Bombay High Court
M/S Harman Overseas And 3 Others vs Dongguan Tr Bearing Company ... on 4 August, 2017
Bench: A.S. Oka
sng 1 appeal-340,95n387.15
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
APPEAL NO.340 OF 2015
IN
LEAVE PETITION NO.286 OF 2013
IN
SUIT NO.674 OF 2014
1. M/s.Harman Overseas, a Partnership Firm )
Registered under the Partnership Act, 1932 )
Having address at 2400, II Floor, )
Ramnath Building, Farskhana Chowk, )
Behind G.B. Road, Delhi, Pin - 110 006. )
2. Mr.Harman Deep Jagteshwar Singh, )
Partner of M/s.Harman Overseas, )
a Partnership Firm Registered under the )
Partnership Act, 1932, having address )
at 2400, II Floor, Ramnath Building, )
Farskhana Chowk, Behind G.B. Road, )
Delhi, Pin - 110 006. )
3. Mrs. Inderjeet Jagteshwar Singh, )
Partner of M/s. Harman Overseas, )
a Partnership Firm Registered under the )
the Partnership Act, 1932, having address )
at 2400, II Floor, Ramnath Building, )
Farskhana Chowk, Behind G.B. Road, )
Delhi, Pin - 110 006. )
4. Mr. Jagteshwar Singh, )
having address at II Floor, )
Ramnath Building, G.B. Road, )
Delhi, Pin - 110 006. ).. Petitioners
Versus
1. Dongguan TR Bearing Company Limited, )
Having its registered address )
at Guan Tai Road, Dongguan City, )
Guandong, China. )
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sng 2 appeal-340,95n387.15
2. NBU Bearing Private Limited, )
having its office at 12, )
rd
Narayan Dhuru Cross Lane, 3 Floor, )
Office No.25, Mumbai - 400 003. ).. Respondents
-
Dr.Birendra Saraf along with Shri Himanshu Kane, Ms. Pooja Kshirsagar
and Shri Nikhil Sharma i/b M/s.W.S.Kane & Co for the Appellants.
Dr.Veerendra Tulzapurkar, Senior Counsel along with Shri Amit
Jamsandekar, Ms. Alka Parelkar & Ms.Esha Trivedi i/b M/s.V.A.
Associates for the Respondents.
--
APPEAL NO.95 OF 2015
IN
LETTERS PATENT LEAVE PETITION NO.306 OF 2014
IN
SUIT (LODGING) NO.1067 OF 2014
INTAS PHARMACEUTICALS LIMITED, )
A company registered under the )
Companies Act, 1956 and having )
its place of business at Matoda - 382 210 )
Ahmedabad. ).. Appellant
Vs
1. INDCHEMIE HEALTH SPECIALITIES )
PRIVATE LIMITED, )
a company registered under the )
Companies Act, 1956 and having its )
place of business at 510, )
Shah & Nahar Industrial Estate, )
Dr. E. Moses Road, Worli Naka, )
Mumbai - 400 018. )
2. SAAR BIOTECH, )
A concern having its address at NH-21A, )
Bhud, Baddi, Dist: Solan (HP)-173 250. ).. Respondents
-
sng 3 appeal-340,95n387.15
Shri Venkatesh Dhond, Senior Counsel along with Shri Rashmin
Khandkar, Shri Aadesh Nargolkar, Shri Shailendra Bhandare and Shri
Vaibhav Keni i/b M/s. Khaitan & Co for the Appellant.
Shri Mahesh Mahadgut along with Shri Hiren Kamod and Poonam
Teddu i/b Mahesh Mahadgut for the Respondents.
-
APPEAL NO.387 OF 2015
IN
LEAVE PETITION NO.320 OF 2013
IN
SUIT NO. 42 OF 2014
Dalmia Cement Bharat Limited. )
having its registered office address )
at 101, Embassy Square, 148, Infantry Road, )
Bangalore 560001. ).. Appellant
(Org.Defendant)
Vs
1. Ultratech Cement Limited, )
a company incorporated under the )
Companies Act, 1956, having its )
registered office at Ahura Centre, )
B Wing, 2nd Floor, Mahakali Caves Road, )
Andheri (E), Mumbai - 400 093. )
2. Grasim Industries Limited, )
a company incorporated under the )
Companies Act, 1956, having its )
Corporate Office at Aditya Birla Centre, )
C Wing, S.K.Ahire Marg, Worli, )
Mumbai - 400 030. ).. Respondents
(Org.Plaintiffs)
-
Shri Ravi Kadam, Senior Counsel along with Shri Venkatesh Dhond,
Senior Counsel with Shri Rashmin Khandkar, Shri Rohan Kadam and
Ms. Bijal Trivedi i/b Ms.Bhagwati Trivedi for the Appellant.
Dr.Veerendra Tulzapurkar, Senior Counsel along with Shri Amit
Jamsandekar, Ms. Alka Parelkar & Ms.Esha Trivedi i/b M/s.V.A.
Associates for the Respondents.
-
sng 4 appeal-340,95n387.15
CORAM : A.S. OKA &
SMT.ANUJA PRABHUDESSAI, JJ
DATE ON WHICH SUBMISSIONS WERE HEARD : 23RD DECEMBER 2016
DATE ON WHICH JUDGMENT IS PRONOUNCED: 4TH AUGUST 2017
JUDGMENT: ( PER A.S. OKA, J )
1. Appeal No.340 of 2015 has been preferred by the
Defendants in Suit No.674 of 2014 for challenging the order dated 27 th
April 2015 granting leave under Clause XIV of the Letters Patent.
2. Appeal No.95 of 2015 has been preferred by the first
Defendant for challenging the order dated 14 th January 2015 granting
leave under Clause XIV of the Letters Patent in Suit (L) NO.1067 of
2014.
