Case: M/s. Dhodha House Vs. S K Maingi

2. We would notice the fact of the matters separatelyCivil Appeal No. 6248 of 1997:3. The Appellant herein filed a suit against the Respondent to protect his copyright, trade marks and common law rights as regard his art work/ label/ trade mark and wrapper contained in Annexure A to the memo of appeal which the Respondent had allegedly infringed by using the impugned trade mark/ art work/ label/ wrapper contained in Annexure B thereto4. According to the Appellant, the said art work/ label/ trade mark/ wrapper infringes the Appellants trade mark registration Dhodha House under Registration No. 277714-B in class 30 under the 1958 Act, as also copyright 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 19605. 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 defendants labels, and wrappers entitled Mannis Todha Sweet or any other labels and wrappers, confusingly similar to the aforementioned art work, label and wrapper of the plaintiff. They are further restrained from passing off their goods and business as and for the business and goods of the plaintiff under the impugned trade mark Todha with prefix Maingis or its labels and wrapper which are identical with deceptively similar to the trade mark Dhodha with prefix Royal and its labels and wrappers being used by the plaintiff in his distinctive get- up, make-up, colour scheme, combination and manner of writing6. The Respondent preferred an appeal thereagainst before the High Court of Judicature at Allahabad which was marked as First Appeal From Order No. 401 of 1992. By an order dated 5.5.1997, the High Court inter alia held that the Civil Court had no territorial jurisdiction to try the suit. The High Court was further of the opinion that Dodha is a name of a variety of sweet and it is not a special product which is manufactured by the plaintiff alone7. The Appellant is, thus, before usCivil Appeal No. 16 of 1999:8. The defendant is the Appellant herein. Both the plaintiff and Appellants carry on business in diesel engines at Rajkot in the State of Gujarat. A suit on the original side of the Delhi High Court was filed inter alia for perpetual injunction restraining infringement of trade mark, copyright, trading style, passing off and for rendition of accounts. It has been averred in the plaint that the plaintiff has registered a trade mark Field Marshal. Its label Field Marshal is said to be registered also under the Copyright Act, 1957 and it had been printing/ publishing the said purported artistic work titled Field Marshal in all its trade literatures, pamphlets, stickers, calendars, diaries, etc. as also on the goods manufactured. According to the plaintiff, the First Defendant herein has been registered under the Companies Act and it proposed to start a business in the trading style of Field Marshal for the business of the goods of same kind and description wherefor caution notice had been issued by it. It also sent letter to the Registrar of Companies objecting to the incorporation of the said company containing the word Field Marshal or identical or deceptively similar thereto. It is alleged that goods manufactured by the Appellants with the plaintiffs trade marks are being sold in Delhi9. 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 Honble Court has jurisdiction to entertain and try the present suit. Moreover, the jurisdiction of this Honble Court is also attracted in view of Section 62(2) of the Copyright Act10. 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)11. 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 jurisdiction in relation thereto. The Plaintiff-Respondent No. 1 preferred an intra-court appeal before the Division Bench of the said Court which was marked as FAO (OS) 270 of 1995. By reason of the impugned judgment dated 10th March, 1998, the said appeal was allowed12. Before the Division Bench of the High Court, three contentions as regard the jurisdiction of the Delhi High Court were raised; firstly, under Section 62 of the Copyright Act, 1957, secondly, in view of the fact that the defendants had sought for registration of trade mark at Delhi, and thirdly, the defendants are selling goods under the impugned trade mark at Delhi and, thus, plaintiffs right there over had been violated at Delhi13. The Division Bench negatived the contention raised on behalf of the Appellants herein that as both the parties are resident of and working for gain at Rajkot and no sale having been effected by them within the territorial jurisdiction of the court, the Delhi High Court had no territorial jurisdiction to entertain the suit14. On the first contention, the Division Bench was of the opinion that a composite suit based on infringement of trade mark, copyright, passing off and for rendition of accounts of profits as also injunction having been filed, the Delhi High Court had the territorial jurisdiction to entertain the suit15. On the second contention, the Division Bench relying on or on the basis of its earlier decision in Jawahar Engineering Co. & Ors. Vs. M/s. Jawahar Engineering Pvt. Ltd. [AIR 1984 Delhi 166] came to the opinion that a plaintiff can even seek a restraint order against the threat that is still to materialize once it comes to learn that the defendants had applied for registration of trade marks at Delhi wherefor they can pray for injunction to prevent any sale of the infringing product in Delhi16. The Bench did not go into the third question17. The two judgments before us, thus, have taken contrary views.

