IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED : 22-08-2008 CORAM THE HONOURABLE MR. JUSTICE P.K. MISRA AND THE HONOURABLE MR. JUSTICE K. MOHAN RAM O.S.A.NOs.377 & 378 OF 2001 M/s. Perfect Automotive Components, 216, Hans Bhawan, Bahadur Shah Zafar Marg, New Delhi 110 002. .. Appellant in OSA.No.377 of 2001/ Defendant in C.S.No.534/93 M/s. Pricol Lubricants (India) Pvt. Ltd., 216, Hans Bhawan, Bahadur Shah Zafar Marg, New Delhi 110 002. .. Appellant in OSA.No.378 of 2001/ Defendant in C.S.No.535/93 Vs. M/s. Premier Instruments & Controls Ltd., No.6, Church Lane, Ritherdon Road, Vepery, Madras 7. Rep by the Company Secretary Mr.V. Srinivasan .. Respondent in both OSAs/ Plaintiff in both C.S. Appeals filed under Order 36 Rule 1 of the O.S. Rules and Clause 15 of the Letters Patent against the common judgment dated 3.2.2000 passed in C.S.Nos.534 & 535 of 1993 passed by the learned single Judge. For Appellant in : M/s.V. Nataraj both OSAs B. Giridhar Rao For Respondent in both OSAs : Mrs. Gladys Daniel https://hcservices.ecourts.gov.in/hcservices/ COMMON JUDGMENT P.K. MISRA, J These two appeals were heard earlier and judgment was reserved in 2007. However, the judgment could not be prepared and pronounced earlier on account of the posting of the concerned Judges at Madurai at different times and the resultant dislocation of the relevant files. Thereafter, the matter was again listed for hearing on 24.3.2008, on which date the counsels for both the parties were heard at length and the matter was reserved for judgment. Subsequently, the counsels for the parties have also filed their written submissions. 2. O.S.A.No.377 of 2001 is filed by M/s. Perfect Automotive Components, the sole defendant in C.S.No.534 of 1993. O.S.A.No.378 of 2001 is filed by M/s. Pricol Lubricants (India) Pvt. Ltd., the sole defendant in C.S.No.535 of 1993. Both the above suits were brought by Premier Instruments & Controls Limited, a private limited company, the common respondent in both the appeals. Such plaintiff company, originally named as Premier Instruments Coimbatore Limited, was incorporated on 6.3.1972. Subsequently, it was renamed as Premier Instruments & Controls Limited as per the Certificate of the Registrar of Companies dated 4.1.1983. Plaintiff is a manufacturer of Automotive Instruments and accessories and it has subsequently diversified into electronics and mechanic tools. Immediately after the formation of the company, the word Trademark 'PRICOL' was coined for marketing the products. Such expression is an invented word as an acronym of the plaintiff's name by using the letters 'PR' from 'Premier', 'I' from 'Instruments', 'CO' from 'Coimbatore' and 'L' from 'Limited'. Such trademark is written in a stylised manner with a star on either side. The plaintiff is thus the Proprietor of the copyright in the artistic manner, in which the trademark 'PRICOL' is written. The plaintiff had acquired an exclusive copyright over the pictorial, geometric colour pattern on the outer card-board containers of the plaintiff's products. The trademark 'PRICOL' has been registered under the Trade and Merchandise Marks Act, 1958. The Perfect Automotive Components Ltd., the defendant in C.S.No.534 of 1993 and the appellant in OSA.No.377 of 2001, is a manufacturer of lubricants and PRICOL Lubricants (India) Private Ltd., the defendant in the connected C.S.No.535 of 1993, is its marketing agent. In September, 1992, the plaintiff came to learn that such defendant in C.S.Nos.534 of 1993 was manufacturing and selling brake fluid, grease and coolant and the plaintiff's trademark was being copied and had been displayed on the containers of the products, their advertisements, their correspondence and their trade literature. Thereafter, the plaintiff by a registered notice https://hcservices.ecourts.gov.in/hcservices/ dated 17.12.1992 called upon the defendant in each case that they should cease and desist from using such trademark. But, a reply dated 9.1.1993 was received to the effect that the brake fluid, grease and coolant were sold by adopting PRICOL as a trademark, after verifying that such trademark had not been registered in respect of such brake fluid, grease and coolant. On further verification, the plaintiff found out from the trademark Registry that the application dated 21.2.1992 had been made, wherein the defendant claimed to have used PRICOL since January, 1992. In the above background, the plaintiff filed the two suits on the ground of infringement of plaintiff's copyright in the artistic manner in which the plaintiff's trademark 'PRICOL' is written and infringement of copyright on the plaintiff's card-board container and on account of