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2008 (5) TMI 614
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....amily with a yellow background. • Above these two features there is a legend within a blurb mentioning the fact that this is a new pack. • The column immediately next to it contain the same features in the Devnagri script. • A third column sets out the details including Composition, Weight, MRP and Manufacturers Name etc. • The top half of the third column contains an oval shaped device containing a diagrammatic representation of the herbs that constitute the ingredients of Plaintiffs product." 4. It was alleged that the said carton constituted an 'artistic work' within the meaning of Section 25-C of the Copyright Act, 1957 (the 1957 Act). Respondent is said to have been using an identical colour scheme lay out, arrangement of features and get up as that of the plaintiffs, the essential features whereof are : • "One column has the words RED TOOTH POWDER within a yellow blurb. • A column which contains the representation of a family in an oval shape picture. • There is a similar representation in the Devnagri script in another column. • The details of the product are set out in....
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....the respondent was selling goods in Delhi. We agree with the aforesaid findings and conclusions recorded by the learned Single Judge. Accordingly, we find no merit in the submissions of the counsel appearing for the appellant that the composite suit of infringement of copyright and passing off would lie in the same forum. We also do not find any error in the judgment of the learned Single Judge as in our considered opinion so far the relief for passing off is concerned, the same is covered by the decision of the Supreme Court in Dhodha House case." 9. Mr. Fali S. Nariman, learned senior counsel appearing on behalf of the appellant, submits that the Division Bench of the High Court committed a serious error in passing the impugned judgment in so far as it failed to take into consideration the effect of a consolidated suit under the 1957 Act as also the Trade Marks Act, 1958 (for short 'the 1958 Act'), as would be evident from the following excerpts of Dhodha House (supra) : "22. We are not concerned in this case with the maintainability of a composite suit both under the 1957 Act and the 1958 Act. Indisputably, if such a situation arises, the same would be permissible; but the....
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....of a court which was not conferred by the statute. For the purpose of attracting the jurisdiction of a court in terms of sub-section (2) of Section 62 of the 1957 Act, the conditions precedent specified therein must be fulfilled, the requisites wherefor are that the plaintiff must actually and voluntarily reside to carry on business or personally work for gain." 10. Learned counsel would contend that the jurisdiction of the court to entertain a composite suit under the 1957 Act and the 1958 Act should be determined having regard to the provisions of Section 55 of the former. Then term 'Law' within the meaning of the said provision, it was submitted, would not only include a statute law but also the common law and, thus, viewed from that perspective a composite suit for infringement of a copyright as also passing of shall be maintainable. Strong reliance in this behalf has also been placed on Exphar Sa & Anr. v. Eupharma Laboratories Ltd. & Anr. [(2004) 3 SCC 688]. 11. Mr. Shailen Bhatia, learned counsel appearing on behalf of the respondent, on the other hand, would submit that this Court in Dhondha House (supra) categorically held that the cause of action for infringement....
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.... for infringement of a trade mark, the infringement complained of is in relation to a certification trade mark; or (b) where in a suit for infringement the defendant satisfies the court-- (i) that at the time he commenced to use the trade mark complained of in the suit he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was on the register or that the plaintiff was registered user using by way of permitted use; and (ii) that when he became aware of the existence and nature of the plaintiffs right in the trade mark, he forthwith ceased to use the trade mark in relation to goods in respect of which it was registered; or (c) where in a suit for passing off the defendant satisfies the court-- (i) that at the time he commenced to use the trade mark complained of in the suit he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was in use; and (ii) that when he became aware of the existence and nature of the plaintiffs trade mark, he forthwith ceased to use the trade mark complained of." 14. We may also at this stage notice the provisions of the Trade Marks Act, 1999, (for short, '199....
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....opined that the said provisions relate to pecuniary jurisdiction. The said jurisdiction, however, can be exercised only in the event the court has otherwise jurisdiction in respect of the cause of action wherefor the action has been brought. 17. The learned Single Judge noticed some precedents and opined :- "13. Normally, I would have felt myself bound by the aforesaid two judgments which are not only of this court but relate to same subject matter, namely, joining of two causes of action under trademark and copyright law. Even if I hold different opinion, the normal course of action would have been to refer the matter to the Division Bench. However, this is not necessary in the instant case in view of the fact that the controversy now stands settled by the Supreme Court in Dhodha House (supra)." 18. The Division Bench of the High Court on the other hand while holding that the High Court has jurisdiction to adjudicate and decide upon the relief of infringement of copyright observed that it would be open to the appellant to file a fresh suit in the court of competent jurisdiction in respect of its action for passing off and thus the plaint is required to be returned for fil....
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....sdiction 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." 22. What would, however, be the nature of composite suit, was also be taken note of. The Court observed :- "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." It is in the aforementioned context, submission of Mr. Nariman that a composite suit would be maintainable having regard to sub-section (1) of Section 55 of the 1957 Act must be considered. 23. Sub-section (1) of Section 55 of 1957 Act provides for the remedies in terms whereof the plaintiff shall be entitled to all reliefs by way of injunction, damages, accounts and otherwise as are or may be conferred by law for the infringement of a right. I....
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....on, the provisions of the Code would be applicable. 1957 Act being a special law would, thus, prevail over the general law, viz., the Code. 26. Exphar Sa (supra) cannot be said to have any application in the instant case. The question which arose for consideration therein was as to whether the jurisdiction of a court under sub-section (2) of Section 62 of the 1957 Act is wider than that of the court specified under the Code of Civil Procedure and thus a person instituting a suit having any claim on the ownership of the copy right which has been infringed, would not be a ground for holding that he would not come within the purview of subsection (2) Section 62 of the 1957 Act, as he had been served with a 'cease and desist' notice, opining :- "13. It is, therefore, clear that the object and reason for the introduction of sub-section (2) of Section 62 was not to restrict the owners of the copyright to exercise their rights but to remove any impediment from their doing so. Section 62(2) cannot be read as limiting the jurisdiction of the District Court only to cases where the person instituting the suit or other proceeding, or where there are more than one such persons, any of ....