3. Appeal No.387 of 2015 has been preferred by the
Defendant in Suit No.42 of 2014 by which the order dated 29 th January
2015 passed by the learned Single Judge is impugned. By the said
order, leave under Clause XIV of the Letters Patent was granted.
sng 5 appeal-340,95n387.15
FACTS OF APPEAL NO.340 OF 2015
4. A brief reference to the facts of the case will be necessary.
For the sake of convenience, we are referring to the parties to the
Appeals according to their status before the learned Single Judge. In
Appeal No.340 of 2015, by the Judgment and Order impugned, the
learned Single Judge has permitted joinder of cause of action of passing
off of the trade mark with the cause of action for infringement of a
registered trade mark. The cause of action of passing off of the trade
mark has arisen outside the limits of Mumbai.
5. The first Plaintiff claims to be a registered Proprietor of the
trade mark "TR" in respect of the goods specified in Clause 7 of
Schedule IV to the Trade Mark Rules, 2002. The first Plaintiff has
claimed in the suit that it has been extensively using trade mark since
the year 1980 in India in respect of its products. According to the case
of the Plaintiffs, the second Plaintiff is the sole Distributor of the first
Plaintiff for its goods bearing the mark "TR". According to the case of
the Plaintiffs, the first Plaintiff has duly authorized the second Plaintiff
to use the trade mark TR in India.
6. It is stated in the Plaint that some time in the beginning of
January 2013, they became aware about the activity of the Defendants
sng 6 appeal-340,95n387.15
of manufacturing, marketing, selling or distributing comparable goods
under the mark/label TR which is identical or deceptively similar to the
registered trade mark of the Plaintiffs. The case made out in the Plaint
is that the action of the Defendants of adoption and use of the
mark/label TR is dishonest. It is their case that such adoption and use
of the mark/label TR by the Defendants constitutes not only an
infringement of the Plaintiffs' trade mark but also amounts to passing
off of the Defendants' goods as those of the Plaintiffs.
7. According to the case made out in the Plaint, the first
Plaintiff is based in China but carries on business in Mumbai through its
exclusive distributor- the second Plaintiff. It is stated that the second
Plaintiff has its address within the Original Jurisdiction of this Court
and the second Plaintiff has been authorized by the first Plaintiff to use
its registered trade mark. Therefore, the Plaintiffs have brought the
suit on the Original Side of this Court seeking an infringement action in
respect of their registered trade mark. The Plaintiffs prayed for grant of
a leave under Clause XIV of the Letter Patent to permit them to combine
the cause of action of passing off with the causes of action for
infringement. A separate leave Petition was filed by the Plaintiffs in
which it was contended that though the Defendants carry on business
and sell the alleged offending goods outside the Original Jurisdiction of
this Court, the evidence relating to the cause of action of passing off
sng 7 appeal-340,95n387.15
and the evidence relating to the causes of action for infringement would
be common. That is the reason why a leave was claimed under Clause
XIV of the Letters Patent. There were separate affidavits-in-reply filed
by the Defendants. A detailed affidavit-in-reply was filed by the fourth
Defendant which was adopted by the other three Defendants by filing
their affidavit-in-reply. The fourth Defendant denied the factual
contentions raised by the Plaintiffs. It was contended that there is no
material placed on record to show that the second Plaintiff is a
Distributor much less an exclusive Distributor of the first Plaintiff. It
was submitted that the first Plaintiff and the second Plaintiff have failed
to prove the nexus with each other. It was submitted that mere alleged
fact of distributorship is not sufficient for the Plaintiffs to invoke the
Original Jurisdiction of this Court under Section 134 of the Trade Marks
Act, 1999 (for short "the Trade Marks Act"). It was submitted that the
cause of action for filing an action for infringement has not arisen
within the Ordinary Original Civil Jurisdiction of this Court and,
therefore, a leave under Clause XII of the Letter Patent cannot be
granted.
FACTS OF APPEAL NO.387 OF 2015
8. In Appeal No.387 of 2015, the Original Defendant has
taken an exception to the order dated 29 th January 2015 passed by the
learned Single Judge granting leave under Clause XIV of the Letters
sng 8 appeal-340,95n387.15
Patent. The first Plaintiff is a subsidiary company of the second
Plaintiff. It is claimed that the Plaintiffs are the registered proprietors of
various trade marks bearing the name "UltraTech" as a part of their
trade marks. The suit relates to 9 trade marks mentioned in Paragraph
8 of the Plaint. The first Plaintiff is a registered proprietor of the trade
marks listed at serial nos.2 to 7 and the second Plaintiff is a registered
proprietor of the trade marks listed at serial nos.1, 8 and 9. All these
trade marks contain the words "Ultra Tech" or "Ultra" as part of them.
According to the case of the Plaintiffs, by a Deed of Assignment dated
30th September 2009, the trade marks containing the words "UltraTech"
and "Ultra" standing in the name of the first Plaintiff were assigned by
the first Plaintiff in the name of second Plaintiff along with the goodwill
of the business concern. Reliance is also placed on the License
Agreement dated 29th June 2011 under which the second Plaintiff has
permitted the first Plaintiff to use the trade marks with the words
"UltraTech" and "Ultra". The case made out in the Plaint is that the
Defendant started using a trademark containing the word "Ultra". It is
contended that the words "UltraTech" and "Ultra" are the essential and
prominent features of the trade marks bearing the word "UltraTech". It
is alleged that the use of the Defendant of a trade mark containing the
word "Ultra" amounts to an infringement of "UltraTech" trade marks. It
is contended in the Plaint that as the Plaintiffs are carrying on business
in Mumbai, in view of Sub-section (2) of Section 134 of the Trade
sng 9 appeal-340,95n387.15
Marks Act, this Court has Original Jurisdiction in respect of the cause of
action of infringement. It is alleged that by means of use of trade marks
with the word "Ultra" as a part of it, the Defendant is passing off its
goods as the goods of the Plaintiffs. Therefore, a prayer was made for
grant of leave under Clause XIV of the Letters Patent for clubbing the
cause of action of passing off.
