:1: IN THE HIGH COURT OF JUDICATURE AT BOMBAY IN THE HIGH COURT OF JUDICATURE AT BOMBAY IN THE HIGH COURT OF JUDICATURE AT BOMBAY O.O.C.J. O.O.C.J. O.O.C.J. NOTICE OF MOTION NO. 1175 OF 2000 NOTICE OF MOTION NO. 1175 OF 2000 NOTICE OF MOTION NO. 1175 OF 2000 IN IN IN SUIT NO. 1423 OF 2000 SUIT NO. 1423 OF 2000 SUIT NO. 1423 OF 2000 International Association of Lions Club ...plaintiff vs. National Association of Indian Lions and Ors. ...Defendants. Mr. T.N. Daruwalla with Ms. Sushma Singh and Ms. Blossom Noronha i/b. Jehangir Gulabbhai abd Bilimoria and Daruwala for the plaintiffs. Rajesh Shah a/w. Harakchand Gada i/by. Harakchand and Co. for the defendants. CORAM: S.U.KAMDAR, J. CORAM: S.U.KAMDAR, J. CORAM: S.U.KAMDAR, J. DATED: 25TH JANUARY, 2006. DATED: 25TH JANUARY, 2006. DATED: 25TH JANUARY, 2006. JUDGMENT : JUDGMENT : JUDGMENT : 1. By an order dated 16.10.2002 this court has formulated a preliminary issue of jurisdiction under section 9A of the CPC as amended for the State of Maharashtra. The issue framed is as under : Does the plaintiff prove that this court has jurisdiction to try the present suit ? :2: 2. After framing the issue of jurisdiction by an order dated 23.6.2005 this court directed that the evidence be recorded on the issue of jurisdiction and a Commissioner was appointed to record the oral evidence of both sides. Accordingly, Mr. Vatsal Shah advocate was appointed as Commissioner. The Commissioner has concluded the evidence and has filed his report. The same is taken on record in accordance with the order passed by this court on 23.6.2005. Before dealing with the motion on merits I shall deal with the issue of jurisdiction and accordingly I have heard the parties on the issue of jurisdiction. Some of the material facts of the present case are as under : 3. The present suit is filed by a club known as ‘Lions Club International’ against the defendant who are claiming themselves to be a National Association of Indian Lions’. By the present suit the plaintiffs are seeking that the :3: defendant should be restrained by an order and perpetual injunction from in any manner using the word ‘LION’ or ‘LEOS’ or any other registered trade mark or service mark or any other word or mark identical with or deceptively similar thereto with that of the name of the plaintiff. In prayer (b) of the plaint an injunction is sought from restraining the defendant from carrying out their activities as a LIONS Club or any other associated club. In prayer (c) an injunction is sought on the basis of registered trade mark. In prayer (d) injunction is sought against using any domain name with the use of the words ‘LIONS’ therein. By prayer (e) copy right infringement is also sought inrespect original artistic work of the word ‘LION’ with the emblem as set out in Exhibit-M to the plaint. Thus the suit is filed both for an infringement of trade mark as well as for passing off as well as for the purpose of passing off a copy right and infringing the rights of the plaintiff in the said art work associated with the words ‘LIONS’ and ‘LEOS’ :4: 4. An application is also filed under clause 14 of the Letters Patent of this court for joinder of two distinct cause of action of passing off as well as of breach of copy rights. Leave under Clause 14 has not been yet granted by this court because of raising of issue of jurisdiction by the defendant and framing of the same as a preliminary issue under section 9A of the CPC as amended for the State of Maharashtra. 5. Learned counsel for the defendant who has raised the issue of jurisdiction has inter-alia contended that this court has no jurisdiction firstly because the defendants are neither residents nor carrying on any business within the territorial jurisdiction of this court and that the association of the defendants i.e. National Society of Indian Lions is registered under the Rajasthan Societies Act, 1958 and its registered office at 1,502, Ramble Road, Ajmer 305 001, Rajasthan, India. It has been contended that the area of operation of the defendant no.5 is :5: restricted only in the city of Rajasthan and not outside the said state. It has been further contended that the Memorandum of Association and Articles of Association of the defendant no.5 inter-alia stipulates that the area of operation of the defendant no.5 is only in the state of Rajasthan and not outside thereto. It has also been contended that the other defendants to the suit some of whom are the members of the defendant no.5 association also have their residence in Ajmer i.e. within the State of Rajasthan and they are neither residing nor carrying on any business within the territorial jurisdiction of this court. It has been thus contended that this court has no jurisdiction to entertain and try the present suit. It has been further contended that in the light of the fact that the entire activity of the defendant no.5 is restricted in the state of Rajasthan and that the Articles of Association and Memorandum of Association or constitution of the 5th defendant Association being providing for activities only within the state of Rajasthan no part of cause of :6: action has arisen in Mumbai and therefore this court has no jurisdiction to entertain and try the present suit. It has been further contended that none of the goods of the defendant no.5 which are having Lion as the name or emblem thereof on T-Shirts or other articles is either sold or distributed or made available in the city of Mumbai and therefore also there is no question of any passing off of any goods within the territorial jurisdiction of this court and therefore this court has no jurisdiction to entertain and try the present suit. In support of the aforesaid contention