Perfect Automotive Components and Another vs Premier Instruments and Controls Ltd.

P.K. Misra, J.—These two appeals were heard earlier and judgment was reserved in 2007. However, the judgment could not be prepared

and pronounced earlier on account of the posting of the concerned Judges at Madurai at different times and the resultant dislocation of the relevant

files. Thereafter, the matter was again listed for hearing on 24.3.2008, on which date the counsels for both the parties were heard at length and the

matter was reserved for judgment. Subsequently, the counsels for the parties have also filed their written submissions.

O.S.A. No. 377 of 2001 is fled by M/s. Perfect Automotive Components, the sole Defendant in C.S. No. 534 of 1993. O.S.A. No. 378 of

2001 is filed by M/s. Pricol Lubricants (India) Pvt. Ltd., the sole Defendant in C.S. No. 535 of 1993. Both the above suits were brought by

Premier Instruments and Controls Limited, a private limited company, the common Respondent in both the appeals. Such Plaintiff company,

originally named as Premier Instruments Coimbatore Limited, was incorporated on 6.3.1972. Subsequently, it was renamed as Premier

Instruments and Controls Limited as per the Certificate of the Registrar of Companies dated 4.1.1983. Plaintiff is a manufacturer of Automotive

Instruments and accessories and it has subsequently diversified into electronics and mechanic tools. Immediately after the formation of the

company, the word Trademark ''PRICOL'' was coined for marketing the products. Such expression is an invented word as an acronym of the

Plaintiff''s name by using the letters ''PR'' from ''Premier'', ''I'' from ''Instruments'', ''CO'' from ''Coimbatore'' and ''L'' from ''Limited''. Such

trademark is written in a stylised manner with a star on either side. The Plaintiff is thus the Proprietor of the copyright in the artistic manner, in

which the trademark ''PRICOL'' is written. The Plaintiff had acquired an exclusive copyright over the pictorial, geometric colour pattern on the

outer card-board containers of the Plaintiff''s products. The trademark ''PRICOL'' has been registered under the Trade and Merchandise Marks

Act, 1958. The Perfect Automotive Components Ltd., the Defendant in C.S. No. 534 of 1993 and the Appellant in O.S.A. No. 377 of 2001, is a

manufacturer of lubricants and PRICOL Lubricants (India) Private Ltd., the Defendant in the connected C.S. No. 535 of 1993, is its marketing

agent. In September, 1992, the Plaintiff came to learn that such Defendant in C.S. No. 534 of 1993 was manufacturing and selling brake fluid,

grease and coolant and the Plaintiff''s trademark was being copied and had been displayed on the containers of the products, their advertisements,

their correspondence and their trade literature. Thereafter, the Plaintiff by a registered notice dated 17.12.1992 called upon the Defendant in each

case that they should cease and desist from using such trademark. But, a reply dated 9.1.1993 was received to the effect that the brake fluid,

grease and coolant were sold by adopting PRICOL as a trademark, after verifying that such trademark had not been registered in respect of such

brake fluid, grease and coolant. On further verification, the Plaintiff found out from the trademark Registry that the application dated 21.2.1992

had been made, wherein the Defendant claimed to have used PRICOL since January, 1992. In the above background, the Plaintiff filed the two

suits on the ground of infringement of Plaintiff''s copyright in the artistic manner in which the Plaintiff''s trademark ''PRICOL'' is written and

infringement of copyright on the Plaintiff''s card-board container and on account of the Defendant passing off their goods as the goods of the

Plaintiff. On the aforesaid basis, the Plaintiff prayed for the following reliefs in both the suits:

The Plaintiff therefore pray for judgment and decree:

(a) granting, a permanent injunction restraining the Defendants by themselves, their servants, agents or anyone claiming through them, their printers

and distributors from committing infringement of the copyright, which the Plaintiff''s have in their artistic work contained in the style of writing

''PRICOL'' with starts found in Document No. 1 and artistic work in Document No. 3, in any manner by distributing, printing or causing to be

printed the impugned style of writing the word ''PRICOL'' and artistic work as shown in Document Nos. 2 and 4 filed alongwith the plaint or in any

other style of writing, which is an imitation or an infringement of the Plaintiff''s work contained in Document Nos. 1 and 3;

(b) granting a permanent injunction restraining the Defendant by themselves, servants or agents of any one claiming through them from passing off

their goods break fluid and greases and coolant listed in the price list as Document No. 5 filed alongwith the plaint using the name ''PRICOL'' and

the artistic pattern of the Plaintiff''s containers as shown in Document Nos. 2 and 4 or pass off any other goods using the expression ''PRICOL'' or

similar expression.