9. By way of reply to the Petition for grant of leave under
Clause XIV of the Letters Patent, the contention of the Defendant is
mainly that this Court does not have jurisdiction in respect of the cause
of action of infringement and, therefore, there is no question of grant of
a leave under Clause XIV of the Letters Patent.
FACTS OF APPEAL NO.95 OF 2015
10. As far as the Appeal No.95 of 2015 is concerned, the
Appellant/the Original first Defendant has taken an exception to the
order dated 14th January 2015 passed by the learned Single Judge of
this Court granting leave under Clause XIV of the Letters Patent. The
Plaintiff in the said suit claims to be a registered proprietor of the trade
mark "CHERI" in Class 5 in respect of pharmaceutical preparations. The
allegation in the Plaint is that the Defendants have been using an
identical mark/deceptively similar mark with an addition of a word
namely, "MULTI CHERRY". The case made out in the Plaint is that such
sng 10 appeal-340,95n387.15
use by the Defendants not only amounts to infringement of the
registered trade marks of the Plaintiffs but results into a passing off of
the Defendants' goods as the goods of the Plaintiffs. It is claimed that
as the Plaintiff is carrying on business in Mumbai, in view of Section
134 of the Trademarks Act, the Plaintiff is entitled to file the present
suit for infringement within the Original Jurisdiction of this Court. A
prayer is made for grant of leave under Clause XIV of the Letters Patent
for clubbing the cause of action of passing off with the first cause of
action.
11. In the reply filed by the Defendants to the Petition for grant
of leave under Clause XIV of the Letters Patent, the Defendants have
contended that the suit for infringement as framed is ex facie not
maintainable. Secondly, it is contended that this Court has no
jurisdiction to entertain the suit based on cause of action for
infringement.
QUESTIONS INVOLVED
12. The controversy involved in these Appeals is more or less
common. The question is what is the scope of adjudication which is
required to be made by the Court while dealing with the
Application/Petition for grant of leave under Clause XIV of the Letters
Patent. The question is whether the defence of the Defendants to such
Application needs to be considered or the Court must proceed on the
sng 11 appeal-340,95n387.15
basis of the averments made in the Plaint on the basis of demurer. The
third question is when the Plaintiffs claim that this Court has
jurisdiction to entertain one cause of action and the Defendants claim
that this Court has no jurisdiction to entertain even the said cause of
action, whether the Court should decide the issue of jurisdiction whilst
deciding the prayer for the grant of Leave under Clause XIV. The last
question will be whether on merits, the learned Single Jude was
justified in granting leave under Clause XIV.
SUMMARY OF SUBMISSIONS
13. The learned Counsel appearing for the Appellants in these
Appeal has taken us through the pleadings of the parties and the
impugned orders. The learned senior counsel for the Appellants in
Appeal No.340 of 2015 has invited our attention to the averments
made in Paragraph 38 and Paragraph 1 of the Plaint. The learned
Counsel contended that the condition precedent for grant of leave
under Clause XIV is that this Court should have the Original Jurisdiction
in respect of one cause of action. He, therefore, submitted that as this
Court has no jurisdiction to entertain the suit seeking action for
infringement of the registered trade mark, the learned Single Judge had
no jurisdiction to grant leave under Clause XIV of the Letters Patent.
He relied upon a decision of the Division Bench of this Court in the case
of Gold Seal Engineering Products Pvt. Ltd. & Ors. v. Hindustan
sng 12 appeal-340,95n387.15
Manufacturers & Ors. (D.B.)1. The submission is that there is a
difference between the power which the Court exercises while granting
leave under Clause XII and while granting leave under Clause XIV of the
Letters Patent. The contentions raised by the Defendants by way of
reply have to be considered before granting leave. The learned counsel
relied upon a decision of the learned Single Judge of this Court in the
case of Jagdish Gopal Kamath Vs Lime and Chilli Hospitality Services
(P) Ltd.2. He submitted that the learned Single Judge seems to have
applied the principles governing grant of leave under Clause XII while
considering the Application under Clause XIV. He submitted that Clause
XII does not contemplate of giving a notice of the Application seeking
leave under the said Clause. On the other hand, under Clause XIV,
issuance of notice is made mandatory. Therefore, while contesting the
Application seeking leave under Clause XIV, the Defendants can raise all
permissible defences which are required to be considered by the Court.
It is submitted that the Petition seeking leave under Clause XIV of the
Letters Patent cannot be allowed only on the basis of the demurer. He
submitted that if the said view is accepted, the provision regarding
giving notice of the Application seeking leave to the Defendants would
become redundant. He relied upon a decision of this Court in the case
of I.C.I.C.I. Limited v. Sri Durga Bansal Fertilizers Ltd. & Ors. 3.
1 Appeal No.505 of 1992 decided on 10th June 1994
2 2013(4) Mh.LJ 627
3 1999(4) Bom.C.R. 305
sng 13 appeal-340,95n387.15
14. He submitted that an inquiry while deciding the Petition
seeking leave under Clause XIV of the Letters Patent is not restricted to
the averments made in the Plaint. The inquiry will have to be in terms
of the parameters laid down in the case of Jagdish Gopal Kamath.
