Karnataka High Court

Varun Chopra vs Shyam Sunder Chopra And Sons on 30 June, 2023

Bench: H T Prasad

                      1                          R
IN THE HIGH COURT OF KARNATAKA AT BENGALURU

     DATED THIS THE 30TH DAY OF JUNE 2023

                   BEFORE

THE HON'BLE MR. JUSTICE H. T. NARENDRA PRASAD

          MFA No.2638 OF 2023 (IPR)


BETWEEN

1.   VARUN CHOPRA
     AN INDIAN, HINDU
     AGED ABOUT 40 YEARS
     S/O SRI CHANDER SHEEL CHOPRA
     OCC BUSINESS 28 MISSION COMPOUND
     SAHARANPUR-241001
     UTTAR PRADESH.

2.   JAGDAMAN KUMAR CHOPRA
     AN INDIAN, HINDU
     AGED ABOUT 88 YEARS
     S/O LATE SRI MOHAN LAL CHOPRA
     PROPRIETOR
     TRADING AS RAJA TRADER
     28 MISSION COMPOUND
     SAHARANPUT-241001
     UTTAR PRADESH.
                                 ...APPELLANTS

(BY SRI. ADITYA SONDHI, SENIOR COUNSEL FOR
SMT.DEEPA.J. AND MR.PUNEET YADAV, ADVOCATES)
                         2



AND

1.    SHYAM SUNDER CHOPRA AND SONS
      HUF,
      TRADING AS SHYAM TRADERS
      REPRESENTED BY ITS KARTA
      SHYAM SUNDER CHOPRA
      AN INDIAN, HINDU
      AGED ABOUT 62 YEARS
      S/O SRI JAGDAMAN KUMAR CHOPRA
      2537, MISSION COMPOUND
      NEAR SAINT MARY SCHOOL
      SAHARANPUR-241001
      UTTAR PRADESH.

2.    SAMPAN CHOPRA
      AN INDIAN, HINDU
      AGED ABOUT 35 YEARS
      S/O SRI SHYAM SUNDER CHOPRA
      1426/233, VAISHALI VIHAR
      SAHARANPUR-247001
      UTTAR PRADESH.

3.    VAIBHAV CHOPRA
      AN INDIAN, HINDU
      AGED ABOUT 35 YEARS
      S/O SRI VINOD KUMAR CHOPRA
      PROPRIETOR TRADING AS
      S.M. INTERNATIONAL
      O-43, IST FLOOR, SOUTH CITY-1
      GURGAON-122001
      HARYANA.

4.    SAMVITEE FOODS PVT LTD
      AN INDIAN COMPANY INCORPORATED
      UNDER THE COMPANIES ACT 2013
                          3



      CIN U 74900HR2016PTC058023
      REPRESENTED BY ITS DIRECTOR
      VAIBHAV CHOPRA
      AN INDIAN, HINDU
      AGED ABOUT 35 YEARS
      S/O SRI VINOD KUMAR CHOPRA,
      O-43, IST FLOOR
      SOUTH CITY-1, GURGAON-122001
      HARYANA.

5.    VAIBHAV CHOPRA
      AN INDIAN, HINDU
      AGED ABOUT 35 YEARS
      S/O SRI VINOD KUMAR CHOPRA
      28 MISSION COMPOUND
      SAHARANPUR-241001
      UTTAR PRADESH.
                                     ...RESPONDENTS

(BY SRI. VENKATESH R BHAGAT, ADVOCATE)


      THIS MFA IS FILED UNDER ORDER 43 RULE 96
OF CPC, PRAYING TO SET ASIDE THE JUDGMENT AND
DECREE DATED 11.04.2023 IN OS.NO.6788/2022 ON
THE FILE OF THE XVIII ADDITIONAL CITY CIVIL
JUDGE, BENGALURU.

      THIS MFA, HAVING BEEN HEARD AND RESERVED
FOR   JUDGMENT   ON   30.06.2023,   COMING   ON   FOR
PRONOUNCEMENT THIS DAY, H.T.NARENDRA PRASAD J,
DELIVERED THE FOLLOWING:
                              4



                          JUDGMENT

1. This appeal is filed by the appellants-plaintiffs

under Order 43 Rule 96 of CPC challenging the order

dated 11.04.2023 passed by XVIII Addl. City Civil

Judge, Bengaluru on I.A.No.4 in O.S.No.6788/2022

whereby the Trial Court has ordered for return of the

plaint to the plaintiffs to present the same before the

jurisdictional court.

2. For the sake of convenience, the parties are

referred to as per their ranking before the Trial Court

in the original suit.