(c) directing the Defendant to render a true and faithful account of the profits earned by them through the manufacture and sale of the offending

mark ''PRICOL'' and artistic creation marked as Document Nos. 2 and 4 and directing such profits to be paid to the Plaintiff''s for the infringement

of the copyright, trade mark and passing off committed by the Defendants;

(d) directing the Defendants to surrender to the Plaintiffs and all cartons, labels, packets and any other printed matters containing of consisting of

the offending Trade Marks together with blocks used for the purpose of printing the same for destruction.

The Defendant in C.S. No. 534 of 1993 claimed that the Madras High Court in its Original Side has no jurisdiction to entertain the suit as the

Defendant was not selling its products within the Ordinary Original Jurisdiction of such High Court. The Plaintiff had no justification to invoke

Section 62 of the Copyright Act for filing the suit before the Madras High Court as, such Plaintiff cannot claim ownership of the copyright in the

alleged artistic work done by the employees of the Plaintiff''s company. It has been further indicated that the Plaintiff company had not obtained

Leave of the High Court under clause 14 of the Letters Patent to combine different causes of action. Since the Defendant had not sold its articles

and was not carrying on any business nor having any branch office within the jurisdiction of the Madras High Court, the act of passing off should

not have been brought before such Court. It has been further stated in the written statement that the Defendant had applied for registration of the

trademark PRICOL in respect of the goods falling under Class-1 and Class-4 of the Trade and Merchandise Marks Act with the Registrar of

Trade Mark, New Delhi on 21.2.1992. It is further claimed that the Defendant and coined the word ''PRICOL'' from his child''s name

''PRINCEE'' to form ''PRIC'' and ''OL'' from the word ''OIL''. The said name is therefore a combination of the words ""PRINCEE"" and ""OIL"" and

an invented word. It is further stated that the goods of the Defendant fall under Class-1 and Class-4 of Schedule IV of the Trade and Merchandise

Marks Act, whereas the goods manufactured by the Plaintiff fall under Class-9 of the said Act and there is no possibility of any confusion in the

minds of the public. A detailed description had been given in the written statement describing about the various differences in the style of writing

and other aspects. However, since the main question raised in these appeals is relating to jurisdiction, it is unnecessary to notice in detail those

aspects.

The Defendant in the other suit C.S. No. 355 of 1993 filed substantially a similar written statement.

The following issues had been framed in C.S. Nos. 534 of 1993:

Is the suit maintainable on the file of this Court?

Is the suit not maintainable for the reasons set out in paragraph 2 of the written statement?

Is the Defendant entitled to use the name ''Pricol"" in respect of products manufactured by them?

Has the Defendant committed any infringement of copyright or passing

of as alleged by the Plaintiff?

Is the Plaintiff owner of the copyright in the artistic pattern and whether the Plaintiff is entitled to seek civil remedies under the Copyright Act,

1957?

Has the Defendant committed infringement of the Plaintiff''s copyright?

Is the Plaintiff entitled to the permanent injunction sought for in paragraph 27(c) and (b) of the plaint?

5.1 The following issues were framed in C.S. No. 535 of 1993:

Is the Plaintiff entitled to invoke the jurisdiction of this Court?

Is the suit not maintainable for the reasons set out in paragraph 2 of the written statement?

Is the Plaintiff owner of the copyright in the artistic pattern?

Has the Defendant committed any infringement of copyright or passing of as alleged by the Plaintiff?

Is not the Defendant entitled to use the name Pricol in respect of products manufactured by them?

Is the Plaintiff owner of the copyright in the artistic pattern and whether the Plaintiff is entitled to seek civil remedies under the Copyright Act,

1957?

Is the Defendant liable to render true and faithful account of the profits earned by them?

Is the Defendant liable to surrender to the Plaintiff all the cartons, labels, packets and any other printed matter containing or consisting of the

alleged trade mark for destruction?

To what reliefs are the parties entitled?

While considering the question of jurisdiction, which had been raised as Issue No. 1 in each of the suits, the trial Court has concluded that it had

jurisdiction. While considering Issue No. 2, which relates to question of maintainability on the ground that two suits were based on different causes

of action, it has been held that causes of action could be combined as per Clause 14 of the Letters Patent. While deciding other issues together, the

trial Court by relying upon the evidence of P.W. 1 and the documents including Ex. P-1, held that the Plaintiff had coined the trademark

''PRICOL'', which was being used from 1975. From other documents such as Exs. P-7, P-8, P-9 and P-10, it was found that the Defendant had

made an application, an advertisement, and was using the very same trademark ''PRICOL'', though for a different product. From such evidence

and documents, the trial Court concluded that the Plaintiff was the owner of the copyright ''PRICOL'' and was using the trademark for its products

for a long period, much earlier than the Defendant, and the Defendant was displaying the very same trademark and the artistic pattern in the

products manufactured and sold by it. Ultimately the trial Court held that even though the goods fall under different classes, since the trademark

was being used by the Defendant, there was infringement of the Plaintiffs copyright, which also amounted to passing off the goods of the Defendant

as that of the Plaintiff. Accordingly the trial Court granted a decree in favour of the Plaintiff with regard to infringement of the copyright and

trademark. However, the relief relating to rendition of accounts was not accepted by the trial Court on the ground that the Plaintiff had agreed to

using of a changed design till disposal of the suit. Such judgment and decree of the trial Court is the subject matter of these two appeals.

