Bombay High Court
Kalpataru Properties Private ... vs Sri Kalpatharu Housing Private ... on 5 July, 2017
Bench: K.R. Sriram
1 4.lpetn.38.2017 comsl.44.2017.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
LEAVE PETITION NO. 38 OF 2017
IN
COMMERCIAL SUIT (LODG.) NO. 44 OF 2017
Kalpataru Properties Private Limited .. Petitioner/Plaintiff
Vs.
Sri Kalpatharu Housing Private Limited .. Respondent/Defendant
Dr.Abhinav Chandrachud a/w. Ms.Smriti Yadav and Mr.Dhiren Karania i/b
Khaitan and Co. for petitioner/plaintiff.
Mr.Mahesh A. Mahadgut a/w. Ms.Poonam Teddu for respondent/defendant.
CORAM : K.R.SHRIRAM, J.
DATE : 5TH JULY, 2017
P.C.
1 Mr.Mahadgut for the respondent/defendant states that in Paragraph 3
of the affidavit in reply, they have raised an issue of jurisdiction on the
basis that the plaintiff has it office in Andhra Pradesh also and therefore in
view of what is stated in the last paragraph of the judgment of the Apex
Court in Indian Performing Rights Society Ltd. Vs. Sanjay Dalia & Anr. 1,
this Court will not have jurisdiction and the plaintiff will have to necessarily
come and file in the Andhra Pradesh Court where the defendant is based and
where the plaintiff also has a branch.
2 Mr.Mahadgut relied on a judgment in Sandeep Gopal Raheja Vs.
1 2015 (63) PTC 1 [SC]
Shraddha Talekar PS 1/6
2 4.lpetn.38.2017 comsl.44.2017.doc
Sonali Nimish Arora & Ors.2 and submitted that once the defendant raises
an issue of Section 9A, this Court has to necessarily frame the issue and
give a finding. The following issue, therefore, is framed :
(i) Whether this Court has jurisdiction to receive, try and
dispose of this suit?
Answer : For, reasons given below, this Court has
jurisdiction to receive, try and dispose of this suit.
3 In paragraph 47 of of Sanjay Dalia (Supra) the Supreme Court has not
held that if the plaintiff has a branch office or is carrying on business in a
place other than the registered office where the cause of action arose, the
plaintiff cannot file the suit at the place where his registered office is. The
judgment has to be read as a whole to understand the law laid down.
4 Section 134 of the Trade Marks Act, 1999 reads as under :
134. Suit for infringement, etc., to be instituted before District Court.
(1) 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.
(2) For the purpose of clauses (a) and (b) 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
2 MANU/MH/1795/2016
Shraddha Talekar PS 2/6
3 4.lpetn.38.2017 comsl.44.2017.doc
time of the institution of the suit or other proceeding, the person
instituting the suit or 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.
Explanation.--For the purposes of sub-section (2), "person" includes
the registered proprietor and the registered user.
5 In my view and as held by this Court in Manugraph India Ltd. vs.
Simarg Technologies Pvt. Ltd. and Ors. 3, the Supreme Court recognized
that an additional forum has been provided under Section 134 (2) of the
Trade Marks Act, 1999 by including the District Court within whose limits a
plaintiff actually and voluntarily resides or carried on business or personally
works for gain as a possible place for such a plaintiff to bring a trade mark
action. It will be useful to reproduce paragraphs 34, 35 and 36 of
Manugraph India Ltd. (Supra) which read as under :
"34. Mr. Kane draws my attention to the judgment of another learned Single
Judge (Vipin Sanghi J) of the Delhi High Court in RSPL Limited v Mukesh
Sharma & Anr.7 Mr. Justice Sanghi was of the view that the case before him
was unaffected by the Division Bench's decision in Ultra Home, one he came
upon after he reserved judgment in RSPL Ltd. Yet, as a student of law, he set
out his reasons for disagreeing with the view of the Division Bench. Mr.
Justice Sanghi's judgment sets out several passages from Sanjay Dalia and he
too concludes, as have I, that the Supreme Court recognize that an additional
forum had been provided under Section 62(2) and Section 134(2) of the Trade
Marks Act, 1999 by including the District Court within whose limits a plaintiff
actually and voluntarily resides or carries on business or personally works for
gain as a possible place for such a plaintiff to bring a trade mark or copyright
action. In paragraph 22 of his decision, Mr. Justice Sanghi summarized the
position as it emerges from Sanjay Dalia with admirable precision and
concision:
"22. From the aforesaid decision in Indian Performing Rights
Society Limited (supra), and the decision cited by the Supreme
Court therein, in my opinion, the position that emerges is as
follows:
3. AIR 2016 Bom. 217
Shraddha Talekar PS 3/6
4 4.lpetn.38.2017 comsl.44.2017.doc
(a) By resort to Section 134 of the Trade Marks Act and 62 of the
Copyright Act, the Plaintiff may institute the suit where the
Plaintiff voluntarily resides or carries on business or personally
works for gain. In the context of corporation, which includes a
company incorporated under the Indian Companies Act, 1956,
such a place would be the place where the registered office of
the company is situated. Thus, a company can maintain a suit
under
Section 134 of the Trade marks Act, or Section 62 of the
Copyright Act, at the place where its registered office is situated,
irrespective of the fact, whether or not, cause of action has
arisen within the jurisdiction of the Court, within whose
jurisdiction the registered office of the company is situated.