15. It is submitted that while dealing with an Application under
Clause XIV of the Letters Patent, the inquiry must travel beyond the
Plaint. Though a final determination of any issue may not be
contemplated at the stage of consideration of Clause XIV application,
yet the inquiry cannot be based merely on demurer as held by the
learned Single Judge in the impugned order. The submission is that
Rule 11 of Order VII of the Code of Civil Procedure, 1908 (for short "the
said Code") has nothing to do with the inquiry contemplated by Clause
XIV of the Letters Patent. It was submitted that the decision of the
Division Bench in the case of Tukojirao Holkar v. Sowkabai
Pandharinath Rajapurkar4 will not apply to the facts of the case.
16. The submission of the learned counsel appearing for the
Appellants is that the Respondents/Plaintiffs are not entitled to invoke
jurisdiction of this Court under Sub-section (2) of Section 134 of the
Trade Marks Act. Reliance is placed on the decision of the Apex Court
in the case of Indian Performing Rights Society Limited v. Sanjay
4 AIR 1926 Bombay 100
sng 14 appeal-340,95n387.15
Dalia and Another5. The submission is that Section 134 of the Trade
Marks Act does not give absolute right to the registered proprietors to
drag the Defendants to their choice of jurisdiction and make provisions
of the said Code redundant. He relied upon what is held in paragraphs
12, 17 to 20 and 23 and 24 of the said decision in the case of Indian
Performing Rights Society Limited v. Sanjay Dalia and Another.
17. It is further contended that only a registered proprietor or a
registered user has a right to sue for infringement and even a permitted
user cannot sue for infringement. Reliance is placed on Section 53 of
the Trade Marks Act. While dealing with the interpretation of the
provision of Section 134 of the Trade Marks Act, reliance is placed on a
decision of the Apex Court in the case of State of Madhya Pradesh v.
Narmada Bachao Andolan and Another6. It was submitted that the
finding of the learned Single Judge on interpretation of Section 134 of
the Trade Marks Act is erroneous as the first Respondent (first Plaintiff)
who claims to be a registered proprietor admittedly has no office in
Mumbai and the second Respondent is neither registered proprietor nor
registered user and is not entitled to maintain a suit for infringement.
Therefore, Section 134 of the Trade Marks Act could not have been
invoked.
5 AIR 2015 SC 2479
6 (2022)7 SCC 639
sng 15 appeal-340,95n387.15
18. Further submission of the learned counsel appearing for the
Appellants is that the reliance placed by the learned Single Judge on the
decision in the case of Exphar Sa Vs. Eupharma Laboratories Ltd. is
completely erroneous. The Apex Court held that when an objection is
raised by way of demurer to the jurisdiction of this Court and not by
way of trial, then the Court should proceed on the basis of the facts
pleaded in the Plaint. The other submission is that some of the
observations made in the decision in the case of Exphar Sa Vs.
Eupharma Laboratories Ltd. are no longer valid in the subsequent
decision in the case of Indian Performing Rights Society.
19. It was further submitted on the basis of the averments
made in the Plaint that this Court has no jurisdiction to entertain the
suit based on even the first cause of action. Lastly, it was submitted that
grant of leave is always a discretion of the Court. It was pointed out
that the issue of jurisdiction under Section 9A of the said Code has been
already framed, but the same is not being heard. On facts, it is
submitted that the discretion ought to have been exercised in favour of
the Defendants by not granting leave under Clause XIV of the Letters
Patent.
sng 16 appeal-340,95n387.15
20. The legal submissions made across the bar in other two
Appeals are more or less similar. Their submission is that the learned
Single Judge had ex-facie no jurisdiction to entertain the suits based on
the first cause of action. In these other two Appeals also, learned
counsel appearing for the Appellants placed reliance on various
decisions. Reliance is placed on a decision of the learned Single Judge
of this Court in the case of Jagdish Gopal Kamath and Others v. Lime
and Chilli Hospitality Services P. Ltd. One of the submissions
canvassed was that when an Application for grant of leave under Clause
XIV of the Letters Patent is opposed by the Defendants by filing a reply,
consideration of facts stated in the reply is necessary. Moreover, it is
necessary to examine whether the Court has jurisdiction to entertain the
suit based on the first cause of action. The submission is that if ex facie,
the Court has no has jurisdiction to entertain the suit based on the first
cause of action, grant of leave under Clause XIV of the Letters Patent
will be an abuse of the process of law. The Submission in short is that
an Application for leave under Clause XIV cannot be decided on
demurer. The submissions have been made on facts as to how the
leave has been erroneously granted.
21. The learned counsel appearing for the
Respondents/Original Plaintiffs have also made a detailed submissions.
One of the submissions is that even if the leave is granted under Clause
sng 17 appeal-340,95n387.15
XIV of the Letters Patent, issue of jurisdiction of the Court to entertain
the suit based on the first cause of action remains open. If after framing
Preliminary Issue, the Court comes to a conclusion that it had no
jurisdiction to entertain the suit based on the first cause of action, the
Plaint will have to be returned. The learned counsel appearing for the
Respondents has also relied upon various decisions to which we have
made a reference in our judgment. The learned Counsel have justified
the the findings recorded in the impugned order.
CONSIDERATION OF SUBMISSIONS
22. The first issue which arises for consideration is regarding
the scope of adjudication while dealing with an application/petition for
grant of leave under Clause XIV of the Letters Patent. For that purpose,
it is necessary to refer to Clause XIV of the Letters Patent, which reads
thus:
"XIV. Joinder of several causes of action.- And We do
further ordain that where plaintiff has 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."