In the Memorandum of Appeals it is contended that, as apparent from the order of the High Court in O.S.A Nos. 245 and 246 of 1994 against

interlocutory orders, the Plaintiff had given up its claim relating to copyright. In such view of the matter, Section 62 of the Copyright Act was not

applicable and since no cause of action or part of the cause of action relating to passing off as contemplated under the Trade and Merchandise

Marks Act, 1958 had arisen within the jurisdiction of the Original Side of the Madras High Court, the suits were not maintainable. It has been

further contended in the grounds of appeal that no order had been passed on the application for joinder of cause of action under Clause 14 of the

Letters Patent.

In course of hearing and also in the written submission filed on behalf of the Appellants, the main contention, rather the only contention, raised is

relating to jurisdiction. It has been contended that the trial Court has found that the Plaintiff did not object for using of the trademark appended to

each of the affidavits and the trial Court had declined the relief relating to rendition of accounts and since the claim for the copyright had been given

up, there was no jurisdiction to deal with the suit and the reliefs claimed, so far as they are connected with the Trade and Merchandise Marks Act,

1958. In support of the contention, learned Counsel for the Appellant has placed considerable reliance upon the decision of the Supreme Court

reported in Dhodha House Vs. S.K. Maingi, .

Learned Counsel appearing for the Plaintiff/Respondent has, on the other hand, supported the conclusion of the learned single Judge. She has

contended that since similar facts were involved, the Plaintiff could combine the cause of action arising under the Copyright Act, 1957 as well as

the Trade and Merchandise Marks Act, 1958. It has been further contended that merely because the Plaintiff had given up some claim, it cannot

be said that the Court had lost jurisdiction over the matter.

As already indicated, the main question, rather the only question, is relating to jurisdiction. So far as the Copyright Act, 1957 is concerned,

both the suits were before the Original Side of the Madras High Court by invoking Section 62(2) of the Copyright Act. In C.S. No. 534 of 1993,

an application purporting to be one under Clause 12 of the Letters Patent was filed, numbered as Application No. 2312 of 1993, for grant of leave

so far as violation of the Trade and Merchandise Marks Act was concerned by stating that the cause of action relating to passing off and violation

of the Trade and Merchandise Marks Act had substantially arisen within the jurisdiction of the Madras High Court. Leave was granted by order

dated 26.4.1993. The Defendant therein (Appellant in O.S.A. No. 377 of 2001) after service of notice had never sought to revoke such grant of

leave. So far as C.S. No. 535 of 1993 is concerned, the Plaintiff again relied upon Section 62(2) for the purpose of jurisdiction relating to violation

of the Copyright Act and so far as violation of the Trade and Merchandise Marks Act was concerned, the Plaintiff filed Application No. 2451 of

1993 wherein notice was issued to the Defendant. The materials on record do not indicate regarding filing of any objection by the Defendant

(Appellant in O.S.A. No. 378 of 2001) and no specific order seems to have been passed in such application.

So far as the Trade and Merchandise Marks Act, 1958 is concerned, Section 105 is relevant and it is extracted hereunder:

Suit for infringement, etc, to be instituted before District Court 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.

Section 62 of the Copyright Act, 1957 is extracted hereunder:

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.

It is interesting to note that in the Trade Marks Act, 1999, whereunder the Trade and Merchandise Marks Act, 1958 has been repealed,

Section 105 of the Trade and Merchandise Marks Act, 1958 has been re-enacted as Section 134(1). However, a provision similar to Section

62(2) of the Copyright Act has also been incorporated in the shape of Section 134(2), even though there was no such provision in the Trade and

Merchandise Marks Act, 1958. In the present case, the suit was filed when the Trade and Merchandise Marks Act, 1958 was in force.

It is not in dispute that in the two suits, as they were originally framed, the reliefs sought for were available under the Copyright Act, 1957 and

the Trade and Merchandise Marks Act, 1958. So far as the relief relating to violation of the copyright is concerned, the Plaintiff specifically

invoked the principle contained in Section 62(2) of the Copyright Act. It is the specific case of the Plaintiff/Respondent that even though the

Registered Office of the Plaintiff was at Coimbatore, the Plaintiff was carrying on business at a place within the jurisdiction of the Original Side of

the Madras Court. This aspect is not in dispute at all.