the defendant passing off their goods as the goods of the plaintiff. On the aforesaid basis, the plaintiff prayed for the following reliefs in both the suits:- "The plaintiff therefore pray for judgment and decree :- (a) granting, a permanent injunction restraining the defendants by themselves, their servants, agents or anyone claiming through them, their printers and distributors from committing infringement of the copyright, which the plaintiffs have in their artistic work contained in the style of writing 'PRICOL' with starts found in Document No.1 and artistic work in Document No.3, in any manner by distributing, printing or causing to be printed the impugned style of writing the word 'PRICOL' and artistic work as shown in Document Nos.2 & 4 filed along with the plaint or in any other style of writing, which is an imitation or an infringement of the plaintiff's work contained in Document Nos.1 and 3; (b) granting a permanent injunction restraining the defendant by themselves, servants or agents of any one claiming through them from passing off their goods break fluid and creases and coolant listed in the pricelist as Document No.5 filed along with the plaint using the name 'PRICOL' and the artistic pattern of the plaintiff's containers as shown in Document Nos. 2 and 4 or pass off any other goods using the expression 'PRICOL' or similar expression. (c) directing the defendant to render a true and faithful account of the profits earned by them through the manufacture and sale of the offending mark 'PRICOL' and artistic creation marked as Document Nos.2 and 4 and directing such profits to be paid to the plaintiffs for the infringement of the copyright, trade mark and passing off committed by the defendants; https://hcservices.ecourts.gov.in/hcservices/ (d) directing the defendants to surrender to the plaintiffs and all cartons, labels, packets and any other printed matters containing of consisting of the offending Trade Marks together with blocks used for the purpose of printing the same for destruction." 3. The defendant in C.S.No.534 of 1993 claimed that the Madras High Court in its Original Side has no jurisdiction to entertain the suit as the defendant was not selling its products within the Ordinary Original Jurisdiction of such High Court. The plaintiff had no justification to invoke Section 62 of the Copyright Act for filing the suit before the Madras High Court as, such plaintiff cannot claim ownership of the copyright in the alleged artistic work done by the employees of the plaintiff's company. It has been further indicated that the plaintiff company had not obtained Leave of the High Court under clause 14 of the Letters Patent to combine different causes of action. Since the defendant had not sold its articles and was not carrying on any business nor having any branch office within the jurisdiction of the Madras High Court, the act of passing off should not have been brought before such court. It has been further stated in the written statement that the defendant had applied for registration of the trademark PRICOL in respect of the goods falling under Class-1 and Class-4 of the Trade and Merchandise Marks Act with the Registrar of Trade Marks, New Delhi on 21.2.1992. It is further claimed that the defendant had coined the word 'PRICOL' from his child's name 'PRINCEE' to form 'PRIC' and 'OL' from the word 'OIL'. The said name is therefore a combination of the words "PRINCEE" and "OIL" and an invented word. It is further stated that the goods of the defendant fall under Class-1 and Class-4 of Schedule IV of the Trade and Merchandise Marks Act, whereas the goods manufactured by the plaintiff fall under Class-9 of the said Act and there is no possibility of any confusion in the minds of the public. A detailed description had been given in the written statement describing about the various differences in the style of writing and other aspects. However, since the main question raised in these appeals is relating to jurisdiction, it is unnecessary to notice in detail those aspects. 4. The defendant in the other suit C.S.No.355 of 1993 filed substantially a similar written statement. 5. The following issues had been framed in C.S.Nos.534 of 1993 :- "1. Is the suit maintainable on the file of this court ? https://hcservices.ecourts.gov.in/hcservices/ 2. Is the suit not maintainable for the reasons set out in paragraph 2 of the written statement ? 3. Is the defendant entitled to use the name 'Pricol" in respect of products manufactured by them ? 4. Has the defendant committed any infringement of copyright or passing of as alleged by the plaintiff ? 