the learned counsel appearing for the defendants has also drawn my attention to the various part of evidence of the parties before me. He has contended that the only evidence which has been produced by the plaintiff to show that this court has jurisdiction in the course of examination in chief of P.W.No.1 is found in para 31, 32 and 35 thereof. He has contended that this evidence of P.W. no.1 itself indicates that this court has no jurisdiction to entertain and try the suit. :7: He contended that from deposition of P.W.no.1 itself it is established that the alleged infringement or passing off or breach of copy rights has taken place only in Ajmer and not within the territorial jurisdiction of this court in Mumbai. He contends that in para 31 of the evidence it has been stated that the plaintiff has obtained a pamplet in Hindi from Ajmer office of the defendant. In para=32 he has stated that the defendants address given is also of Ajmer. In para-35 he has pointed out that the defendant no.1 is a joint chairman of the District Club at Ajmer and in para-36 once again it has been deposed that originally the said club has started only in Ajmer and not outside. He has further pointed out that even in para-35 of the cross examination he has deposed that the plaintiffs have a club affiliated to them in Rajasthan but he does not know whether the defendant have any branch in Mumbai. He has further deposed that he does not known whether the defendants have any activity in Mumbai. In para-16 of the cross-examination he has positively deposed :8: saying that the defendant no.5 is a registered society and it is registered in Ajmer and Rajasthan under the Rajasthan Societies Act, 1958. Further he has deposed that he is not aware of the bye-laws of the defendant no.5 or the constitution of the defendant no.5. Similarly he has relied upon the evidence of the witness of the defendant being D.W. no.1 particularly para-4 to 8 of his examination-in-chief. In para-4 to 8 of his examination-in-chief he has given details that the defendant no.5 is a society registered under the Rajasthan Registration Society Act, 1999. The said society is registered on 18.2.2000 and he has produced the certificate of registration. D.W.No.1 has also produced the constitution of defendant no.5 and english translation thereof. He has also produced the bye-laws. In para-8 of his cross-examination he has deposed that the defendant no.5 and its members are providing only social service to the people residing in the State of Rajasthan and are not carrying any manufacturing and or any business or distribution :9: activities at all. He has further deposed that he has neither carried out any trade or sold either in Ajmer or in Rajasthan or in Mumbai any of the articles or things with the aforesaid name of Lion or Leos or any emblem thereof. In so far as the web-site is concerned, D.W. no.1 has deposed that the defendant no.5 society never had its own website or never published its pamplet showing the emblem. Relying upon the aforesaid evidence the learned counsel for the defendant has vehemently contended that the suit is not maintainable in this court as this court has no territorial jurisdiction to entertain and try the present suit. He has further contended that no leave under clause-14 can be granted to the plaintiffs for entertaining the present suit. He thus invited me to dismiss the suit for want of jurisdiction. 6. Learned counsel for the defendant thereafter contended that admittedly this court has no jurisdiction for passing off action because none of the goods belonging to the :10: defendant with the emblem mark or with the picture of Lion is sold or distributed within the territorial jurisdiction of this court and therefore the passing off of copy rights filed by the plaintiff by way of the present suit is not maintainable. He has further contended that even a suit for breach of copy rights is not maintainable because according to him in deposition of cross-examination of P.W.No.1, P.W. No.1 has deposed as under : . "It is true that the Emblem on page 10 of the plaint is used by the plaintiffs since 1921. To the best of my knowledge the plaintiffs are claiming copyright of the said emblem. The plaintiffs do not claim copyright in respect of any other emblem other than the emblem shown on page 10 of the plaint. " 7. He has contended that thus by virtue of the said deposition it has been established that the plaintiff had registered their mark for copy right in 1921. He has contended that under section 29 of the Copy Right Act, 1957 registration in cases of an international :11: organisation to which the provisions of Section 41 apply can subsist only for a period of 60 years from the beginning of the calendar year next following the year in which the work is first published. It is contended by the learned counsel for the defendant that in view of the deposition in para 19 of the P.W. no.1 it is clear that the copy right was registered in 1921. The next calendar year is 1922 and therefore according to him in 1982 the said copy right registration has lapsed and thus the suit on the basis of infringement or breach of copy rights or a passing off a design of the plaintiff inrespect of copy right cannot at all subsist and thus for the purpose of clause 14 of the Letters Patent according to the learned counsel for defendant no.5 a suit inrespect of passing off of the copy right design must be dismissed. 