So far as C.S. No. 534 of 1993 is concerned, the Plaintiff had alleged that the Defendant has sought for registration of the trademark and had

issued advertisement claiming that he has transactions all over the country and, therefore, it can be said that part of the cause of action had arisen

within the jurisdiction of the Madras High Court. It is not in dispute that the Plaintiff in such suit has sought for and obtained leave under Clause 12

of the Letters Patent governing the Madras High Court. It is therefore submitted that since part of the cause of action had arisen and leave of the

Court had been obtained, the Court can be said to have jurisdiction. In respect of C.S. No. 535 of 1993, which was against the marketing agent

of the Defendant M/s. Perfect Automotive Components Limited in the connected suit, Clause 14 of the Letters Patent was applicable. Even the

Appellant in the Memorandum of Appeal has admitted that an application seeking for permission to combine two causes of action under Clause 14

was filed, but no order had been passed.

Clause 12 and 14 of the Letters Patent are extracted hereunder:

Original jurisdiction as to suits--And We do further ordain that the said High Court of Judicature at Madras, in exercise of its ordinary original

civil jurisdiction, shall be empowered to receive, try, and determine suits of every description if, in the case of suits for land or other immovable

property, such land or property shall be situated, or, in all other cases, if the cause of action shall have arisen, either wholly, or, in case the leave of

the Court shall have been first obtained, in part, within the local limits of the ordinary original jurisdiction of the said High Court or if the Defendant

at the time of the commencement of the suit shall dwell or carry on business or personally work for gain, within such limits; except that the said

High Court shall not have such original jurisdiction in cases falling within the jurisdiction of the Small Cause at Madras, in which the debt or

damage, or value of the property sued for does not exceed hundred rupees.

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 the High Court shall deem fit.

So far as the dispute relating to violation of the Copyright Act is concerned, at the time of filing of the suit, jurisdiction of the suit had been

rightly invoked by virtue of Section 62(2) of the Copyright Act. Once it is held that at the inception the Court had jurisdiction to deal with the

question relating to violation of the copyright, the question is whether on account of the refusal of the trial Court to grant the relief relating to the

Copyright Act, can it be said that the trial Court did not have jurisdiction to deal with the matters relating to violation of the passing off coming

within the scope of the Trade and Merchandise Marks Act, 1958.

Since the learned Counsel for the Appellant has placed strongest possible reliance upon the decision of the Supreme Court reported in Dhodha

House Vs. S.K. Maingi, , it would be appropriate at this stage to consider the said decision. Two appeals, one against the decision of the

Allahabad High Court and the other against the decision of the Delhi High Court were taken up together. In both the cases, the question of

territorial jurisdiction of the trial Court dealing with the composite suits containing reliefs relating to the Copyright Act and the Trade and

Merchandise Marks Act was the primary issue. Both the appeals were against the order of injunction during pendency of the suit and not against

the final decision in the suits.

17.1 In Civil Appeal No. 6248 of 1997 filed by M/s. Dhodha House (hereinafter referred to as ""Dhodha House Appeal"" for convenience), the

concerned suit had been filed by such Appellant to protect his copyright, trade marks and common law rights as regard his art work / label / trade

mark and wrapper, etc. in the District Court at Ghaziabad. Even though the trial Court had granted injunction during pendency of such suit, the

High Court in appeal against such order of injunction had allowed the appeal solely on the ground of lack of territorial jurisdiction. The High Court

had also observed ""Dhodha"" is a name of variety of sweets and it is not a special product, which is manufactured by the Plaintiff alone. In the said

case, the Appellant was carrying on business of sweat meats in the district of Ghaziabad, whereas the Respondent was carrying on a similar

business in the name and style of M/s. V.R.K Todha Sweet House in the district of Faridkot.

17.2 In Civil Appeal No. 16 of 1999, arising against the decision of the Delhi High Court, the suit had been filed on the Original Side of such Court

for perpetual injunction restraining infringement of trade mark, copyright, trading style, passing off and for rendition of accounts. The Plaintiff

claimed that he had registered the trademark ''Field Marshal'' and the label ''Field Marshal'' was allegedly registered under the Copyright Act and

further the Appellant had been printing/publishing the said artistic work titled ''Field Marshal'' in all its trade literatures, pamphlets, stickers,

calendars, diaries, etc., and also on the goods manufactured. The first Defendant had been registered under the Companies Act and it proposed to

start business in the trading style of ''Field Marshal''. It was alleged that the goods manufactured by the Defendant were being sold in Delhi. The

alleged cause of action for filing the suit has been averred in para 30, which is extracted:

That the goods of the parties bearing the impugned trade marks are also sold in the Union Territory of Delhi. Trade Marks Journals No. 823 dated

16.9.1983 and No. 876 dated 1,12.1985 and Journal No. 933 dated 16.4.1988 were published in India by the Trade Marks Registry in respect

of applications of the Defendants for registration of the impugned trade marks, including the Union Territory of Delhi. Therefore, this Hon''ble

Court has jurisdiction to entertain and try the present suit. Moreover, the jurisdiction of this Hon''ble Court is also attracted in view of Section

62(2) of the Copyright Act.

