Meso Private Limited and Another vs Hasanali Kamruddin

V.M. Kanade, J.—By order dated 16th November, 2009, the following preliminary issue was framed:

Whether this Court has jurisdiction to entertain, try and dispose of the suit?

The Defendant, however has filed affidavit in lieu of evidence. The Learned Counsel for Plaintiff submitted that he would like to ask only a few preliminary questions and also stated that Plaintiff did not wish to lead any evidence on this issue.

In his affidavit in lieu of evidence, Defendant has stated that since 1986 he has been exporting goods under the Marks Mahalabiya Sartiya and Sandaliya. He has stated that he has been dealing only in export business and he has not made any sale in Mumbai or within the jurisdiction of this Court. He has stated that he is a permanent resident of Pune and has a small Manufacturing Unit and Office at Pune. He has further stated that Plaintiffs should not be allowed to combine causes of action regarding infringement of trade mark and passing of in the said suit and, therefore, leave granted under Clause 14 of the Letters Patent should be revoked. In cross-examination, Defendant has stated that they maintain their website by name www.hasanali Kamroodin.com and the pictures at pages 100 to 102 shown to him are pictures of their website. He has, however, admitted that the website can be accessed from any place in the world.

Counsel appearing on behalf of Defendant submitted that the provisions of Section 62 of the Copyright Act, 1957 and more particularly Sub-clause (2) is an exception to Section 20 of the Code of Civil Procedure. He submitted that, however, section was not intended to help business establishments with branches all over the country to drag a small trader to a court far away from his place of business to topple his business. In support of the said submission, he relied upon the judgment of High Court in Brooke Bond India Limited Vs. Balaji Tea (India) Pvt. Ltd., . He then invited my attention to the judgment of the learned Single Judge of this Court in Gold Seal Engineering Products Pvt. Ltd. and Ors. v. Hindustan Manufacturers and Ors. 1992 (12) PTC 8 (Bom) He also invited my attention to judgment of Delhi High Court in Lok Nath Prasad Gupta Vs. Bijay Kumar Gupta, .

On the other hand, Dr. Virendra Tulzapurkar, the Learned Senior Counsel appearing on behalf of Plaintiffs submitted that it is not disputed by Defendant that the Plaintiffs have registered office in Mumbai and that the trade mark of Plaintiff is a registered trade mark. He submitted that Section 62 of the Copyright Act and Section 134 of the Trade Marks Act made an exception to the general rule laid down in Section 20 of the CPC Code and permitted Plaintiff to file a suit at the place where he is carrying on business in cases where there is infringement of his trade mark or of a copy right and Clause 14 of the Letters Patent also permitted combining of different causes of action in order to avoid multiplicity of proceedings. He submitted that, so far as judgment of the learned Single Judge of this Court in Gold Steal Engineering Products Pvt. Ltd. and Ors., 1992-PTC-8 on which the reliance is placed by the learned Counsel for Defendant is concerned, the said judgment has been set aside by the Division Bench of this Court in Appeal No. 505 of 1992 and the matter was remanded and directed to be heard afresh. He submitted that, therefore, no reliance can be placed on the said judgment. He further submitted that so far as judgment of the Madras High Court in Brooke Bond India Limited Vs. Balaji Tea (India) Pvt. Ltd., is concerned, the Apex Court in M/s. Arte Indiana Vs. M/s. P. Mittulaul Lalah and Sons, had observed that in Brooke Bond India Limited Vs. Balaji Tea (India) Pvt. Ltd., , the Madras High Court declined to grant leave on the facts of the said case. He further pointed out that, in the said case, the Court had, at the stage of considering whether leave should be granted or not under Clause 14, had declined to grant leave. He submitted that, in the present case, leave was already granted after the Defendant was heard. Appeal against the said order was also dismissed. He submitted that the leave was granted after the Defendant was heard and, therefore, ratio of the said judgment in Brooke Bond India Limited Vs. Balaji Tea (India) Pvt. Ltd., on which reliance is placed by the Defendant, therefore, would not be applicable to the facts of this case.

I have heard both the Counsel at length. The said Sections 62 and 134 are clear exceptions to the general rule laid down in Section 20 of the Code of Civil Procedure. Section 20 of the CPC reads as under:

Other suits to be instituted where Defendants reside or cause of action arises.--Subject to the limitations aforesaid, every suit shall be instituted in a 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 cased 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.

However, Section 62 Sub-clause (2) of the Copyright Act, 1957 reads as under:

62(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.

Similarly, Section 134 of the Trade Marks Act, 1999 reads as under:

Suit for infringement, etc. to be instituted before District Court-(1) No suit 7

(a) for the infringement of a registered 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 Plaintiffs 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 Subsection (2), "person" includes the registered proprietor and the registered user.

Both, Section 62(2) and Section 134, therefore, are clear exceptions to the general rule of permitting Plaintiff to file suit where he is carrying on business. The intention of the Legislature on plain reading of the aforesaid provisions is to ensure that the Plaintiff whose copyright has been infringed or where there is infringement of his trade mark and also where there is passing of his trade mark, he should not be made to run from one place to another and, therefore, he is permitted to file a suit where he is carrying on his business.

Clause 14 of the Letters Patent reads as under:

Joinder of several causes of action: --And We do further ordain that where Plaintiff has several causes of action against 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.

The purpose behind Clause 14 is also to ensure that Plaintiff is permitted to combine several causes of action in one suit clearly in order to avoid multiplicity of proceedings.

In the present case, leave under Clause 14 was granted after the Defendant was heard at length and his objections were taken into consideration. In the evidence which was led by the Defendant, he has admitted that they have a website which can be accessed from any where in the world which clearly implies that their website can also be accessed in Mumbai. Admitted position is that the Plaintiffs have their registered office at Mumbai. Plaintiff No. 2 is a registered firm and were erstwhile proprietors of various trade marks and copyright and the partners of the said firm promoted and incorporated Plaintiff No. 1 - Company. The Division Bench of this Court in M/s. Arte Indiana Vs. M/s. P. Mittulaul Lalah and Sons, in para 12 clearly observed that the question as to whether, on facts, the Plaintiff is entitled to grant of leave as sought for or not is to be considered by the Court after examining the facts and after deciding whether a case for grant of leave has been made out or not. In the present case, the said exercise is already over and leave has been granted under Clause 14 of the Letters Patent, after Defendant was given due opportunity of being heard on that aspect. It is not disputed that Plaintiffs have their registered office in Mumbai and are carrying on business in Mumbai and elsewhere. The judgment of the learned Single Judge in the case of Gold Seal Engineering Products Pvt. Ltd. and Ors., has been overruled by the Division Bench of this Court in appeal and, therefore, the ratio of the said judgment cannot be relied upon by the Defendant.

For the aforesaid reasons, in my view, it will have to be held that this Court has jurisdiction to entertain, try and dispose of the suit, firstly in view of the provisions of Section 62(2) of the Copyright Act, 1957 and Section 134 of the Trade Marks Act, 1999 and secondly also in view of the fact that a leave has been granted by this Court under Clause 14 of the Letters Patent. No case is, therefore, made out by the Defendant for revoking the leave which has already been granted. The aforesaid preliminary issue is, therefore, answered in the affirmative.

Place the Notice of Motion for hearing on 22nd March 2010.