5. Is the plaintiff owner of the copyright in the artistic pattern and whether the plaintiff is entitled to seek civil remedies under the Copyright Act, 1957 ? 6. Has the defendant committed infringement of the plaintiff's copyright ? 7. Is the plaintiff entitled to the permanent injunction sought for in paragraph 27(c) and (b) of the plaint ?" 5.1 The following issues were framed in C.S.No.535 of 1993 :- "1. Is the plaintiff entitled to invoke the jurisdiction of this court? 2. Is the suit not maintainable for the reasons set out in paragraph 2 of the written statement ? 3. Is the plaintiff owner of the copyright in the artistic pattern ? 4. Has the defendant committed any infringement of copyright or passing of as alleged by the plaintiff ? 5. Is not the defendant entitled to use the name Pricol in respect of products manufactured by them ? 6. Is the plaintiff owner of the copyright in the artistic pattern and whether the plaintiff is entitled to seek civil remedies under the Copyright Act, 1957 ? 7. Is the defendant liable to render true and faithful account of the profits earned by them ? 8. Is the defendant liable to surrender to the plaintiff all the cartons, labels, packets and any other printed matter containing or consisting of the alleged trade mark for destruction ? 9. To what reliefs are the parties entitled ? 6. While considering the question of jurisdiction, which had been raised as Issue No.1 in each of the suits, the trial court has concluded that it had jurisdiction. While considering Issue No.2, which relates to question of maintainability on the ground that two suits were based on different causes of action, it has been held that causes of action could be combined as per Clause 14 of the Letters Patent. While deciding other issues together, the trial court by relying upon the evidence of P.W.1 and the documents including Ex.P-1, held that the plaintiff had coined the trademark 'PRICOL', which was being used from 1975. From other documents such as Exs.P-7, P-8, P-9 and P-10, it was found that the defendant had made an application, an advertisement, and was using the very same trademark 'PRICOL', though for a different product. From such https://hcservices.ecourts.gov.in/hcservices/ evidence and documents, the trial court concluded that the plaintiff was the owner of the copyright 'PRICOL' and was using the trademark for its products for a long period, much earlier than the defendant, and the defendant was displaying the very same trademark and the artistic pattern in the products manufactured and sold by it. Ultimately the trial court held that even though the goods fall under different classes, since the trademark was being used by the defendant, there was infringement of the plaintiff's copyright, which also amounted to passing off the goods of the defendant as that of the plaintiff. Accordingly the trial court granted a decree in favour of the plaintiff with regard to infringement of the copyright and trademark. However, the relief relating to rendition of accounts was not accepted by the trial court on the ground that the plaintiff had agreed to using of a changed design till disposal of the suit. Such judgment and decree of the trial court is the subject matter of these two appeals. 7. In the Memorandum of Appeals it is contended that, as apparent from the order of the High Court in O.S.A.NOs.245 and 246 of 1994 against interlocutory orders, the plaintiff had given up its claim relating to copyright. In such view of the matter, Section 62 of the Copyright Act was not applicable and since no cause of action or part of the cause of action relating to passing off as contemplated under the Trade and Merchandise Marks Act, 1958 had arisen within the jurisdiction of the Original Side of the Madras High Court, the suits were not maintainable. It has been further contended in the grounds of appeal that no order had been passed on the application for joinder of cause of action under clause 14 of the Letters Patent. 8. In course of hearing and also in the written submission filed on behalf of the appellants, the main contention, rather the only contention, raised is relating to jurisdiction. It has been contended that the trial court has found that the plaintiff did not object for using of the trademark appended to each of the affidavits and the trial court had declined the relief relating to rendition of accounts and since the claim for the copyright had been given up, there was no jurisdiction to deal with the suit and the reliefs claimed, so far as they are connected with the Trade and Merchandise Marks Act, 1958. In support of the contention, learned counsel for the appellant has placed considerable reliance upon the decision of the Supreme Court reported in (2006) 9 SCC 41 (M/s. DHODHA HOUSE v. S.K. MAINGI). 