17.3 The application for injunction was rejected by the learned single Judge inter alia on the ground that the Plaintiff had failed to prima facie show

that the Delhi High Court had territorial jurisdiction and also the pecuniary jurisdiction. However, the appeal filed by the Plaintiff was allowed by

the Division Bench. The Division Bench was of the opinion that a composite suit based on infringement of trade mark, copyright, passing off and

for rendition of accounts of profit and also injunction having been filed, the Delhi High Court had the territorial jurisdiction. The Delhi High Court

further found that the Plaintiff could seek a restraint order against the threat once it came to learn that the Defendants had applied for registration of

trademarks at Delhi. The High Court, however, had not given any answer as to whether the Defendant had sold goods at Delhi, thereby violating

the right of the Plaintiff at Delhi. Such order was challenged by the Defendant in appeal before the Supreme Court. The Supreme Court, while

dismissing the appeal against the decision of the Allahabad High Court and allowing the appeal as against the decision of the Delhi High Court, inter

alia observed as follows:

We are not concerned in this case with the maintainability of a composite suit both under the 1957 Act and the 1958 Act. Indisputably, if such

a situation arises, the same would be permissible; but the same may not be relevant for the purpose of determining the question of a forum where

such suit can be instituted. Sub-section (2) of Section 62 of the 1957 Act provides for a non obstante clause conferring jurisdiction upon the

District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the persons instituting the suit

or other proceedings have been residing. In terms of Sub-section (1) of Section 62, suit can be instituted and the proceedings can be initiated in

respect of matters arising under the said chapter for infringement of the copyright in any work or the infringement of any other right conferred

thereunder. It does not confer jurisdiction upon a District Court where the Plaintiff resides, if a cause of action arises under the 1958 Act.

Order 2 Rule 3 of the Code provides that the Plaintiff may unite in the same suit several causes of action against the same Defendant, or the

same Defendants jointly. The said order contemplates uniting of several causes of action in the same suit. By necessary implication, a cause of

action for infringement of copyright and a cause of action for infringement of trade mark or a cause of action of passing off would be different. Even

if one cause of action has no nexus with another, indisputably Order 2 Rule 3 may apply. However, by reason of application of Order 2 Rule 3 of

the Code ipso facto would not confer jurisdiction upon a Court which had none so as to enable it to consider infringement of trade mark under the

1957 Act as also the 1958 Act.

It is trite law that a judgment and order passed by the Court having no territorial jurisdiction would be a nullity.

In Kiran Singh and Others Vs. Chaman Paswan and Others, , this Court observed:

It is a fundamental principle well established that a decree passed by a Court without jurisdiction is a nullity, and that its invalidity could be set up

whenever and wherever it is sought to be enforced or relied upon, even at the stage of execution and even in collateral proceedings. A defect of

jurisdiction, whether it is pecuniary or territorial, or whether it is in respect of the subject-matter of the action, strikes at the very authority of the

Court to pass any decree, and such a defect cannot be cured even by consent of parties.

A judgment or order passed by a Court lacking territorial jurisdiction thus, would be coram non judice. Thus, if a District Court, where the

Plaintiff resides but where no cause of action arose otherwise, adjudicates a matter relating to infringement of trade mark under the 1958 Act, its

judgment would be a nullity.

17.4 While holding that an earlier decision of the Delhi High Court reported in 1983 PTC 207 (M/s. Jawahar Engineering Co. and Ors.,

Ghaziabad v. M/s. Jawahar Engineers Pvt. Ltd.,) was not applicable, it was observed:

The said decision has no application in the instant case for more than one reason. For the purpose of registration of a trade mark, an

application must be filed in the branch office of the Registrar of Trade Marks. It is not in dispute that u/s 5(3) of the 1958 Act, the Central

Government has issued a notification in the Official Gazette defining the territorial limits within which an office of the Trade Marks Registry may

exercise its functions. The office of the Trade Marks Registry at New Delhi exercises jurisdiction over the States of Haryana, Himachal Pradesh,

Jammu and Kashmir, Punjab, Rajasthan and Uttar Pradesh and the Union Territory of Chandigarh and the National Capital Territory of Delhi.