(underline added)
sng 18 appeal-340,95n387.15
23. Clause XIV of the Letters Patent has to be compared with
Clause XII of the Letters Patent, which reads thus:
"XII. Original jurisdiction as to suits.- And we do
further ordain that the said High Court of Judicature
at Fort William in Bengal [Madras] [Bombay], in the
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 Jurisdictionof
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 Jurisdictionin cases falling within the
jurisdiction of the Small Cause Court at [Madras],
[Bombay], Calcutta, in which the debt or damage or
value of the property sued for, does not exceed on
hundred rupees."
24. A leave under Clause XII of the Letters Patent is required to
be granted before a suit is registered. Therefore, there is no requirement
of giving a notice of an Application seeking a leave under Clause XII of
the Letters Patent to the Defendant. However, the Defendant can
always apply for revocation of the leave. As far as an application
seeking leave under Clause XIV is concerned, before grant of leave,
there is a mandatory requirement of issuing a show cause notice to the
Defendant and consequently of hearing the Defendant. The very fact
that the Clause XIV of the Letters Patent provides for issuing a notice to
sng 19 appeal-340,95n387.15
the Defendant shows that the Defendants have a right of hearing before
the leave is granted.
25. In view of the language used by Clause XIV of the Letters
Patent, if the Court has jurisdiction to entertain the suit based on one
cause of action, only in that case, the question of grant of leave for
clubbing another cause of action arises. If a Defendant contends that
the Court has no jurisdiction to entertain the suit based on the first
cause of action, the question is whether a final adjudication on the said
issue can be made at the time of hearing of the Application under
Clause XIV of the Letters Patent.
26. In a Civil Suit, the issue of jurisdiction can be decided only
in the following manner:-
(a) When at the time of hearing of an Application for
grant of or setting aside an order of granting any
interim relief whether by way of temporary
injunction, appointment of a Court Receiver or
otherwise, an objection to the jurisdiction of the
Court is raised, Section 9A of the Code of Civil
Procedure, 1908 (for short "the said Code")
mandates that the objection to the jurisdiction has to
be finally decided at that stage ;
sng 20 appeal-340,95n387.15
(b) After filing of the written statement, if an issue of
jurisdiction is framed, the Court may in its discretion
can hear and decide it as a Preliminary Issue;
(c) Such issue framed can be decided at the time of
hearing of the suit along with other issues;
(d) In normal course, the objection as regards the
jurisdiction raised by the Defendants can be decided
only after an issue to that effect is framed and that
the question of framing the issue arises only after a
written statement is filed. Section 9A of the said
Code is an exception to the said general Rule. Where
Section 9A is applicable, the issue of Jurisdiction is
required to be decided even before filing of written
statement;
(e) When by taking the averments made in the Plaint as
correct, the jurisdiction of the Court appears to be
barred, the Plaint can be rejected at any stage of the
suit;
sng 21 appeal-340,95n387.15
27. There is no provision in the said Code or the High Court
(Original Side) Rules, 1980 which warrants final determination of the
issue of jurisdiction to entertain the suit based on the first cause of
action when a reply is filed opposing the Application for grant of leave
under Clause XIV of the Letters Patent. The issue of jurisdiction of the
Court to entertain the suit based on the first cause of action cannot be
finally decided even if by way of reply to the Petition seeking a leave
under Clause XIV of the Letters Patent, the issue of jurisdiction is raised.
The final adjudication on the issue of jurisdiction of the Court to
entertain the suit at that stage is not permissible. In a given case, after
noticing at the final hearing of the Petition seeking a leave under Clause
XIV of the Letters Patent that one of the grounds under Rule 11 of Order
VII of the said Code is attracted, the Court can very well take up for
consideration the question whether the Plaint deserves to be rejected.
The reason is that for considering the issue of rejection of the Plaint
only the averments made in the Plaint are required to be seen and not
the averments made in the Written Statement or other pleadings.
Therefore, it follows that when a contention of lack of jurisdiction of
this Court to hear the suit based on the first cause of action is raised at
the time of hearing of the Petition for grant of a leave under Clause XIV,
the issue cannot be decided at that stage. Even if eventually a leave
under Clause XIV of the Letters Patent is granted, the issue of
sng 22 appeal-340,95n387.15
jurisdiction always remains open. The grant of leave does not conclude
the issue of jurisdiction. The issue of jurisdiction can be decided at an
appropriate stage. If the Court holds that it did not have jurisdiction to
entertain the suit based on the first cause of action, either the suit will
have to be dismissed or the Plaint will have to be returned, depending
upon the facts of the case.
28. Now, we deal with the second question as regards the scope
of adjudication of the Petition seeking a leave under Clause XII of the
Letters Patent. Various decisions have been relied upon by learned
counsel appearing for the parties. A Division Bench of this Court in the
case of I.C.I.C.I. Limited v. Sri Durga Bansal Fertilizers Ltd. & Ors.
was dealing with an issue of jurisdiction raised in the Chamber
Summons taken out for revoking leave granted under Clause XII of the
Letters Patent. In Paragraph 10, the Division Bench held thus:
"10. Under these circumstances, we are of the
considered view that when question about the
territorial jurisdiction is raised either in an application
seeking revocation of leave under Clause XII of the
Letters Patent or on an application under section of the
Code of Civil Procedure, the appropriate procedure to
follow is to finally decide the said question by giving
opportunity to the parties, if facts and circumstances of
the case so require, to lead evidence. Such a course
would avoid multiplicity of proceedings and would also
be in consonance with the provisions of section and/or
Order XIV, Rule 2 of the Code of Civil Procedure and
Clause XII of the Letters Patent. It would also avoid
examination of the same question twice over. It is,
sng 23 appeal-340,95n387.15
however, a different matter if the parties agree that for
all purposes, the question of jurisdiction may be
decided only prima facie and that it should be left to be
finally determined at the trial of the suit along with the
other issues on merits. As already noticed, in the
present case, such a concession was not forthcoming
from the defendants."
