdiction. Merely being close to a jurisdiction does not establish a cause of action in that location.This judgment clarifies the distinct requirements for passing off and infringement actions, emphasizing that registration is vital in infringement cases but not necessary for passing off suits. The cause of action in passing off suits is based on deceit, irrespective of administrative actions like filing for registration. The location of the Registrar's office does not determine jurisdiction, and proximity between locations is irrelevant in establishing a cause of action.