Reasoning: 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 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 of Copyright and a cause of action for infringement of Trade Mark or a cause of action of passing off would be different. Even if one cause of action has no nexus with another, indisputably Order II Rule 3 may apply. However, by reason of application of Order II Rule 3 of the Code ipso facto would not confer jurisdiction upon a court which had none so as to enable it to consider infringement of trade mark under the 1957 Act as also the 1958 Act. It is trite law that a judgment and order passed by the court having no territorial jurisdiction would be nullity.21. A judgment or order passed by a court lacking territorial jurisdiction, thus, would be coram non judice. Thus, if a district court, where the plaintiff resides but where no cause of action arose otherwise, adjudicates a matter relating to infringement of trade mark under the 1958 Act, its judgment would be a22. The said decision has no application in the instant case for more than one reason. For the purpose of registration of a trade mark, an application must be filed in the branch office of the Registrar of Trade Marks. It is not in dispute that under Section 5(3) of the 1958 Act, the Central Government has issued a notification in the official gazette defining the territorial limits within which an office of the Trade Marks Registry may exercise its functions. The office of the Trade Marks Registry at New Delhi exercises jurisdiction over the States of Haryana, Himachal Pradesh, Jammu & Kashmir, Punjab, Rajasthan and Uttar Pradesh and the Union Territory of Chandigarh and National Capital Territory of Delhi.23. 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 application34. 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 followed35. 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 parties36. 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 1957 Act provides for an additional forum. Such additional forum was provided so as to enable the author to file a suit who may not otherwise be in a position to file a suit at different places where his copyright was violated. The Parliament while enacting the Trade and Merchandise Marks Act in the year 1958 was aware of the provisions of the 1957 Act. It still did not choose to make a similar provision therein. Such an omission may be held to be a conscious action on the part of the Parliament. The intention of the Parliament in not providing for an additional forum in relation to the violation of the 1958 Act is, therefore, clear and explicit. The Parliament while enacting the Trade Marks Act, 1999 provided for such an additional forum by enacting sub-section (2) of Section 134 of the Trade Marks Act. The court shall not, it is well well-settled, readily presume the existence of jurisdiction 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 gain39. A corporation in view of Explanation appended to Section 20 of the Code would be deemed to be carrying on business inter alia at a place where it has a subordinate office. Only because, its goods are being sold at a place would thus evidently not mean that it carries a business at that place42. 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 invoked43. 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 selling its produce in Delhi or not is wholly irrelevant. It is possible that the goods manufactured by the plaintiff are available in the market of Delhi or they are sold in Delhi but that by itself would not mean that the plaintiff carries on any business in Delhi44. It is not in dispute before us that the application for registration of the trade mark was to be filed either at Bombay or at Ahmedabad. The objections thereto by the plaintiff were also required to be filed at the said places. The jurisdiction of the Delhi court could not have been invoked only on the ground that advertisement in respect thereof was published in the Trade Marks Journal. Section 62 of the 1957 Act, therefore, will have no application. The plaintiff has no branch office at Delhi. Its manufacturing facilities are not available at Delhi. Both its trade mark and copyright are also not registered at Delhi45. Our attention has been drawn to the provisions of Section 45 of the Trade Marks Act; sub-section 2(m) whereof shows that the marks includes a device, brand, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. It may be so that in a given case if such label is registered, a violation thereof may give rise to cause of action under the said Act; but only because in a given case, the activities on the part of the defendant may give rise to a cause of action both under the 1958 Act as also under the 1957 Act, the same would not mean, irrespective of the nature of violation, the plaintiff would be entitled to invoke the jurisdiction of the court in terms of sub-section (2) of Section 62 of the 1957 Act46. For the purpose of invoking the jurisdiction of a court only because two causes of action joined in terms of the provisions of the Code of Civil Procedure, the same would not mean that thereby the jurisdiction 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 issues47. 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 case48. In Patel Field Marsahal (supra), however, we may notice that a subsequent development has taken place, namely, after the remand, a learned Single Judge of the Delhi High Court is said to have granted an order of injunction in favour of the plaintiff-respondent and the matter is pending before the Division Bench. As we have not expressed our views on the merit of the matter, it is needless to mention that the Division Bench shall proceed to determine the questions raised before it on their own merits