This decision is confined to Clause XII of the Letters Patent.
29. There is an old decision of this Court in the case of
Tukojirao Holkar v. Sowkabai Pandharinath Rajapurka. The said
decision was dealing with the issue of grant of leave under Clause XIV
of the Letters Patent. The view taken by the Division Bench is that after
a leave under Clause XIV of the Letters Patent is granted, it is open for
the Defendant at the trial to raise a plea of want of jurisdiction.
Another decision of a Division Bench of this Court is in the case of
M/s.Arte Indiana v. M/s. P.Mittulaul Lalah & Sons & Ors. 7 In
Paragraph 3 of the said decision, while dealing with Clause XIV of the
Letters Patent, the Division Bench observed thus:
"3. ...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 only
contemplate that this Court shall have Original
Jurisdiction in respect 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 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
7 101(3) Bom.L.R. 188
sng 24 appeal-340,95n387.15
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
extra ordinary 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
Tukojiro Holkar v. Sowkabai, reported in, while
considering Clauses 12 and 14 of the Letters Patent
and the provision of Order 2, Rule 3 and 4 Civil
Procedure Code, has held that what is relevant is that
one cause of action is within the jurisdiction of this
Court. In the present case, cause of action in relation to
infringement of copyright is admittedly within the
jurisdiction of this Court."
(underline supplied)
The Division Bench also dealt with the distinction between
the extra-ordinary jurisdiction and ordinary jurisdiction. An argument
which was canvassed was that this Court will have the Original
Jurisdiction only in respect of the cases as contemplated by Clause XII
of the Letters Patent and other cases would not be within the Original
Jurisdiction of the Court. The said contention was rejected by the
Division Bench and it was held that even the jurisdiction under the
Companies Act or Banking Companies Act falls within the ambit of
ordinary original civil jurisdiction. The Division Bench held that a suit
complaining of violation of Copyright under the Copyright Act, 1957 fell
within the purview of the Ordinary Jurisdiction and not Extra-ordinary
Jurisdiction.
sng 25 appeal-340,95n387.15
30. Now, we may turn to the decision of the learned Single
Judge of this Court in the case of Jagdish Gopal Kamath Vs Lime and
Chilli Hospitality Services (P) Ltd.. He has considered the earlier
decisions of this Court and has summarized the law on the point in
Paragraph 16, which reads thus:
"16. From a reading of Clause XIV of the Letters
Patent, the observations/findings in the aforestated
decisions of the Hon'ble Division Bench of this Court,
and from the above discussion it can safely be
concluded that:
(i) the grant of leave under Clause XIV of the
Letters Patent is a discretionary exercise;
(ii) the primary consideration, while deciding
applications for grant of leave under clause XIV
of the Letters Patent is 'avoiding multiplicity of
litigation';
(iii) in the absence of proven mala fides/hardship,
the argument that grant of leave will drag the
Defendant from a forum where the Defendant is
situated, to the Court from which Clause XIV is
sought and that this is prejudicial/inconvenient
to the Defendant, is fallacious and
misconceived;
(iv) leave may be declined considering undue
hardship to the Defendant or such other similar
ground/s;
(v) leave may be declined if the suit as filed is on
the face of it not maintainable and the same is
nothing but an abuse of law/Court;
sng 26 appeal-340,95n387.15
(vi) the inquiry whether on facts the Plaintiff is
entitled to grant of leave as sought for or not
has to be minimal and not in detail, so as to
ensure that observations made do not adversely
affect the parties while considering the prayers
for grant of interim relief or while deciding the
suit;
(vii) it is not possible to list all the circumstances
under which leave under Clause XIV should be
granted or declined. The Court has to use its
judicial discretion and arrest any abuse of the
process of a court without going into the merits
of the case to the extent of virtually obliterating
the distinction between grant of leave and grant
of interim relief.
(viii) leave petitions cannot be converted into
interlocutory hearings based on the initial cause
of action. This will be an anathema to the
object/legislative policy behind granting leave."
31. The power of this Court to grant a leave under clause XIV
of the Letters Patent is always discretionary. As observed earlier, while
exercising the said power, the defence raised by way of reply by the
Defendant has to be considered. If the Court is satisfied that ex facie,
this Court has no jurisdiction to entertain a suit based on the first cause
of action, the Court will be justified in exercising discretion by refusing
the leave. While doing so, it is not necessary for the Court to record a
final finding on the issue of jurisdiction which can be recorded at an
appropriate stage. As observed by the learned Single Judge, if the
Court is satisfied that ex facie, the suit is not maintainable or that the
act of filing a suit is an abuse of process of law, the Court will be
sng 27 appeal-340,95n387.15
justified in exercising discretion by refusing to grant leave under clause
XIV of the Letters Patent. There may be various other grounds on which
the Court may refuse leave. For example, if after considering the reply
filed by the Defendants, the Court is satisfied that grant of leave under
clause XIV of the Letters Patent will amount to causing harassment to
the Defendants or will cause undue hardship to them, the Court may
refuse to grant leave.
32. As we have observed earlier, when a reply is filed to the
Petition seeking leave under clause XIV of the Letters Patent, the
Petition seeking leave under clause XIV of the Letters Patent cannot be
decided on mere demurer and the Court will have to take into
consideration the reply filed to the Petition seeking a leave under clause
XIV of the Letters Patent. We may hasten to add here that while dealing
with the Petition under clause XIV of the Letters Patent, the Court is not
expected to record a final finding on the issue of jurisdiction or
maintainability of the suit based on the first cause of action except
when the Court exercises the power under Rule 11 of Order VII of the
said Code. When the power of rejection of the Plaint is exercised,
naturally, there will be no occasion to grant a leave under clause XIV of
the Letters Patent. The learned Single Judge in the decision in the case
of Jagdish Gopal Kamath Vs Lime and Chilli Hospitality Services (P)
Ltd. has rightly held that the inquiry on the question whether the
sng 28 appeal-340,95n387.15
Plaintiff is entitled to grant of leave has to be minimal and the hearing
of such Petitions cannot be allowed to be converted into hearing of
interlocutory hearings.
