The Singer Company Limited & Anr vs M/S Chetan Machine Tools And Ors
2009 Latest Caselaw 654 Del

                                                          REPORTABLE

*       IN THE HIGH COURT OF DELHI AT NEW DELHI


                      I.A. Nos.612/2009 & 919/2009 in
                              CS(OS) No.2/2009


                               Date of Decision: February 26, 2009


        THE SINGER COMPANY LIMITED & ANR           ..... Plaintiffs
                      Through Mr. Sandeep Sethi, Senior Advocate
                      with Mrs. Anuradha Salhotra, Mr. Amritesh
                      Mishra & Ms. Bhawna Gandhi, Advocates


                      versus


        M/S CHETAN MACHINE TOOLS AND ORS         ..... Defendants
                      Through Mr. Ajay Sahni, Advocate with
                      Mr. Harshil, Advocate.

        CORAM:
        HON'BLE MS. JUSTICE REKHA SHARMA

1.      Whether the reporters of local papers may be allowed to see the
        judgment? Yes
2.      To be referred to the reporter or not? Yes
3.      Whether the judgment should be reported in the „Digest‟? Yes

REKHA SHARMA, J.

The Singer Company Limited and Singer India Limited are the

plaintiffs before me. They claim that plaintiff No.1 is the largest and

most successful sewing machine company. It manufactures and sells

sewing machines besides other variety of goods in around 150

countries including India under the trademark "Singer" which is

registered in India since the year 1942 and that plaintiff No.2 is an

affiliate of plaintiff No.1 and is a licensed user of its trademark. Based

on these averments, plaintiffs have filed the present suit against the

defendants who are manufacturing and selling Milling Machines, on the

allegation that they have adopted the trademark "Singer" which is

deceptively similar to their trademark in colour scheme and font and

consequently, they are infringing their trademark and are also passing

off their goods by riding on their piggy back. Hence, they have prayed

for a decree of permanent injunction against the defendants

restraining them from using the trademark "Singer" or any other

deceptively similar trademark.

The defendants in response to the suit have filed an application

under Order VII Rule XI of the Code of Civil Procedure (hereinafter

called the Code) and thereby seek rejection of the plaint, on the

ground that it does not disclose any cause of action within the

territorial jurisdiction of this Court. It is stated that there is not a

whisper in the plaint that the defendants at the time of

commencement of the suit actually and voluntarily reside or carry on

business or personally work for gain or that the cause of action has,

wholly or in part, arisen within the territorial jurisdiction of this Court.

It is alleged that the only averment that has been made to invoke the

jurisdiction of this Court is that the first plaintiff through the second

plaintiff carries on its business within the territorial jurisdiction of this

Court which averment, it is contended, is not enough to confer

jurisdiction on this Court. Hence, it is further contended that the plaint

is liable to be rejected.

Before I proceed to deal with the issue raised, it needs to be

noticed that the plaintiffs have along with the plaint filed number of

documents and one such document is the reply of the defendants

dated August 06, 2008 to a notice from the plaintiffs dated

July 31, 2008 calling upon them to desist from using their trademark

"Singer". In their reply, the defendants had stated that they are

established and reputed manufacturers and merchants of Milling

Machines and machine tools since 1991 and that the said products are

being sold throughout the country and have acquired a very vast and

ever increasing reputation and goodwill. The reply so given was

heavily relied upon by the plaintiffs to contend that this Court does

have the territorial jurisdiction to entertain the suit.

What also needs to be noticed, is that after the filing of the

application under Order VII Rule XI of the Code by the defendants, the

plaintiffs moved an application under Order VI Rule XVII of the Code

seeking amendment of the plaint so as to incorporate therein the

following averments:-

"The cause of action has arisen within the jurisdiction of the Hon‟ble Court as the defendants are featuring its product namely Milling Machine over the internet on websites and thereby inviting people from all over India, to purchase its said product. The said websites are accessible within the jurisdiction of the Hon‟ble Court and targets and/or is likely to target the public/ customers residing within the jurisdiction of the Hon‟ble Court to sell the same to them. Further, the defendants in their letter of August 11, 2008 at para No.3 admitted that the Milling Machines, machine tools manufactured and/or marketed by them are being sold all over the country. The said admission in the defendants‟ said letter makes it clear/evident that the aforementioned product(s) of the defendants is available within the jurisdiction of the Hon‟ble Court and/or the defendants have the intention to sell the same and/or carry on business within the jurisdiction of this Hon‟ble Court."

Should the amendment, as proposed, be allowed? This is yet

another issue which falls for determination.