8. Learned counsel for the plaintiff has on the other hand contended that this court must grant leave under Clause 14 of the Letters Patent. He has contended that in Clause 14 a :12: joinder of cause of action for passing off trade mark or copy right is permissible. He has further contended that even in respect of any one of the causes of action if that cause of action has arisen within the territorial jurisdiction of this court than by virtue of grant of leave under Clause 14 this court can entertain the whole suit even inrespect of that part of cause of action which did not arise within the territorial jurisdiction of this court. It has been contended that in the present case on admitted facts a cause of action or passing off copy rights does arise within the territorial jurisdiction of this court. Inrespect of the aforesaid contention the learned counsel has relied upon the deposition of P.W.No.2. P.W.No.2 has deposed that he sought to access the website from Bombay and infact he sent an e-mail requesting that he be enrolled as a member of the defendant no.5 club. He has further pointed out in his deposition that the in reply to his email message he received a message and was asked to access the website from where he could get the :13: admission form for the purpose of enrollment. This evidence of P.W.no.2 on behalf of the plaintiff itself in para 2 to 5 of his evidence has almost gone unchallenged. Though he is cross examined by the defendant nothing much has been achieved except the question no.18 in which he was asked how does he say that the people from Bombay can apply for membership to which he has replied that people from Bombay can apply by accessing the website www.indian lions.org.bizli.com. Apart from that one question no cross examination has been conducted. Not only that in his evidence the P.W.NO. 2 specifically mentioned that he had sent an email to defendant no.3. There is no dispute that defendant no.3 is a member of the defendant no.5 association. He has also deposed that defendant no.3 asked him to access the said website and become a member. Inrespect of the aforesaid the defendants have not lead the evidence of the defendant no.3 because he did not step in the witness box. It was necessary to examine him in the light of the evidence of P.W. no.2. Thus :14: according to the plaintiff it has been established that by and through the website www.indianlions.org the defendants are committing breach of the design and logo of the plaintiff as this design and logo can be accessed even in Mumbai. Further more it has been contended that through website the defendant no.5 is carrying on its activities in Mumbai by enrolling the members within the city of Mumbai. He has further produced in the course of the evidence the visiting card of one of the persons namely Mr. T.G. Gala who is using the LION emblem with the word ‘Indian Lions’ and is residing in Bombay. It his case that thus the defendants are infact carrying on activities in city of Mumbai. In so far as the said visiting card is concerned the objection has been raised that the visiting card is not proved in the course of his evidence because it was not relied upon in affidavit of documents. Apart therefrom there is no other challenge to the said visiting card. Learned counsel for the plaintiffs thus states that he is able to establish that this court has :15: jurisdiction inrespect of the cause of action for passing off of copy right and once it is so then the plaintiff is entitled to maintain the present suit. Learned counsel for the plaintiff has thereafter relied upon the provisions of section 62 of the Copy Right Act in which it is inter-alia mentioned that any proceedings can be instituted under the Act inrespect of the infringement of copy right in the district court having jurisdiction. Under sub-section 2 of section 62 it has been explained that the word ‘district court’ means within the local limits of whose jurisdiction at the time of institution of suit or other proceedings the person instituting the suit or other proceedings or where there are more than one persons and any one of them actually or voluntarily resides or carries on business or personally works for gain. It has been contended by the learned counsel for the plaintiff that in the present case under sub-section 2 the plaintiffs are having their office in Bombay and that their activities are carried out in Mumbai and therefore under section :16: 62(2) they are entitled to maintain the suit in this court because it is the plaintiffs who have instituted the suit and that they carried out the business for gain in Mumbai. It is therefore contended that the plaintiffs are carrying out business in Bombay and therefore they can maintain the suit on infringement and or passing off of copy right in Bombay. It has been contended that once the case of the plaintiffs for infringement and passing off of copy rights of the design falls within the city of Bombay then this court has jurisdiction to entertain and try the present suit and by virtue of clause 14 of the Letters Patent they are entitled to join the cause of action even inrespect of passing off of the trade mark and or infringement thereof in this court. Learned counsel for the plaintiff has relied upon the decision of the single judge of this court in the case of Burroughs Wellcome Burroughs Wellcome Burroughs Wellcome (India) Ltd vs. G.K. Sharma and King Scientific (India) Ltd vs. G.K. Sharma and King Scientific (India) Ltd vs. G.K. Sharma and King Scientific Research Centre reported in 1990(1) PLR 60 Research Centre reported in 1990(1) PLR 60 Research Centre reported in 1990(1) PLR 60 particularly para-3 and 5 thereof which reads as particularly para-3 and 5 thereof which reads as particularly para-3 and 5 thereof which reads as under : under : under : :17: 3. The motion was called out for hearing before me on March 9,1989 and Shri Desai, learned counsel appearing on behalf of the defendants, raised