Whereas in Dhodha House v. S.K. Maingi no such application has been filed, admittedly in Patel Field Marshal Industries v. P.M. Diesels Ltd. the

Delhi office has no jurisdiction as parties are residents of Rajkot and an application was filed by the Appellant for registration of its trade mark at

Bombay. If an objection is to be filed, the same has to be filed at Bombay. An advertisement by itself in a journal or a paper would not confer

jurisdiction upon a Court, as would be evident from the following observations of this Court in Oil and Natural Gas Commission Vs. Utpal Kumar

Basu and Others, :

Therefore, broadly speaking, NICCO claims that a part of the cause of action arose within the jurisdiction of the Calcutta High Court because it

became aware of the advertisement in Calcutta, it submitted its bid or tender from Calcutta and made representations demanding justice from

Calcutta on learning about the rejection of its offer. The advertisement itself mentioned that the tenders should be submitted to EIL at New Delhi;

that those would be scrutinised at New Delhi and that a final decision whether or not to award the contract to the tenderer would be taken at New

Delhi. Of course, the execution of the contract work was to be carried out at Hazira in Gujarat. Therefore, merely because it read the

advertisement at Calcutta and submitted the offer from Calcutta and made representations from Calcutta would not, in our opinion, constitute facts

forming an integral part of the cause of action. So also the mere fact that it sent fax messages from Calcutta and received a reply thereto at Calcutta

would not constitute an integral part of the cause of action.

A cause of action will arise only when a registered trade mark is used and not when an application is filed for registration of the trade mark. In

a given case, an application for grant of registration certificate may or may not be allowed. The person in whose favour a registration certificate has

already been granted (sic) indisputably will have an opportunity to oppose the same by filing an application before the Registrar, who has the

requisite jurisdiction to determine the said question. In other words, a suit may lie where an infringement of trade mark or copyright takes place but

a cause of action for filing the suit would not arise within the jurisdiction of the Court only because an advertisement has been issued in the Trade

Marks Journal or any other journal, notifying the factum of filing of such an application.

17.5 The Supreme Court specifically extracted the following observations from the decision of the Madras High Court reported in Premier

Distilleries Pvt. Ltd. v. Shashi Distilleries (2001 PTC 907 (Mad.)]:

The cause of action in a suit for passing off, on the other hand and as already observed, has nothing at all to do with the location of the Registrar''s

office or the factum of applying or not applying for registration. It is wholly unnecessary for the Plaintiff to prove that he had applied for registration.

The fact that the Plaintiff had not applied for registration will not improve the case of the Defendant either. Filing of an application for registration of

a trade mark, therefore, does not constitute a part of cause of action where the suit is one for passing off.

It was further observed:

The argument advanced that registration if granted would date back to the date of application and that the Plaintiff would have the right to seek

amendment of the plaint to seek relief on the ground of infringement as well, is wholly irrelevant so far as the cause of action for bringing a suit for

passing off is concerned. While it may be convenient to the Plaintiff to institute a suit in a Court where he may later on be able to bring a suit for

infringement of the trade mark, that convenience of the Plaintiff is in no way relevant for deciding as to whether a cause of action for filing a suit for

passing off can be said to have arisen in a place where, the deceit alleged to have been practised by the Defendant had in fact, not been practised

within the jurisdiction of the Court in which the suit is brought.

and expressly approved the same.

It was further observed:

The Delhi High Court, as noticed hereinbefore, however, did not advert to the third contention raised therein saying that the question as to

whether the Defendants had been selling its product on a commercial scale at Delhi was a question of fact and, thus, was required to be properly

determined in case evidence is led by the parties.

The short question which arises for consideration is as to whether causes of action in terms of both the 1957 Act and the 1958 Act although

may be different, would a suit be maintainable in a Court only because it has the jurisdiction to entertain the same in terms of Section 62(2) of the

1957 Act?

It was further observed:

In Patel Field Marshal (supra) again the thrust was on the sale of products and/or advertisement by the Appellant for registration of trade

marks in the Trade Marks Journal and other local papers. The Division Bench of the High Court, as has been noticed hereinbefore, did not advert

to the issue as to whether the Defendant had been selling its product in Delhi on a commercial scale or not. It is, therefore, not necessary for us

also to dilate further on the said question. We have furthermore noticed hereinbefore that the advertisement appearing in a journal or newspapers

by itself would not confer any jurisdiction on the Court, if it otherwise did not have any.

In this case, the Delhi High Court could not have invoked its jurisdiction in terms of the 1957 Act. The primary ground upon which the

jurisdiction of the original side of the High Court was invoked was the violation of the 1958 Act, but in relation thereto, the provisions of Sub-

section (2) of Section 62 of the 1957 Act could not be invoked.

The Plaintiff was not a resident of Delhi. It has not been able to establish that it carries on any business at Delhi. For our purpose, the question

as to whether the Defendant had been selling its produce in Delhi or not is wholly irrelevant (sic). It is possible that the goods manufactured by the

Plaintiff are available in the market of Delhi or they are sold in Delhi but that by itself would not mean that the Plaintiff carries on any business in

Delhi.

