Trade mark infringement by advertisement and territorial jurisdiction can arise where the mark is circulated and registered in the forum.

Publication of an advertisement using an impugned trade mark in a newspaper circulated in Madras was treated as infringing use because it could mislead the public into believing the goods were connected with the trade mark owner. The court also held that part of the cause of action arose in Madras for territorial jurisdiction under Clause 12 of the Letters Patent, since the registered trade mark was located there and was used and exploited there. Actual sale in Madras was not necessary. Leave to sue was therefore maintainable and the refusal of leave was set aside.

---

---

Issues: (i) Whether publication of an advertisement using the impugned mark in a newspaper circulated in Madras amounted to infringement of the appellant's trade mark; (ii) whether any part of the cause of action arose within Madras so as to confer territorial jurisdiction under Clause 12 of the Letters Patent.

Issue (i): Whether publication of an advertisement using the impugned mark in a newspaper circulated in Madras amounted to infringement of the appellant's trade mark.

Analysis: An advertisement using a mark may itself constitute infringement when it is calculated to induce the public to believe that the advertised goods are connected with the mark-holder. The circulation of the impugned advertisement in Madras was treated as a relevant infringing act because it was capable of misleading customers and affecting the appellant's trade mark rights.

Conclusion: Yes. Publication of the advertisement in Madras amounted to infringement of the appellant's trade mark.

Issue (ii): Whether any part of the cause of action arose within Madras so as to confer territorial jurisdiction under Clause 12 of the Letters Patent.

Analysis: Cause of action consists of the material facts necessary to support the claim, including the plaintiff's registered trade mark rights and their alleged infringement. Since the trade mark was registered at Madras and the mark was used and exploited there, the situs of the property was treated as being in Madras. The court held that infringement could arise partly where the advertisement was circulated and partly where the mark was registered and situated, so the absence of actual sale in Madras did not defeat jurisdiction.

Conclusion: Yes. A part of the cause of action arose in Madras and the court had territorial jurisdiction.

Final Conclusion: The order refusing leave to sue was set aside, and leave was held maintainable because both infringement by advertisement and part of the cause of action were established within Madras.

Ratio Decidendi: In a trade mark infringement action, circulation of an infringing advertisement within the forum can itself constitute infringement and furnish part of the cause of action, and the place where the registered trade mark is situated may also be relevant for territorial jurisdiction.

---