a preliminary objection to the maintainability of the suit in this court on the ground that this court has no jurisdiction to entertain and grant the relief. Shri Desai contended that the defendants, on the date of the filing of the suit, did not carry on any business within the jurisdiction of this court. Shri Desai claimed that though initially the defendants had maintained an office at Kandivali in bombay for the purpose of facilitating purchase of raw materials, the same was closed down in March or April 1988 and thereafter the defendants are carrying on business only at Kota in Rajasthan, Shri Mehta, learned counsel appearing on behalf of the plaintiffs, on the other hand, urged that the cartons used by the defendants even now show that the business was carried out at Kandivali, Bombay. The hearing of the motion was postponed to ascertain whether in fact the defendants are even now having office at Kandivali. There is no dispute that in respect of cause of action arising out of the infringement of copy right, this court has jurisdiction under Section 62 of the Copy Right Act. The plaintiffs complaining of violation of copyright can institute suit at the place where the plaintiffs are residing or carrying on business. The jurisdiction of this court was challenged only in respect of cause of action arising out of infringement of trade mark and grievance about passing off. On the same day i.e. March 9, 1989 Misc. Petition no. 13 of 1989 filed by the plaintiffs seeking leave under Clause XIV :18: of the Letters Patent, permitting the plaintiffs to combine the causes of action pertaining to the infringement of the trade mark and passing off with the cause of action pertaining to the infringement of Copy Right. The petition was accepted on the same day and notice was issued to the defendants and direction was given that this petition should be heard along with the Notice of Motion. Accordingly, both the proceedings are now posted before me for hearing and final disposal. 5. The defendants had commenced sale in the year 1985 and the sales are restricted to State of Rajasthan and the annuals sale figure does not exceed Rs.22,262/- from the year 1986 onwards. The submission of Shri Desai that as the drug is sold only in Rajasthan and, therefore, there is no chance of deception cannot be accepted because the preparation of the plaintiff is sold all over India and there is no prohibition for the defendants to do the same. 9. He has thereafter relied upon the judgment of the division bench in the case of M/s. Arte M/s. Arte M/s. Arte Indiana, Mumbai vs. M/s. P. Mittulaul Shah and Indiana, Mumbai vs. M/s. P. Mittulaul Shah and Indiana, Mumbai vs. M/s. P. Mittulaul Shah and Sons, Madras reported in AIR 1999 Bom. 369 para- Sons, Madras reported in AIR 1999 Bom. 369 para- Sons, Madras reported in AIR 1999 Bom. 369 para- 3 and 12 thereof which reads as under. 3 and 12 thereof which reads as under. 3 and 12 thereof which reads as under. 3. In view of claims in the plaint about the infringement of trademark and passing off, the appellant filed an application under Clause (14) of the :19: Letters Patent seeking leave of the court to combine the cause of action relating to copyright and the cause of action relating to infringement and passing off. The leave has been declined by learned single judge. In terms of the impugned order, learned single judge has held that no part of the cause of action has arisen within the territorial jurisdiction of this court. The learned single judge has opined that Clause (14) provides that leave can be granted by this court for joinder of causes of action provided one of such causes of action has arisen within the jurisdiction of this court. Clause 14 reads as under : "14. And we do further ordain that where plaintiff had several causes of action against a defendant, such causes of action not being for land or other immovable property, and the said High Court shall have original jurisdiction in respect of one of such causes of action, it shall be lawful for the said High Court to call on the defendant to show cause why the several causes of action should not be joined together in one suit, and to make such order for trial of the same as to the said High Court shall seem fit." . A bare reading of the aforesaid clause shows that the accrual of the cause of action within the territorial jurisdiction of this court is not contemplated to permit joinder of causes of action. Clause (14) contemplate that this court shall have original jurisdiction inrespect of one of such causes of action to permit two separate causes of action being combined together in one suit. The learned single judge has, however, come to the conclusion that if right to sue has been conferred by an :20: act of Parliament and it is because of conferring of such right that a suit can be maintained, then it cannot be said that the right to sue is pursuant to ordinary original jurisdiction of this court as conferred by the Letters Patent. It has been also observed that the expression ‘original jurisdiction’ has been used to distinguish it from the extraordinary jurisdiction conferred by Clause (13) of the Letters Patent. . The aforesaid are the brief facts under which the present Appeal has been preferred by the appellant. We may now notice some judgments relevant for decision of the point in issue. A Division Bench OF this court in Tukojirao Holder v. Sowkabai [reported in AIR 1929 Bom.100] while considering Clauses(12) and (14) of the Letters Patent and the provision of Order 2, Rules 3 and 34, Civil Procedure Code, has held that what is relevant is that once cause of action is within the jurisdiction of this court. In the present case the