3. The case of the plaintiffs is that M/s.Raja Traders

was a partnership firm consisting of partners

Sri.Mohan Lal Chopra and his only son Sri.Jagdaman

Kumar Chopra. The said M/s.Raja Traders had

adopted the trademark 'NATRAJ' in the year 1956.

Upon the death of one of the partners i.e., Sri.Mohan

Lal Chopra in the year 1980, the partnership firm of

M/s.Raja Traders was dissolved and the surviving

partner, Sri.Jagdaman Kumar Chopra, who is plaintiff

No.2, became the sole Proprietor of M/s.Raja Traders.

The further case of the plaintiffs is that the defendants

have also acknowledged the sole proprietorship of

Mr.Jagdaman Kumar Chopra, plaintiff No.2. In the

month of August 2022, the plaintiffs for the first time

came to know that the defendants have filed an

application for registration of trademarks, namely, 'SV

NATRAJ' and 'SHRI NATRAJ JI' and also the

defendants are using the said trademark and selling

the products in the city of Bengaluru. Hence, the suit

is filed before the Civil Court, Bengaluru.

4. On service of summons, the defendants have

appeared through their counsel and filed written

statement denying all the averments made in the

plaint. It was contended that there was no release of

right in favour of plaintiff No.2 by other family

members of the plaintiffs to continue as a sole

proprietor of M/s.Raja Traders. The plaintiff No.2

without authority of law has claimed sole

proprietorship of M/s.Raja Traders. They further

contended that the plaintiff No.2 has illegally got the

affidavit of defendants in his favour to get the

trademark transferred in his name. It was contended

that there is no cause of action that arises to file the

suit. The Civil Court, Bengaluru has no territorial

jurisdiction to entertain the suit. Neither the plaintiffs,

nor the defendants are residing within the jurisdiction

of the Civil Court, Bengaluru and none of the parties

are carrying on business within the said jurisdiction.

Hence, the suit filed by the plaintiffs is not

maintainable. Hence, he sought for dismissal of the

suit.

5. Along with the written statement, the defendants

filed I.A.No.4 under Order 7 Rule 11(a) of CPC seeking

for rejection of plaint as there is no cause of action to

file the suit. It is contended that neither the plaintiffs

nor the defendants are residing within the jurisdiction

of the Civil Court, Bengaluru and none of them are

carrying on business within the said jurisdiction.

Hence, they sought for rejection of the plaint.

6. The plaintiffs have filed objections to I.A.No.4

and they contended that the suit is maintainable as

per Section 20 of CPC. The defendants are selling the

products in the City of Bengaluru. Hence, the cause of

action arises within the jurisdiction of the Civil Court,

Bengaluru. Hence, they sought for dismissal of

I.A.No.4 filed by the defendants.

7. On the basis of the pleadings of the parties, the

Trial Court framed the following issue:

"Whether the plaintiff proves that this Court has territorial jurisdiction to try the suit?"

8. After hearing the arguments of the parties and

judgments relied upon by the parties, the Trial Court

by order dated 11.04.2023 has allowed I.A.No.4 filed

by the defendants and ordered for return of the plaint

to the plaintiffs to present the same before the

jurisdictional court, as this Court has no territorial

jurisdiction to try the suit. Being aggrieved by the

same, the plaintiffs have filed this appeal.

9. Mr.Aditya Sondhi, learned senior counsel

appearing for Ms.Deepa.J and Mr.Puneet Yadav,

learned counsel for the plaintiffs has contended that

the Trial Court has erred in holding that Section 20 of

CPC is not applicable for the cases filed for

infringement and passing off of the trademark. He

further contended that the plaint cannot be rejected

on the basis of the allegations made in the written

statement or in the application filed by the

defendants. The court has to read the entire plaint as

a whole.

10. The learned senior counsel further contended

that the plaintiffs have specifically pleaded in the

plaint that the defendants are selling the product in

the City of Bengaluru. Even in the written statement,

the defendants have admitted the same. Therefore, it

is clear that plaintiffs have made out a case for filing

the suit within the territorial jurisdiction of Civil Court,

Bengaluru. But the Trial Court has erred in rejecting

the plaint at its threshold. In support of this

contention, he has relied upon the decision of the

Apex Court in the case of Mayar (H.K.) Ltd. &

Others -v- Owners & Parties, Vessel M.V.

Fortune Express & Others reported in 2006(3)

SCC 100.