33. In addition to what we have held in the judgment, we
agree with the summary of the conclusions recorded by the learned
Single Judge in Paragraph 16 of the decision in the case of Jagdish
Gopal Kamath Vs Lime and Chilli Hospitality Services (P) Ltd. After
having perused all the decisions relied upon by the parties, we find that
none of the binding decisions take a view which is contrary to the view
taken by us.
SCOPE OF APPEAL
34. There are submissions canvassed across the bar on merits
of the impugned orders. We have held earlier that clause XIV of the
Letters Patent confers discretionary power on the Court. The grant of
leave under clause XIV of the Letters Patent is a discretionary exercise.
An Appeal against an order passed in exercise of the discretionary
power can be said to be an Appeal on principle. Unless it is shown that
the exercise of discretion is perverse or is completely contrary to the
settled law, in normal course, the Appeal Court should not interfere
with the exercise of discretion. Even if leave is granted by rejecting
sng 29 appeal-340,95n387.15
contentions raised by the Defendants, there is no final adjudication
made on merits of the suit or the issue of Jurisdiction. Moreover, the
limited adjudication made while granting leave will not affect the
decision of the Court on the interlocutory applications for grant of
interim relief. The issue of jurisdiction of the Court to entertain the suit
always remains open even if a leave is granted under clause XIV of the
Letters Patent. Even if leave is refused, rights of the Plaintiff are not
affected in the sense that he can bring a separate suit before the
appropriate forum on the cause of action sought to be clubbed by taking
recourse to Clause XIV of the Letters Patent. When an Appeal is
preferred against the order passed on a Petition seeking leave under
clause XIV of the Letters Patent, the Appeal Court will have to bear in
mind the aforesaid aspects. It is in the light of these parameters, now
we proceed to discuss the merits of the impugned orders.
ON MERITS OF THE IMPUGNED ORDER
35. Now coming to the merits of the Appeal No.95 of 2015, the
Plaintiff claims to be a registered Proprietor of a "CHERI" (in Class 5) in
respect of pharmaceutical preparations. According to the case of the
Plaintiff, it carries on business in Mumbai and its goods are available in
Mumbai. The suit is filed for infringement of the registered trade mark
by contending that by virtue of Section 134 of the Trade Marks Act,
sng 30 appeal-340,95n387.15
1999, the Plaintiff is entitled to file a suit within the jurisdiction of this
Court. It was contended that the cause of action also arises for action of
passing off and, therefore, leave under Clause XIV of the Letters Patent
was sought for combining the causes of action.
36. The Defendants contended that the cause of action for
infringement had not arisen within the jurisdiction of this Court.
Another contention was that the suit for infringement was not
maintainable. In Paragraph 5 of the order, the learned Single Judge has
adverted to Sub-section (2) of Section 134 of the Trade Marks Act and
observed that a registered proprietor of a trademark can institute a suit
for infringement in a Court within the local limits of whose jurisdiction
at the time of institution of the suit, the registered proprietor actually or
voluntarily resides or carries on business or personally works for gain.
The learned Single Judge referred to the case made out in the Plaint
that the Plaintiff is carrying on business in Mumbai and its goods are
available in Mumbai. The finding recorded in Paragraph 5 of the order
is not a final finding on the issue of jurisdiction. It is only a tentative
finding recorded while dealing with the contention raised by the
Defendants. There is no perversity in the finding. In Paragraph 6 of the
order, the learned Single Judge has considered the submissions made by
the Defendants that the Plaintiff's registration is restricted merely to
pharmaceutical preparations which does not cover the case in relation
sng 31 appeal-340,95n387.15
to which the Defendants use their alleged offending mark. Perhaps, the
objection of the Appellant was to the following observations made in
Paragraph 6 in the impugned order.
"6. ...The requirement, however, is that the Court
must be in a position to arrive at the conclusion that
the suit as framed is not maintainable without there
being any need to consider any defence to the suit."
37. However, in the further part of the order, the learned Single
Judge has observed that whether the goods in respect of which the
Defendants use their mark, are pharmaceutical preparations or is not
free from doubt. The learned Single Judge further observed that the
documents placed on record by the defendants along with the reply
cannot be taken into consideration. To that extent, the learned Judge
may not be right, but he has held that the issue whether the goods in
respect of which the Defendants use their mark are pharmaceutical
preparations is not free from doubt. Therefore, we do not find that the
discretion exercised while granting leave is not perverse. He held that it
cannot be said that the suit is ex-facie not maintainable.
38. In Appeal No.340 of 2015, the facts of the case have been
already narrated in the earlier part of the judgment. The opposition of
the Defendants to the Petition seeking a leave under Clause XIV of the
Letters Patent is on the ground that the first Plaintiff was owner of the
sng 32 appeal-340,95n387.15
registered trademark which carries on business outside the jurisdiction
of this Court. There is nothing placed on record to establish that the
first Plaintiff has authorized the second Plaintiff to use its trademark.