9. Learned counsel appearing for the plaintiff / respondent has, on the other hand, supported the conclusion of the learned single Judge. She has contended that since similar facts were involved, the plaintiff could combine the cause of action arising under the Copyright Act, 1957 as well as the Trade and https://hcservices.ecourts.gov.in/hcservices/ Merchandise Marks Act, 1958. It has been further contended that merely because the plaintiff had given up some claim, it cannot be said that the Court had lost jurisdiction over the matter. 10. As already indicated, the main question, rather the only question, is relating to jurisdiction. So far as the Copyright Act, 1957 is concerned, both the suits were before the Original Side of the Madras High Court by invoking Section 62(2) of the Copyright Act. In C.S.No.534 of 1993, an application purporting to be one under clause 12 of the Letters Patent was filed, numbered as Application No.2312 of 1993, for grant of leave so far as violation of the Trade and Merchandise Marks Act was concerned by stating that the cause of action relating to passing off and violation of the Trade and Merchandise Marks Act had substantially arisen within the jurisdiction of the Madras High Court. Leave was granted by order dated 26.4.1993. The defendant therein (Appellant in OSA.No.377 of 2001) after service of notice had never sought to revoke such grant of leave. So far as C.S.No.535 of 1993 is concerned, the plaintiff again relied upon Section 62(2) for the purpose of jurisdiction relating to violation of the Copyright Act and so far as violation of the Trade and Merchandise Marks Act was concerned, the plaintiff filed Application No.2451 of 1993 wherein notice was issued to the defendant. The materials on record do not indicate regarding filing of any objection by the defendant (Appellant in OSA.No.378 of 2001) and no specific order seems to have been passed in such application. 11. So far as the Trade and Merchandise Marks Act, 1958 is concerned, Section 105 is relevant and it is extracted hereunder :- "105. Suit for infringement, etc. to be instituted before District Court No suit - (a) for the infringement of a registered trade mark; or (b) relating to any right in a registered trade mark; or (c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark whether registered or unregistered; shall be instituted in any court inferior to a District Court having jurisdiction to try the suit." https://hcservices.ecourts.gov.in/hcservices/ Section 62 of the Copyright Act, 1957 is extracted hereunder:- "62. Jurisdiction of Court over matters arising under this Chapter. - (1) Every suit or other civil proceeding arising under this Chapter in respect of the infringement of copyright in any work or the infringement of any other right conferred by this Act shall be instituted in the district Court having jurisdiction. (2) For the purpose of sub-section (1), a "district Court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908), or any other law for the time being in force, include a district Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or other proceeding or, where there are more than one such persons, any of them actually and voluntarily resides or carries on business or personally works for gain." 12. It is interesting to note that in the Trade Marks Act, 1999, whereunder the Trade and Merchandise Marks Act, 1958 has been repealed, Section 105 of the Trade and Merchandise Marks Act, 1958 has been re-enacted as Section 134(1). However, a provision similar to Section 62(2) of the Copyright Act has also been incorporated in the shape of Section 134(2), even though there was no such provision in the Trade and Merchandise Marks Act, 1958. In the present case, the suit was filed when the Trade and Merchandise Marks Act, 1958 was in force. 13. It is not in dispute that in the two suits, as they were originally framed, the reliefs sought for were available under the Copyright Act, 1957 and the Trade and Merchandise Marks Act, 1958. So far as the relief relating to violation of the copyright is concerned, the plaintiff specifically invoked the principle contained in Section 62(2) of the Copyright Act. It is the specific case of the plaintiff / respondent that even though the Registered Office of the plaintiff was at Coimbatore, the plaintiff was carrying on business at a place within the jurisdiction of the Original Side of the Madras High Court. This aspect is not in dispute at all. 14. So far as C.S.No.534 of 1993 is concerned, the plaintiff had alleged that the defendant has sought for registration of the trademark and had issued advertisement