TaxTMI 
TaxTMI 
TaxTMI 
2005 (12) TMI 529
X X X X Extracts X X X X
X X X X Extracts X X X X
....ght registered under the 1957 Act being registration No. A-5117 and A-5330 of 1970. The Appellant also claims it to be a prior user of the said trade mark and name and enjoys goodwill as well as reputation in respect thereof since 1960. It is not in dispute that the Appellant carries on business of sweet meats in the district of Ghaziabad whereas the Respondent carries on the similar business in the name and style of M/s. V.R.K. Todha Sweet House at Kotkapura in the district of Faridkot. The Appellant herein filed a suit before the District Judge, Ghaziabad wherein it also prayed for an order of injunction. The learned 1st Addl. District Judge, Ghaziabad by an order dated 17.1.1992 passed an order of injunction against the Respondent in the following terms: "Application 5-C is allowed to the extent that the OP/defendants, their servants, dealers, stockists, distributors, assigns, representatives and agents, are restrained during the pendency of the suit, from infringing the plaintiffs copyright existing in the art work/ label and wrapper, duly registered at Nos. A- 5117/70 and A-5330/70 under the Indian Copyright Act, 1957 by using these in the art work involved in defendant's la....
X X X X Extracts X X X X
X X X X Extracts X X X X
....iff's trade marks are being sold in Delhi. The alleged cause of action for filing the said suit has been averred in paragraph 30 which reads as under: "That the goods of the parties bearing the impugned trade marks are also sold in the Union Territory of Delhi. The Trade Marks Journals No. 823 dt. 16.9.83 and No. 876 dt. 1.12.85 and Journal No. 933 dt. 16.4.1988 were published in India by the Trade Marks Registry in respect of applications of the defendants for registration of the impugned trade marks, including the Union Territory of Delhi. Therefore, this Hon'ble Court has jurisdiction to entertain and try the present suit. Moreover, the jurisdiction of this Hon'ble Court is also attracted in view of Section 62(2) of the Copyright Act." The value of the suit for the purposes of court fee and jurisdiction was fixed at Rs. 200/- each in relation to reliefs (i), (ii), (iii), (iv) and (v). An application for injunction was filed by the First Respondent and by an order dated 28th September, 1995, the said application was rejected inter alia on the ground that the plaintiff has failed to prima facie show that the Delhi High Court had the territorial as also the pecuniary jurisdicti....
X X X X Extracts X X X X
X X X X Extracts X X X X
....of the suit is situate. Section 17 of the Code refers to the suits for immovable property within jurisdiction of different courts. Section 18 refers to place of institution of a suit where local limits of jurisdiction of courts are uncertain; whereas Section 19 of the Code contemplates suits for compensation for wrongs to person or movables, Section 20 of the Code, wherewith we are concerned in this case, provides that the suits which do not come within the purview of Sections 16 to 19 of the Code are to be instituted where the defendants reside or cause of action arises in the following terms : "20. Other suits to be instituted where defendants reside or cause of action arises.--Subject to the limitations aforesaid, every suit shall be instituted in a Court within the local limits of whose jurisdiction (a) the defendant, or each of the defendants where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain; or (b) any of the defendants, where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or persona....
X X X X Extracts X X X X
X X X X Extracts X X X X
....such a situation arises, the same would be permissible; but the same may not be relevant for the purpose of determining the question of a forum where such suit can be instituted. Sub-section (2) of Section 62 of the 1957 Act provides for a non-obstante clause conferring jurisdiction upon the district court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the persons instituting the suit or other proceedings, have been residing. In terms of sub-section (1) of Section 62, suit can be instituted and the proceedings can be initiated in respect of mattes arising under the said chapter for infringement of the copyright in any work or the infringement of any other right conferred thereunder. It does not confer jurisdiction upon a district court where the plaintiff resides,. if a cause of action arises under the 1958 Act. Order II Rule 3 of the Code provides that the plaintiff may unite in the same suit several causes of action against the same defendant, or the same defendants jointly. The said order contemplates uniting of several causes of action in the same suit. By necessary implication, a cause of action for infringement ....
X X X X Extracts X X X X
X X X X Extracts X X X X
....he jurisdiction of Delhi High Court; nor the advertisement published in a journal "Parwez" published from Ludhiana would confer such jurisdiction. But it was opined that having regard to the fact that an advertisement had appeared in the Trade Marks Journal as regard application for registration of the trade mark of the defendant therein, the Delhi High Court would have jurisdiction in the matter. A Letters Patent Appeal was preferred thereagainst, wherein the Division Bench of the High Court held : " Section 20 of the Code of Civil Procedure shows that a suit like the present can be filed wherever the cause of action wholly or partly arises. The plaintiff has prayed for an injunction regarding a threatened breach of a registered trade mark. The learned single Judge held that the Delhi Court does not have jurisdiction on the ground of any sale having been made in Delhi, but does have jurisdiction on account of the advertisement having appeared in the Trade Marks Journal. The real point which gives the Court jurisdiction is not the place where the advertisement has appeared, but the fact that the trade mark is sought for sale in Delhi amongst other places. Furthermore, when an inj....