The contention was that under Section 134 of the Trade Marks Act, it
was not enough to prove that the second Plaintiff was a distributor of
the goods marketed by the first Plaintiff in India. It was contended that
merely because the distributor was having its office within the
jurisdiction of this Court, it cannot be said that the Court had
jurisdiction to entertain an infringement action. It was pointed out that
the preliminary issue of jurisdiction has been already framed. The
learned Single Judge observed that for the purposes of application for
grant of leave under Clause XIV of the Letters Patent, the Court will
have to proceed on the footing that the second Plaintiff was a
distributor and agent of the first Plaintiff. The learned Single Judge
relied upon a decision of this Court in the case of Ultratech Cement
Ltd. v. Dalmia Cement Bharat Limited which in turn relies upon the
decision of the Apex Court in the case of Exphar Sa Vs. Eupharma
Laboratories Ltd.
39. The case made out in the Plaint and in the Petition for
grant of leave by the Plaintiffs was that the second Plaintiff was having
its office at Mumbai. It was pleaded that the second Plaintiff was
carrying on business in Mumbai as the exclusive and sole distributor of
sng 33 appeal-340,95n387.15
the first Plaintiff to use the goods. All this is a matter of evidence and
in fact, a preliminary issue of jurisdiction of this Court has been already
framed. Even in this case, there is no final finding recorded by the
learned Single Judge on the issue of jurisdiction which remains at large
notwithstanding the grant of leave under Clause XIV of the Letters
Patent. Therefore, we find no perversity or illegality in the approach
adopted by the learned Single Judge.
40. Now we turn to the Appeal No.387 of 2015 which arises
out of Suit No.42 of 2014 (Ultratech Cement Limited and Another v.
Dalmia Cement Bharat Limited). The case made out in the Plaint was
that the first Plaintiff was a registered proprietor of the trade marks
listed at Sr.Nos.2 to 7 whilst the second Plaintiff is a registered
proprietor of the trade marks listed at Sr.Nos.1, 8 and 9. All these trade
marks contain the word "Ultratech" or "Ultra" as a part of them. It is
alleged that by the Deed of Assignment dated 30 th September 2009, the
trade marks containing the word "Ultratech" or "Ultra" was assigned to
the second Plaintiff alongwith the goodwill of the business. Reliance is
also placed on the License Agreement dated 29 th June 2011. By the said
License Agreement, the second Plaintiff has permitted the first Plaintiff
to use the trade marks containing the word "UltraTech" or "Ultra". It is
alleged that the words "Ultra" and "Tech" are the essential and
prominent features of the registered mark bearing the word
sng 34 appeal-340,95n387.15
"UltraTech". It was alleged that the Defendant/Appellant has started
using a mark containing the word "Ultra" and that the trade mark of the
Defendant is identical with or deceptively similar to the "UltraTech"
trademark and, therefore, such user by the Defendant will amount to an
infringement of the "UltraTech" trade marks. The objection of the
Defendant was that this Court had no jurisdiction in respect of the
cause of action for infringement as only a registered proprietor or a
registered user can maintain a suit for infringement. It was contended
that the second Plaintiff cannot maintain a suit containing action for
infringement under Sub-section (2) of Section 134 of the Trade Marks
Act since it cannot be said to be ordinarily residing or carrying on
business within the jurisdiction of this Court. In this case, the
Defendant had applied under Order VII Rule 11 of the said Code on the
ground that only the second Plaintiff cannot file a suit for infringement
as a registered proprietor of the trademark and that the principal place
of its business was outside the jurisdiction of this Court. While
dismissing the prayer for rejection of the Plaint, the learned Single
Judge held that the Court would have jurisdiction to entertain a suit
under Sub-section (2) of Section 134 of the Trade Marks Act even if the
Plaintiff only had its subordinate office and not its principal office
within the jurisdiction of this Court. In this case, the second Plaintiff
has a subordinate office within the jurisdiction of this Court. An Appeal
against the said order of rejection of the Application for rejection of the
sng 35 appeal-340,95n387.15
Plaint was dismissed by the Division Bench by granting liberty to the
Defendant to take out appropriate proceedings including an application
under Section 9A of the said Code. In our view, while dealing with the
Petition under Clause XIV of the Letters Patent, in view of the earlier
order of the learned Single Judge which was confirmed in Appeal, it
was not necessary for the learned Single Judge to go into the prima
facie consideration of the issue whether the suit was maintainable
under Sub-section (2) of Section 134 of the Trade Mark Act.
Nevertheless, the learned Single Judge has dealt with the same and
negatived it. Prima facie view expressed by the learned Single Judge is
that there was no need to read words in the nature of the explanation
to Section 20 in Sub-section (2) of Section 134 of the Trade Marks Act.
According to us, the learned Single Judge has considered the defence of
the Defendant to the leave application and has held more than minimal
inquiry and has recorded a prima facie finding that this Court had
jurisdiction to entertain the suit containing the cause of action for
infringement. We do not find any perversity attached to the approach
or findings recorded by the learned Single Judge.
41. In none of the aforesaid three Petitions, there is material to
come to a conclusion that the action of filing a suit in this Court is
malafide or that undue hardship will be caused to the Defendants if the
leave under Clause XIV of the Letters Patent is granted.
sng 36 appeal-340,95n387.15
42. We are, therefore, unable to interfere with the impugned
orders and we pass the following order:
ORDER :
(a) The Appeals are dismissed;
(b) We make it clear that by the impugned orders, the
issue of jurisdiction of this Court to entertain the suit
based on the first cause of action is kept open which
can be decided at an appropriate stage in accordance
with law;
(c) The findings rendered by the learned Single Judge
on the issue of jurisdiction are tentative or prima
facie findings only for the purposes of deciding the
Application for leave under Clause XIV of the Letters
Patent;
(d) There will be no order as to costs.
( ANUJA PRABHUDESSAI, J) ( A.S. OKA, J )