It is not in dispute before us that the application for registration of the trade mark was to be filed either at Bombay or at Ahmedabad. The

objections thereto by the Plaintiff were also required to be filed at the said places. The jurisdiction of the Delhi Court could not have been invoked

only on the ground that the advertisement in respect thereof was published in the Trade Marks Journal. Section 62 of the 1957 Act, therefore, will

have no application. The Plaintiff has no branch office at Delhi. Its manufacturing facilities are not available at Delhi. Both its trade mark and

copyright are also not registered at Delhi.

For the purpose of invoking the jurisdiction of a Court only because two causes of action joined in terms of the provisions of the Code of Civil

Procedure, the same would not mean that thereby the jurisdiction can be conferred upon a Court which had jurisdiction to try only the suit in

respect of one cause of action and not the other. Recourse to the additional forum, however, in a given case, may be taken if both the causes of

action arise within the jurisdiction of the Court which otherwise had the necessary jurisdiction to decide all the issues.

On a careful reading of the aforesaid decision of the Supreme Court, the following prepositions appear to have been laid down by the

Supreme Court:

(1) Even if one cause of action has no nexus with another, indisputably Order II Rule 3 may apply. However, by reason of application of Order II

Rule 3 of the Code ipso facto would not confer jurisdiction upon a Court which had none so as to enable it to consider infringement of trade mark

under the Copyright Act, 1957 as also the Trade and Merchandise Marks Act, 1958. (see para 24)

(2) A judgment or order passed by a Court lacking territorial jurisdiction would be coram non judice. (see paras 25, 26 and 27)

(3) An advertisement by itself in a journal or a paper would not confer jurisdiction upon a Court (see para 30)

(4) A cause of action would arise only when a registered trade mark is used and not when an application is filled for registration of the trade mark.

A suit may lie where an infringement of trade mark or copyright takes place but a cause of action for filing the suit would not arise within the

jurisdiction of the Court only because an advertisement has been issued in the Trade Mark Journal or any other journal, notifying the factum of

filing of such an application. (see para 32)

(5) A decision is an authority what it decides and not what can logically be deduced from such decision. (see para 37).

Though in first blush it may appear that the aforesaid decision has created unsurmounted hurdle on the path of the Plaintiff/Respondent, a

careful reading of the decision, in the light of the other decisions of the Supreme Court, would make it clear that the aforesaid decision of the

Supreme Court may not be applicable to peculiar facts and circumstances of the present case.

It is of course true that invoking of jurisdiction of a Court for deciding a matter relating to copyright can be justified u/s 62(2) of the Copyright

Act, 1957, though such a scenario was not available in respect of the matter coming within the fold of the Trade and Merchandise Marks Act,

1958 as no provision similar to Section 62 was incorporated under the Trade and Merchandise Marks Act, 1958. A careful reading of the

decision of the Supreme Court makes it clear that combining of two distinct causes of action by the Plaintiff against the very same Defendant, as

contemplated under Order II Rule 3 Code of Civil Procedure, would be possible provided the Court had territorial jurisdiction to try both the

suits, if separate suits would have been filed. Admittedly, in the aforesaid case before the Supreme Court, the question of jurisdiction was being

examined on the anvil of the Code of Civil Procedure. Clause 14 of the Letters Patent applicable to the Madras High Court, even though may

appear to be a provision similar to Order II Rule 3, a careful look at such clause in the Letters Patent indicates otherwise.

Clause 14 has already been extracted. For appreciation of the aforesaid aspect, it would be more appropriate to extract the provisions

contained in Order II Rule 3 alongwith the provisions contained in Clause 14 of the Letters patent.

Clause 14 of the Letters Patent Order II Rule 3.

Joinder of several causes of action.--And We do Joinder of causes of action.--(1) Save as otherwise

further ordain that where Plaintiff has several causes provided, a Plaintiff may unite in the same suit several

of action against Defendant, such causes of action causes of action against the same Defendant, or the

not being for land or other immovable property, andsame Defendants jointly; and any Plaintiff having

the said High Court shall have original jurisdiction in causes of action in which they are jointly interested

respect of one of such causes of action, it shall be against the same Defendant or the same Defendants

lawful for the said High Court to call on the jointly may unite such causes of action in the same

Defendant to show cause why the several causes of suit.

action should not be joined together in one suit, and

to make such order for trial of the same as the High (2) Where the causes of action are united, the

Court shall deem fit. jurisdiction of the Court as regards the suit shall

depend on the amount or value of the aggregate

subject matters at the date of instituting the suit.