(b) Section 134 of the Trade Marks Act and Section 62 of the
Copyright Act do not take away right of the Plaintiff to institute
the suit by resort to Section 20 of the CPC, as Section 134 of the
Trade marks Act and Section 62 of the Copyright Act provide an
additional forum to the Plaintiff alleging infringement of the
registered trademark or copyright, as the case may be. This is
clear from the inclusive definition of the expression, 'District
Court having jurisdiction' contained in Section 134(2) of the
Trade Marks Act and Section 62(2) of the Copyright Act. Thus,
the Plaintiff may file a suit for infringement of
trademark/copyright either at the place where the Plaintiff
voluntarily resides or carries on business or personally works
for gain by resort to Section 62 of the Copyright Act and Section
134 of the Trade Marks Act, or at the place where, 'the
Defendant, or each of the Defendants where there are more than
one, at the time of commencement of the suit, actually and
voluntarily resides, or carries on business, or personally works
for gain'. [Section 20(a)]; or where any of the Defendants,
where there are more than one, at the time of the commencement
of the suit, actually and voluntarily resides, or carries on
business, or personally works for gain, provided that in such
case either the leave of the Court is given, or the Defendants
who do not reside, or carry on business, or personally work for
gain, as aforesaid, acquiesce in such institution [section 20(b)];
or the cause of action wholly or in part, arises [section 20(c)].
(c) The Plaintiff cannot file a suit alleging infringement of
trademark/copyright at a place where it has a subordinate office,
by resort to
Section 134 of the Trade Marks Act or Section 62 of the
Copyright Act, unless one of the conditions of Section 20 CPC
are satisfied."
35. I am in most respectful agreement with the views expressed by Mr. Justice
Sanghi. In my view, his reading of Sanjay Dalia is correct on all counts.
36. What emerges from this discussion is this:
(a) a plaintiff suing under the Trade Marks Act or Copyright Act
can always file the suit in the jurisdiction where he lives, works
for gain or carries on business. In the context of a company,
Shraddha Talekar PS 4/6
5 4.lpetn.38.2017 comsl.44.2017.doc
given the view in Sanjay Dalia, this would mean where the
company has its principal or registered office. All issues of cause
of action and situs or location of the defendant or the cause of
action are inconsequential. It makes no difference where the
defendant resides. It makes no difference where the cause of
action arose. It certainly makes no difference that the plaintiff
also happens to have a branch office in another location where
the cause of action may have arisen or where the defendant may
reside or carries on business.
(b) Where the plaintiff has only one office, it presents no
difficulty. Where the plaintiff has multiple offices, however, he
has a limited choice. He may either bring a Suit under Section
134(2) or Section 62(2), i.e., within the jurisdiction where he
resides; or he may invoke Section 20 and file a suit where the
Defendants reside or work for gain or where the cause of action
arose wholly or in part. The fact that the Plaintiff has the choice
of bringing a suit based on Section 20 of the CPC does not mean
that his rights under Section 134(2) or Section 62(2) are in any
way eroded, curtailed or restricted.
(c) However, where the plaintiff chooses not to file a Suit at his
or its principal business or where his registered office is located,
and also chooses not to file a suit in a jurisdiction covered by
Section 20 of the CPC but instead attempts to file the suit at some
other location where the plaintiff happens to have a subsidiary or
satellite office, but where there is absolutely nothing else (neither
cause of action nor any of the defendants) the Plaintiff cannot
invoke Section 134(2) or Section 62(2) to drag the Defendant to
that distant location. That, following the decision of the Supreme
Court, is the abuse that is required to be prevented. That is in
fact the only abuse that is required to be prevented.
4. The Section 134(2) and Section 62(2) privilege or advantage attaches to
the registered office or principal place of work. It is a privilege not to be used
by abandoning the registered office situs, abandoning the Section 20 situs
options, and travelling to some remote location where there is neither
defendant nor cause of action. That is the mischief addressed in Sanjay Dalia.
To illustrate: the plaintiff has its registered office in Mumbai. The defendant is
in Delhi. The cause of action arose in Delhi. The plaintiff also has another
branch office in Port Blair. A plaintiff can sue in Mumbai or in Delhi, but not
in Port Blair."
6 In the circumstances, because the plaintiff has multiple offices, he
may either bring a suit under Section 134(2) within the jurisdiction where he
resides or carries on business or personally works for gain or he may invoke
Shraddha Talekar PS 5/6
6 4.lpetn.38.2017 comsl.44.2017.doc
Section 20 and file a suit where the defendants reside or work for gain or
where the cause of action wholly or in part has arisen. The fact that the
plaintiff has the choice of bringing a suit based on Section 20 of the Code of
Civil Procedure does not mean that his rights under Section 134(2) are in
any way eroded, curtailed or restricted.
Since admittedly, the plaintiff has its registered office in Mumbai and
the trade mark has also been registered with the Registrar of Trade Marks in
Mumbai, this Court will have jurisdiction.
7 Mr.Mahadgut for the defendant states that without prejudice to the
defendant's right to challenge this Court's finding under Section 9A, this
Court having come to a conclusion that this Court has jurisdiction, he has
no objection if the Leave Petition under Section 14 of the Letters Patent is
allowed. Mr.Mahadgut states that in the Appeal Court, if he succeeds in the
9A issue, then he should be granted liberty for applying for revoking this
leave granted as well. Leave granted.
8 Leave Petition accordingly disposed.
9 The notice of motion be listed on 10th August 2017 at 3:00 P.M.
(K.R. SHRIRAM, J.)
Shraddha Talekar PS 6/6
