Bombay High Court

The Himalayan Club vs Kanwar B. Singh And Ors on 24 March, 2023

Bench: Nitin W. Sambre

2023:BHC-AS:8860

AO-809-22.doc.

IN THE HIGH COURT OF JUDICATURE AT BOMBAY
CIVIL APPELLATE JURISDICTION
Digitally
signed by
BALAJI
BALAJI GOVINDRAO
GOVINDRAO PANCHAL
PANCHAL Date:
APPEAL FROM ORDER NO.809 OF 2022
2023.03.24
15:32:22
+0530 IN
SHORT CAUSE SUIT NO.214 OF 2018
WITH
CIVIL APPLICATION NO.17342 OF 2022

The Himalayan Club ..Appellant/Applicant
Versus
Kanwar B. Singh & Ors. ..Respondents

Mr. Ashish Kamat a/w Shyam Kapadia, Jigisha Vadodaria & Jinelle Gogai
i/by Negandhi Shah & Himayatullah, for the Appellant/ Applicant.
Mr. Jacob Kadantot a/w Manmohan Amonkar, for the Respondent No.1.
Mr. Soli Cooper, Senior Advocate a/w Yohann Cooper, Vaibhav Singh &
Bryan Pillai i/by Shardul Amarchand Mangaldas & Co., for Respondent
Nos.2 & 3.

CORAM : NITIN W. SAMBRE, J.

RESERVED ON : 12th DECEMBER, 2022 PRONOUNCED ON : 24th MARCH, 2023

P.C.

1. The challenge in the present appeal from order is to the

order dated 3rd August, 2022 passed by City Civil Court, Greater Mumbai,

thereby giving ruling on the preliminary issue holding that the suit of the

appellant/plaintiff is not maintainable. The impugned order was passed

on 3rd August, 2022 whereby the City Civil Court has held that it has no

jurisdiction to try the suit and has returned the plaint for presentation

before the appropriate forum/Court.

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 AO-809-22.doc.

2. The facts necessary for deciding the present appeal are as

under :-

Appellant/plaintiff initiated Short Cause Suit No.214 of 2018

on the file of City Civil Court, Mumbai claiming relief of declaration that

the disputed Facebook Group is owned by and the property of the

plaintiff and it has exclusive rights to control and manage the Facebook

Group. A mandatory injunction is sought directing the defendants to

hand over operation and control of the Facebook Group to the plaintiff

and to do such other acts required to effect the handing over of Facebook

Group to the plaintiff. A mandatory injunction is also sought against

defendant Nos.2 to 4 directing them to remove the defendant No.1 as the

creator of the group with other ancillary reliefs.

3. The appellant claims that it was founded on 17 th February,

1928 which is a registered society and enjoys a wide membership with

presence in various countries across the globe. It also claims that it

maintains various publications and libraries and organizes several

lectures and events etc. It is the case of the plaintiff that the defendant

No.1 was an office bearer of the plaintiff who was assigned a task of

helping it with the website, internet based chat groups and the social

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media outreach. According to plaintiff, the Facebook Group "The

Himalayan Club" having its website as " www.facebook.com/groups/

TheHimalayanClub" (hereinafter shall be referred to as the "Facebook

Group" for short) was created by the defendant No.1 on instructions and

directions of the plaintiff as part of the role assigned to it and accordingly

defendant No.1 was "E-Group Moderator" as he was one of the member

of the Managing Committee of the plaintiff.

4. For the purpose of better handling of the followers/ members

which runs in the lakhs, management of the group was divided into

Administrator, other Administrator and Members etc.. According to

plaintiff, the defendant No.1 who has created group for and on behalf of

the plaintiff in the best interest of management of the said group

appointed Administrators as were authorized pursuant to the delegation

to that effect.

5. It is further claimed that the position of the defendant No.1

becomes "creator administrator". Taking undue advantage of the said

position, the defendant No.1 has started claiming that the plaintiff has no

connection with the aforesaid Facebook Group and has tried to

garner/usurp the control of the said Facebook Group, as he has

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unilaterally removed various administrators that too without any such

authority or direction from the plaintiff, the suit came to be initiated.

6. After the suit summons were served on the defendant No.1,

he filed his written statement and raised an issue as to the jurisdiction of

the Court, as it is claimed by the defendant that the Facebook Group

Account is an intellectual property. Apart from above the preliminary

objection, the respondent No.1/original defendant No.1 denied all the

allegations made in the plaint. According to him, since the Facebook

Group Account is an intellectual property in relation to which the dispute

is raised before the City Civil Court in view of provisions of Clause (3A)

of Section 2 of the Bombay City Civil Court Act, 1948, the Court has no

jurisdiction to try and decide the suit.

7. Based on the aforesaid objection to the jurisdiction, a

preliminary issue was framed as to whether the Court has jurisdiction to

try the suit and vide order impugned the Court has held that the

Facebook Group is a media platform for promotion of plaintiff club which

became well known to its members. It is further held that since the

defendant No.1 is claiming that the Facebook Group is private group, the

dispute comes within the ambit of the trademark. The Trial Court further

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held that since the dispute pertains to ownership of Facebook Group

which is trademark defined as referred in Section 2(1)(m) of the Trade

Marks Act, the said comes within the ambit of intellectual property and as

such in view of Section 2(3A) of the Bombay City Civil Court Act, 1948,

the Court has no jurisdiction.