The territorial jurisdiction to entertain a suit is governed by

Section 20 of the Code except in relation to immovable properties or

where the suit is for the compensation for wrongs to person or

movables. Those are governed by Sections 16 & 19 of the Code. In so

far as Section 20 of the Code is concerned, it provides that every suit

shall be instituted in a Court within the local limits of whose jurisdiction

the defendant actually and voluntarily resides, or carries on business,

or personally works for gain or where the cause of action, wholly or in

part, arises.

The plaintiffs do not dispute that the plaint does not contain

averments to the effect that the defendants actually and voluntarily

reside, or carry on business, or personally work for gain or that the

cause of action, wholly or in part, has arisen within the territorial

jurisdiction of this Court. This being so, should the plaint be rejected?

The answer is in the negative and the reason is that while examining

whether a plaint discloses a cause of action, it is not the plaint alone

which is to be seen but also the documents filed along with the plaint

and thereby forms part of the plaint. I say so on the strength of a

judgment of the Apex Court in Liverpool and London S.P. and I Asson.

Ltd. Vs. M.V.Sea Success I and Anr., reported in 2004(9) SCC 512 which

says that having regard to Order VII Rule XIV of the Code not only the

plaint but also the documents filed along with the plaint are required to

be taken into consideration for the purpose of disposal of the

application under Order VII Rule XI of the Code.

The plaintiffs, as has been noticed above, have filed along with

the plaint reply of the defendants to their notice dated July 31, 2008

calling upon them to desist from using the trademark "Singer".

Learned counsel for the plaintiffs on the basis of the said reply has

argued that the defendants having themselves admitted that their

products were being sold throughout India which obviously would be

taken to include Delhi cannot be allowed to contend that this Court

does not have the territorial jurisdiction to entertain the plaint and that

the failure of the plaintiffs in not making an averment that the

defendants‟ products were being sold in Delhi was not of much

consequence and that at the most, it was a mere omission which the

plaintiffs by virtue of application under Order VI Rule XVII of the Code

are seeking to make good.

The defendants, on the other hand, have contended that their

reply dated August 06, 2008 is of a general nature and it cannot be

taken to be an admission on their part so as to be conferring territorial

jurisdiction on this Court. As regards the application of the plaintiffs for

amendment, it is contended that where the plaint is completely silent

on the question of jurisdiction, the lacuna cannot be permitted to be

filled-up by allowing the application for amendment or by looking into

the documents filed along with the plaint, for documents can only

supplement the averments made in the plaint but cannot act as

substitute to the missing averments.

Having considered the rival submissions, I feel that in view of the

judgment of the Apex Court in Liverpool‟s case, it will not be right to

hold that the documents filed along with the plaint can be looked into

as supplementing the plaint only and not beyond that. It is on a

conjoint reading of the plaint and the documents filed along with it that

the Court should come to a conclusion, whether the suit filed by the

plaintiff discloses a cause of action within the territorial jurisdiction of

the concerned Court. As noticed above, the defendants in their reply

dated August 06, 2008 had clearly stated that their products were

being sold throughout the country. Prima-facie, the reply goes to show

that they are being sold in Delhi too. Of-course, the plaintiffs during

the course of trial shall have to prove that the products of the

defendants are actually being sold in Delhi but that will be a matter of

evidence. At the present stage of the proceedings, in view of the reply

dated August 06, 2008, it cannot be said that this Court lacks inherent

jurisdiction to entertain the suit. The mere failure under the

circumstances to set out this assertion in the plaint cannot be treated

as fatal.

There is yet another aspect which needs to be noticed. The

plaintiffs have made two-fold grievances against the defendants; one,

that they are infringing their trademark, and the other that they are

passing off their goods as that of the plaintiffs. In so far as the suit

against relief of infringement is concerned, it is stated that the suit can

even be filed within the local limits of the jurisdiction of a Court where

at the time of institution of the suit or other proceeding, the person

instituting the suit or proceeding actually and voluntarily resides or

carries on business or personally works for gain. In support, reference

is made to Section 134(2) of the Trade Marks Act, 1999 and to

paragraph No.31 of the plaint where it is stated that the first plaintiff

through second plaintiff carries on its business within the territorial

jurisdiction of this Court.

It is not disputed by learned counsel for the defendants that a

suit alleging infringement under Section 134 of the Trade Marks

Act, 1999 can be instituted within the jurisdiction of a Court where the

plaintiff actually and voluntarily resides or carries on business or

personally works for gain. However, it is submitted that no suit for

infringement is maintainable against the defendants in view of

Section 30(2)(e) of the Trade Marks Act, 1999. This Section lays down

that a registered trademark is not infringed where the use of a

registered trade mark, being one of two or more trade marks

registered under this Act which are identical or nearly resemble each

other, in exercise of the right to the use of that trademark given by

registration under this Act. Relying upon the said Section, it is argued

that no suit can be instituted by a person claiming to be the proprietor

of a registered trademark against another person who too has been

granted proprietary right of the same trademark and that the only

remedy in such a situation is to file a cancellation petition for removal

of the registered trademark before the Registrar of Trade Marks which

the plaintiffs, as per the averments made in the plaint, have already

done.