11. The learned senior counsel further contended

that the Trial Court has misconstrued the decision of

this Court rendered in the case of M/S. Unilever

Australasia -v- M/S. Shingar Cosmetics Private

Limited reported in (2010) 3 Kar.L.J. 381 and

Division Bench decision of Delhi High Court in the case

of Ultra Home Constructions Private Limited -v-

Purushotham Kumar Chaubey and others

reported in 2016 SCC Online Delhi 376. In the said

decisions, the respective courts have considered

Section 134(2) of The Trade Marks Act, 1999 and

Section 62 of the Copyrights Act. The Courts have

never held that Section 20 of CPC is not applicable for

the matters filed for infringement and passing off of

the trade marks.

12. The learned senior counsel has further

contended that infact, the Apex Court in the case of

Indian Performing Rights Society Limited -v-

Sanjay Dalia and another reported in (2015) 10

SCC 161 in paragraph-14 has held that Section

134(2) of the Trade marks Act does not oust the

applicability of Section 20 of CPC.

13. Per contra, Mr.Venkatesh R Bhagat, learned

counsel for the respondents-defendants has

contended that a reading of the plaint, it clearly shows

that there is no cause of action arising in Bengaluru to

file a suit in Bengaluru. The plaintiffs having invoked

the cause of action on the basis of Section 134(2) of

Trade Marks Act. As per the settled law as laid down

in the case of Indian Performing Rights Society

Limited (supra) reported in (2015) 10 SCC 161, the

Civil Court Bengaluru has no jurisdiction to try the

suit. He further contended that neither the plaintiffs

nor the defendants are residing within the jurisdiction

of the Civil Court, Bengaluru and none of the parties

are carrying on business within the local limits of the

Civil Court, Bengaluru. He further submitted that as

per Section 134(2) of the Act, there is a clear bar to

invoke Section 20 of the CPC. Therefore, the suit filed

by the plaintiffs is not maintainable.

14. The learned counsel for respondents further

contended that as per Section 134(2) of the Trade

Marks Act, there is a non obstacle clause which

excludes the applicability of Section 20 of the CPC, for

the cases filed for infringement and passing off of the

trademark. The plaintiffs cannot maintain the suit

within local jurisdiction of Civil Court, Bengaluru. The

Trial Court has relied upon the judgment of this Court

in the case of M/s.Unilever Australasia (supra)

reported in (2010) 3 Kar.L.J. 381, judgment of Apex

Court in the case of Indian Performing Rights

Society Limited (supra) reported in (2015) 10 SCC

161 and judgment of Delhi High Court in the case of

Ultra Home Consturctions Private Limited (supra)

reported in 2016 SCC Online Delhi 376 and has

rightly allowed the application, i.e., I.A.No.4. Hence,

he sought for dismissal of the appeal.

15. Heard Mr.Aditya Sondhi, learned senior counsel

for the appellants and Mr.Venkatesh R Bhagat, learned

counsel for the respondents.

16. After hearing the arguments of the respective

learned counsel for the parties, the point that arises

for consideration in this appeal is:

"Whether the Trial Court is justified in holding that Section 20 of CPC is not applicable for the cases filed for infringement and passing off of trademark ? "

17. For better understanding, it is relevant to extract

Section 134 of the Trade Marks Act, 1999; Section 62

of the Copyrights Act and Section 20 of CPC:

18. Section 134 of the Trade Marks Act, 1999 is

extracted hereunder and it reads as follows:

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 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.

18. Section 62 of the Copyrights Act is

extracted hereunder and it reads as follows:

62. Jurisdiction of court over matters arising under this Chapter.--

(1) Every suit or other civil proceeding arising under this Chapter in respect of the infringement of copyright in any work or the infringement of any other right conferred by this Act shall be instituted in the district court having jurisdiction.

(2) For the purpose 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 time of the institution of the suit or other proceeding, the person instituting the suit or other 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.

19. Section 20 of CPC is extracted hereunder and it

reads as follows:

20. Other suits to be instituted where defendants reside or cause of action arises Subject to the limitations aforesaid, every suit shall be instituted in Court within the local limits of whose jurisdiction-

(a) the defendant, or each 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; or

(b) 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; or

(c) the cause of action, wholly or in part, arises.

Explanation-A corporation shall be deemed to carry on business at its sole or principal office in India or, in respect of any cause of action arising at any place where it has also a subordinate office, at such place.

20. The Parliament has enacted the legislation called

'Trade Marks Act, 1999' with an object to amend and

consolidated the law relating to trade marks, to

provide for registration and better protection of trade

marks for goods and services and for the prevention

of the use of fraudulent marks.