X X X X Extracts X X X X
X X X X Extracts X X X X
....ng an integral part of the cause of action. So also the mere fact that it sent fax messages from Calcutta and received a reply thereto at Calcutta would not constitute an integral part of the cause of action" 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, an application for grant of registration certificate may or may not be allowed. The person in whose favour, a registration certificate has already been granted indisputably will have an opportunity to oppose the same by filing an application before the Registrar, who has the requisite jurisdiction to determine the said question. In other words, a suit may lie where an infringement of trade mark or copyright takes place but a cause of action for filing the suit would not arise within the jurisdiction of the court only because an advertisement has been issued in the Trade Marks Journal or any other journal, notifying the factum of filing of such an application. Strong reliance has also been placed on a recent decision of this Court in Exphar SA and Another v. Eupharma Laboratories Ltd. and Another [(2004) 3 SCC 688], w....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... not constitute a part of cause of action where the suit is one for passing off." It was further observed : "The argument advanced that registration if granted would date back to the date of application and that the plaintiff would have the right to seek amendment of the plaint to seek relief on the ground of infringement as well, is wholly irrelevant so far as the cause of action for bringing a suit for passing off is concerned. While it may be convenient to the plaintiff to institute a suit in a court where he may later on be able to bring a suit for infringement of the trade mark, that convenience of the plaintiff is in no way relevant for deciding as to whether a cause of action for filing a suit for passing off can be said to have arisen in a place where, the deceit alleged to have been practised by the defendant had in fact, not been practised within the jurisdiction of the court in which the suit is brought." The views expressed therein have our concurrence. [See also Gold Seal Engineering Product Pvt. Ltd. & Ors. v. Hindusthan Manufacturers and Ors. AIR 1992 (Bombay) 144] The Allahabad High Court in the impugned judgment held : "In the present case a bare perusal of t....
X X X X Extracts X X X X
X X X X Extracts X X X X
....orial jurisdiction of this Court." It was held that although in Dodha House (supra) Tata Oil Mills (supra) was noticed but had not been distinguished on cogent grounds, the former was not followed. The Delhi High Court, as noticed hereinbefore, however, did not advert to the third contention raised therein saying that the question as to whether the defendants had been selling its product on a commercial scale at Delhi was a question of fact and, thus, was required to be properly determined in case evidence is led by the parties. The short question which arises for consideration is as to whether causes of action in terms of both the 1957 Act and the 1958 Act although may be different, would a suit be maintainable in a court only because it has the jurisdiction to entertain the same in terms of Section 62(2) of the 1957 Act? A cause 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 19....
X X X X Extracts X X X X
X X X X Extracts X X X X
....that the following three conditions should be satisfied, namely :- "(1) The agent must be a special agent who attends exclusively to the business of the principal and carries it on in the name of the principal and not a general agent who does business for any one that pays him. Thus, a trader in the mufassil who habitually sends grain to Madras for sale by a firm of commission agents who have an independent business of selling goods for others on commission, cannot be said to "carry on business" in Madras. So a firm in England, carrying on business in the name of A.B. & Co., which employs upon the usual terms a Bombay firm carrying on business in the name of C.D. & Co., to act as the English firm's commission agents in Bombay, does not "carry on business" in Bombay so as to render itself liable to be sued in Bombay. (2) The person acting as agent must be an agent in the strict sense of the term. The manager of a joint Hindu family is not an "agent" within the meaning of this condition. (3) To constitute "carrying on business" at a certain place, the essential part of the business must take place in that place. Therefore, a retail dealer who sells goods in the mufassil cannot be....
X X X X Extracts X X X X
X X X X Extracts X X X X
....tel Field Marshal (supra) again the thrust was on the sale of products and/or advertisement by the Appellant for registration of trade marks in the Trade Marks Journal and other local papers. The Division Bench of the High Court, as has been noticed hereinbefore, did not advert to the issue as to whether the defendant had been selling its product in Delhi on commercial scale or not. It is, therefore, not necessary for us also to dilate further on the said question. We have furthermore noticed hereinbefore that the advertisement appearing in a journal or newspapers by itself would not confer any jurisdiction on the court, if it otherwise did not have any. In this case, the Delhi High Court could not have invoked its jurisdiction in terms of the 1957 Act. The primary ground upon which the jurisdiction of the original side of the High Court was invoked was the violation of the 1958 Act, but in relation thereto, the provisions of sub- section (2) of Section 62 of the 1957 Act could not be invoked. The plaintiff was not a resident of Delhi. It has not been able to establish that it carries on any business at Delhi. For our purpose, the question as to whether the defendant had been sel....