claiming https://hcservices.ecourts.gov.in/hcservices/ that he has transactions all over the country and, therefore, it can be said that part of the cause of action had arisen within the jurisdiction of the Madras High Court. It is not in dispute that the plaintiff in such suit has sought for and obtained leave under clause 12 of the Letters Patent governing the Madras High Court. It is therefore submitted that since part of the cause of action had arisen and leave of the court had been obtained, the court can be said to have jurisdiction. In respect of C.S.No.535 of 1993, which was against the marketing agent of the defendant M/s. Perfect Automotive Components Limited in the connected suit, clause 14 of the Letters Patent was applicable. Even the appellant in the Memorandum of Appeal has admitted that an application seeking for permission to combine two causes of action under clause 14 was filed, but no order had been passed. 15. Clauses 12 and 14 of the Letters Patent are extracted hereunder :- "12. Original jurisdiction as to suits – And We do further ordain that the said High Court of Judicature at Madras, in exercise of its ordinary original civil jurisdiction, shall be empowered to receive, try, and determine suits of every description if, in the case of suits for land or other immovable property, such land or property shall be situated, or, in all other cases, if the cause of action shall have arisen, either wholly, or, in case the leave of the Court shall have been first obtained, in part, within the local limits of the ordinary original jurisdiction of the said High Court: or if the defendant at the time of the commencement of the suit shall dwell or carry on business or personally work for gain, within such limits; except that the said High Court shall not have such original jurisdiction in cases falling within the jurisdiction of the Small Cause at Madras, in which the debt or damage, or value of the property sued for does not exceed hundred rupees.” "14. Joinder of several causes of action. - And We do further ordain that where plaintiff has several causes of action against 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 the High Court shall deem fit." https://hcservices.ecourts.gov.in/hcservices/ 16. So far as the dispute relating to violation of the Copyright Act is concerned, at the time of filing of the suit, jurisdiction of the suit had been rightly invoked by virtue of Section 62(2) of the Copyright Act. Once it is held that at the inception the court had jurisdiction to deal with the question relating to violation of the copyright, the question is whether on account of the refusal of the trial court to grant the relief relating to the Copyright Act, can it be said that the trial court did not have jurisdiction to deal with the matters relating to violation of the passing off coming within the scope of the Trade and Merchandise Marks Act, 1958. 17. Since the learned counsel for the appellant has placed strongest possible reliance upon the decision of the Supreme Court reported in 2006(3) LW 96 = (2006) 9 SCC 41 (M/s. DHODHA HOUSE v. S.K. MAINGI), it would be appropriate at this stage to consider the said decision. Two appeals, one against the decision of the Allahabad High Court and the other against the decision of the Delhi High Court were taken up together. In both the cases, the question of territorial jurisdiction of the trial court dealing with the composite suits containing reliefs relating to the Copyright Act and the Trade and Merchandise Marks Act was the primary issue. Both the appeals were against the order of injunction during pendency of the suit and not against the final decision in the suits. 17.1 In Civil Appeal No.6248 of 1997 filed by M/s. Dhodha House (hereinafter referred to as "Dhodha House Appeal" for convenience), the concerned suit had been filed by such appeallant to protect his copyright, trade marks and common law rights as regard his art work / label / trade mark and wrapper, etc. in the District Court at Ghazabad. Even though the trial court had granted injunction during pendency of such suit, the High Court in appeal against such order of injunction had allowed the appeal solely on the ground of lack of territorial jurisdiction. The High Court had also observed "Dhodha" is a name of variety of sweets and it is not a special product, which is manufactured by the plaintiff alone. In the said case, the appellant was carrying on business of sweat meats in the district of Ghaziabad, whereas the Respondent was carrying on a similar business in the name and style of M/s.V.R.K. Todha Sweet House in the district of Faridkot. 17.2 In Civil Appeal No.16 of 1999, arising