21. Section 134 of the Trade Marks Act was

introduced under the umbrella of Section 20 of CPC,

which provides almost similar right to the plaintiffs

with respect to the jurisdiction of the forum, where

the registered owner or registered user resides or

carries on business. This provision is a departure from

traditional principle, which requires the suit to be

instituted at the defendant's place of residence or

business or where the cause of action arises inside

India. The main object of enacting Section 134(2) of

the Act is to create an additional forum to the

plaintiffs.

22. The objects and reasons prescribed under

Section 134 of the Trade Marks Act, this clause

stipulates the forum for institution of infringement

proceedings, etc., to be the District Court. It is

proposed that the term "District Court having

jurisdiction" would include a District Court within the

local limits of whose jurisdiction, the person, or one

of the persons, instituting the suit or other

proceedings, actually or voluntarily resides or carries

on business or personally works for gain. This

amendment would bring the trade marks law in line

with the provisions contained in the Copyright Act,

1957 as very often a trade mark is also registered as

an artistic work under the Copyright Act.

23. By plain reading of Section 134 of Trade Marks

Act and its objects and reasons, it is understood that

for infringement of a registered Trade Mark or relating

to any right in a registered trade mark, suit shall be

instituted in District Court having jurisdiction to try

the suit. 'District Court having jurisdiction' includes a

District Court within the local limits of whose

jurisdiction at the time of institution of the suit or

other proceeding, registered proprietor and the

registered user resides or carries on business. If the

suit is only for passing off, the suit shall be instituted

before District Court having jurisdiction to try the suit.

24. From conjoint reading of provisions of Section

134(2) of the Trade Marks Act and Section 20 of CPC,

it is clear that an additional forum has been provided,

which includes a District Court within whose limits, the

plaintiff actually and voluntarily resides or carries on

business or personally works for gain. The object of

the provisions was to enable the plaintiff to institute a

suit at a place where he or they resided or carried on

business.

25. The expression 'notwithstanding anything

contained in the Code of Civil Procedure' does not oust

the applicability of the provisions of Section 20 of CPC.

It is clear that additional remedy has been provided to

the plaintiff so as to file a suit, where he resides or

carries on business as the case may be.

26. The very intendment of insertion of the

provisions of Section 62 of the Copyrights Act and

Section 134 of the Trade Marks Act is to provide an

additional forum to the plaintiff.

27. The Apex Court in the case of Indian

Performing Rights Society Limited (supra)

reported in (2015) 10 SCC 161 has held that Section

134 of the Trade Marks Act provides for an additional

forum to the plaintiff to file a suit, in addition to

Section 20 of CPC. Paragraph 14 of the said decision

is relevant and same is extracted below:

"14. Considering the very language of section 62 of the Copyright Act and section 134 of the Trade Marks Act, an additional

forum has been provided by including a District Court within whose limits the plaintiff actually and voluntarily resides or carries on business or personally works for gain. The object of the provisions was to enable the plaintiff to institute a suit at a place where he or they resided or carried on business, not to enable them to drag defendant further away from such a place also as is being done in the instant cases.

In our opinion, the expression "notwithstanding anything contained in the Code of Civil Procedure" does not oust the applicability of the provisions of section 20 of the Code of Civil Procedure and it is clear that additional remedy has been provided to the plaintiff so as to file a suit where he is residing or carrying on business etc., as the case may be. Section 20 of the Code of Civil Procedure enables a plaintiff to file a suit where the defendant resides or where cause of action arose. Section 20(a) and section 20(b) usually provides the venue where the defendant or any of them

resides, carries on business or personally works for gain. Section 20(c) of the Code of Civil Procedure enables a plaintiff to institute a suit where the cause of action wholly or in part, arises. The Explanation to Section 20 C.P.C. has been added to the effect that Corporation shall be deemed to carry on business at its sole or principal office in India or in respect of any cause of action arising at any place where it has subordinate office at such place. Thus, 'corporation' can be sued at a place having its sole or principal office and where cause of action wholly or in part, arises at a place where it has also a subordinate office at such place."

28. From the discussions above, it is clear that

Section 134(2) of the Trade Marks Act has not ousted

the applicability of provisions of Section 20 of CPC. In

fact, an additional forum has been provided to the

plaintiff so as to file the suit, where he resides or

carries on business etc. But the Trial Court has erred

in holding that as per Section 134(2) of the Trade

Marks Act, Section 20 of CPC is not applicable for the

cases filed for infringement and passing off of trade

marks.

29. The Trial Court has misconstrued the decision of

this Court in the case of M/s.Unilever Australasia