Responding to the aforesaid submissions, counsel for the

plaintiffs submits that there is no absolute bar to file a suit by the

proprietor of a registered trademark against another registered

proprietor of the same trademark and in support, he has relied upon

Section 124 of the Trade Marks Act, 1999, which runs as under:-

"Where in any suit for infringement of a trade mark, the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendant‟s trademark, the Court trying the suit shall, -

(i) if any proceedings for rectification of the register in relation to the plaintiff‟s or defendant‟s trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings."

Having regard to the provisions of Section 124 of the Trade

Marks Act, 1999, I am prima-facie of the view that a suit by a

registered proprietor of a trademark against another registered

proprietor of the same trademark cannot be declined to be entertained

at the threshold. Such a suit can lie but may have to be stayed

depending upon the defence raised by the defendants. I am, however,

expressing no final opinion on the issue raised except saying that the

suit cannot be rejected at the inception itself.

In any case, as noticed above, the plaintiffs have moved an

application under Order VI Rule XVII of the Code for amendment of the

plaint and thereby are seeking to make good the omissions. The

defendants say that once an application under Order VII Rule XI of the

Code for rejection of the plaint has been filed, an application for

amendment cannot be entertained. Is it so?

It has been time and again held by the Courts that procedural

laws are intended to facilitate and not to obstruct the course of

substantive justice. The Supreme Court in M/s Ganesh Trading Co. Vs.

Moji Ram reported in AIR 1978 Supreme Court 484 has held that the

defective pleadings are generally curable if the cause of action sought

to be brought out was not ab-initio completely absent. It has been

further held that:-

"Even very defective pleadings may be permitted to be cured, so as to constitute a cause of action where there was none, provided necessary conditions, such as payment of either any additional court fees, which may be payable, or of costs of the other side are complied with. "

It goes on to say that:-

"It is only if lapse of time has barred the remedy on a newly constituted cause of action that the Courts should, ordinarily, refuse prayers for amendment of pleadings."

As I have already said that in view of the reply of the defendants

dated August 06, 2008 this Court does not lack inherent jurisdiction to

deal with the suit, I see no reason why the amendment should not be

allowed. I am fortified in my view by a judgment of a learned Single

Judge of this Court in the case of Wasudhir Foundation Vs. C. Lal &

Sons & Ors. reported in 45 (1991) Delhi Law Times 556. What he

wrote, I quote:-

"5. This is righteous path. And, if this be so, is it not necessary, in the ends of justice, to extend the beneficial legal principles ensconced in Order 6 rule 17? Moreso, when one hardly discerns anything in Order 7 rule 11 which may lead one to take the view that it takes away the power of the Court to allow amendments or places hurdles in performance of its duty. After all, what is the effect of Order 7 rule 11? It is, if I understand correctly, that the plaintiff would not be precluded from filing a fresh suit in respect of the same cause of action, if he so desires (see Order 7, Rule 13). If such be the effect, why not permit the amendment of the plaint so as to remove the defect and prevent the operation of the Rule? Why make him first invite the rejection of the plaint, then allow him to file a fresh suit at the expense of delay and heavy costs? Why not straight-away allow him to amend the plaint, remove the defect and permit him, thereby, to proceed with the same suit? Why this rigmarole? After all, procedural law is intended to facilitate and not to obstruct the course of justice. With respect, it has rightly been had in Gaganmal V. Hongkong and Shanghai Banking Corp. AIR 1950 Bombay 345:

"It is perfectly true that it is incumbent upon the Court to reject a plaint that does not disclose a cause of action, but it does not follow that it is not open to the Court to allow a plaint to be amended so that it should disclose a cause of action. It is only when a plaint does not disclose a cause of action that the Court is called upon to exercise its power under O.7 R.11. But the Court may prevent the operation of O.7 R.11, and may save the plaint being rejected by exercising its power under O.6 R.17, and allowing the plaint to be amended."

In view of the foregoing discussion, the application of the

defendants under Order VII Rule XI of the Code is dismissed, and the

application of the plaintiffs under Order VI Rule XVII of the Code is

allowed. The amended plaint is taken on record.

Learned counsel for the defendants is directed to file written

statement to the suit as also reply to the application under Order

XXXIX Rules 1 & 2 of the Code within two weeks and rejoinder within

two weeks thereafter.

List on April 06, 2009.

REKHA SHARMA, J.

FEBRUARY 26, 2009 k