8. Mr. Ashish Kamat, learned counsel appearing for the

appellant would urge that the Court below has committed error apparent

on the face of record giving a ruling that it lacks jurisdiction, as the

dispute raised by the respondents/defendants pertains to intellectual

property. So as to substantiate his contentions, Mr. Ashish Kamat would

invite attention of this Court to the pleadings in the plaint, the objections

raised by the respondent No.1 and the cryptic finding recorded by the

Court below. He would urge that the order impugned is contrary to the

very scheme of Order VII Rule 10 of the CPC. Learned counsel would

further urge that the very provisions of Section 3 of the Act are not

applicable to the facts of the case in hand. According to him, the dispute

was never in relation to the trademark, as the trademark holder in case

under the Trade Marks Act asserts the deceptive similarity. According to

him, there is no trademark infringement or passing off in that eventuality.

It is further required to be noted that the suit is based on the Facebook

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Group being property of the appellant/plaintiff and misuse of the same

by respondent No.1. In such an eventuality, the suit has to be held to be

maintainable.

9. While countering aforesaid submissions, counsel for the

respondent No.1 would support the order impugned. According to him,

the ownership of the Facebook Group created by the defendant No.1 is

admittedly creator of the same and rightly prompted him to raise

preliminary objection on the maintainability of the suit. It is further

claimed that the Court below having regard to the definition of

"trademark", intellectual property was justified in holding that the suit is

barred under Section 2(3A) of the Bombay Civil Court Act, 1948. It is

further claimed that the appellant/plaintiff can always present suit before

the Court having competent jurisdiction and in that view of the matter,

the appeal is liable to be dismissed.

10. Counsel for respondent Nos.2 and 3 would invite attention of

this Court to its role as "Inter-Mediator". Drawing support from the

judgment of Apex Court in the mater of Google India Private Limited Vs.

Visaka Industries reported in (2020) 4 SCC 162, he would urge that the

said respondents stand on a different footing in the capacity of facilitators

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of exchange of information. According to him, the said respondents are

not liable under the IT Act. He would urge that Section 79 of the IT Act

can be sufficiently relied on.

11. I have appreciated the aforesaid submissions.

12. With the assistance of respective counsels, I have perused the

allegations in the plaint so as to infer whether the pleadings in the plaint

confers jurisdiction on the City Civil Court.

13. The nature of relief claimed in the plaint pertains to

declaration of ownership of the Facebook Group, the directions to hand

over operation and control of the Facebook Group and mandatory

injunction to remove the defendant No.1 as creator administrator with

other ancillary reliefs.

14. The aforesaid claim is based on the fact that the defendant

No.1 was the office bearer of the plaintiff and was authorized by the

plaintiff to create a Facebook Group for and on its behalf and to

administer the same for and on behalf of the plaintiff.

15. The defendant has come out with a case as that of creator

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and owner of the said Facebook Group. As such, there exists a dispute as

to the ownership of the Facebook Group.

16. Apart from above, if we consider the provisions of the

interpretation of the word "author" within the meaning of the Copyright

Act and Clause (z) which provides for "work of joint authorship", it is

further required to be noted that the said Copyright Act in its ambit

under Section 17 provides for the "First owner of copyright".

17. Apart from above, the Trade Marks Act, 1999 provides for

registration and better protection of trademarks for goods and services

and for the prevention of the use of fraudulent marks. The fact remains

that the Facebook Group is no way claimed to be a registered trademark

of the plaintiff of which the defendant No.1 allegedly infringed. Rather

the plaintiff has sought declaration that it is owner of the Facebook

Group and based on the same, ancillary reliefs are claimed. The claiming

of the relief is also based on the pleadings that the defendant No.1 by

misusing his position is trying to change the situation viz. ownership of

the Facebook Group by taking undue advantage his position as that of

"moderator" of the Facebook Group.

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 AO-809-22.doc.

18. The Facebook Group which is claimed to be of the appellant

is a website, internet based social media platform which provides for

members to exchange views, ideas and to post experiences, messages,

photographs etc.. As such, it cannot be said that the Facebook platform is

a trademark or a copyright. The appellant is seeking recovery and

restoration of the same.

19. If we consider the submissions of counsel for the

respondents/original defendants in the backdrop of provisions of clause

(m) of Sub-Section (1) of Section 2 of the Trademarks Act, 1999, which

defines "mark", the fact remains that the appellant is claiming to be a

registered proprietor of the said mark "The Himalayan Club". In this

background, it cannot be said that the recovery and restoration of

Facebook Group can be termed to be a dispute relating to trademark.

Once the case of the appellant is based on the creation of Facebook Group

under its instructions and authority, it cannot be said that the suit will fall

in the category as has been observed.

20. In this background, the conclusion drawn by the Court below

that the dispute involved in the suit pertains to the intellectual property

and as such, the Court has no jurisdiction to entertain the suit, cannot be

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accepted. The Court below has misguided itself thereby inferring that the

ownership of Facebook Group amounts to trademark and as such, the

dispute pertains to the intellectual property. In the background of

aforesaid observation, this Court is of the view that the suit is simplicitor

as that of declaration of ownership of the Facebook Group and based on

the same, consequential relief of injunction is sought.

21. In the aforesaid background, giving cumulative effect to the

pleadings in the plaint, it has to be held that the Court was having

jurisdiction and is in error in recording a finding that the suit pertains to

the claim of ownership of trademark and as such, is a suit pertaining to

an intellectual property.

22. In the aforesaid background, the Court below has committed

an error in invoking provisions of Clause (3A) of Section 2 of the Bombay

City Civil Court Act, 1948.

23. As such, the impugned order dated 3 rd August, 2022 is

hereby quashed and set aside. The preliminary issue is answered in the

negative and it is held that the City Civil Court has jurisdiction to try and

decide the suit.

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 AO-809-22.doc.

24. The appeal from order as such stands allowed in above

terms.

25. In view of disposal of appeal, pending civil application also

stands disposed of.




                                                 [NITIN W. SAMBRE, J.]




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