Clause 14 of the Letters patent envisages that if the High Court has original Jurisdiction of one of such causes of action, it shall be lawful for the

said High Court to permit combining of several causes of action and to make such order for trial of the same as the High Court shall deem fit. In

the context of the difference in the language employed in Order II Rule 3 as compared to Clause 14 of the Letters Patent, the ratio of the decision

of the Supreme Court would not be applicable.

It is of course true that clause 14 requires that the High Court before permitting the Plaintiff to join together several cause of action, is required

to call upon the Defendant to show cause why several causes of action should not be joined together and to make such order for trial as it deem fit.

In the present case, there is no dispute that the Plaintiff had combined two separate causes of action, one relating to violation of the copyright and

the other relating to passing off coming within the purview of the Trade and Merchandise Marks Act, 1958. In C.S. No. 534 of 1993, the Plaintiff

had obtained leave presumably under clause 12 of the Letters Patent on the footing that part of the cause of action had arisen within the jurisdiction

of the Madras High Court on account of publication of the notice in the trademark journal, wherein it was claimed that the Defendant had

transactions all over the country. (It is of course doubtful as to whether it can be said that such cause of action had arisen in part within the

jurisdiction of the Madras High Court in view of the observation of the Supreme Court in Dhodha House case that mere filing of application for

registration of the trade mark or publication of the notice or advertisement in the trade mark journal would not give-rise to a cause of action within

the concerned area).

It is the undisputed case of both the sides that in the connected suit C.S. No. 535 of 1993, which had been filed by the same Plaintiff against

the marketing agent of the Defendant in the earlier suit, an application purported to be under clause 14 of the Letters Patent has been filed. It is not

clear whether any specific order has been passed in the said application. (Unfortunately, in the background of shoddy maintenance of order-sheet

in the Madras High Court, it is to possible to even find out as to whether any order had been passed or not). The fact remains, however, that leave

had been obtained in the other suit. Both the suits were being taken up together at all relevant stages including while considering the applications for

injunction and considering the appeals against such interim orders of injunction and were tried together and even common evidence was recorded.

The Defendant in both the suits for all practical purposes is the same, keeping in view the fact that one was the manufacturer and the other was the

marketing agent.

Even though the Defendant had raised the question of jurisdiction, no efforts had been made to revoke the leave granted in C.S. No. 534 of

1993. This is not to suggest that even if leave is not revoked a party is precluded from raising the question, but, in our considered opinion, in the

peculiar facts and circumstances of the present case, it can be said that the High Court by necessary implication had given a direction for combining

the two separate causes of action which were composite in nature. The possibility of filing a composite suit containing the reliefs available under the

Copyright Act, 1957 and the Trade and Merchandise Marks Act, 1958 is long recognised in series of judgments in the Madras High Court and

even in Dhodha House case relied upon strongly by the Appellant, wherein it was observed:

We are not concerned in the case with the maintainability of a composite suit both under the 1957 Act and the 1958 Act. Indisputably, if such

a situation arises, the same would be permissible.

In the above view of the matter, we are of the considered opinion that the trial Court had undoubted jurisdiction u/s 62(2) of the Copyright

Act, 1957 over the matter relating to violation of the provisions of the Copyright Act and the cause of action and so far as the relief relating to the

Trade and Merchandise Marks Act, 1958 is concerned, it could be combined in view of the provisions contained in Clause 14 of the Letters

Patent.

Learned Counsel for the Appellant has vehemently contended that since in the O.S.A. Nos. 245 and 246 of 1994, relating to interlocutory

application for injunction, the Defendant had been permitted to use a design as approved by the Division Bench and since the relief claimed by the

Plaintiff relating to rendering of accounts for the alleged violation of the copyright had been negatived by the learned single Judge, it can be said that

the alleged cause of action relating to the Copyright Act does not survive as having been abandoned and the Court will have no jurisdiction

whatsoever relating to the cause of action coming within the purview of the Trade and Merchandise Marks Act, 1958.

To appreciate such contention it would be more appropriate to extract the orders dated 14.9.1994 and 28.9.1994 in O.S.A. Nos. 245 and

246 of 1994:

Order dated 14.9.994

The appeals arise out of interlocutory orders restraining the Appellants from

committing infringement of the copyright of the Plaintiffs in their artistic work contained in the style of printing ''PRICOL'' with starts and the artistic

work, in any manner by distributing, printing or causing to be printed the impugned style of writing the world ''PRICOL'' and artistic work or in any

other style or writing, which is an imitation or infringement of the Plaintiffs work.

The Respondent has entered caveat and learned senior counsel appearing

for the Respondent represented that if the Appellants give an undertaking that they would not use the artistic design belonging to the Respondent,

the appeals can be disposed of on that basis; and the rights of the Respondent relating to passing off will be claimed in the proceeding pending

before the learned Single Judge. We have directed now learned Counsel for the Appellants to produce copies of the new design said to have been

adopted by the Appellant and also file an affidavit by an authorised person undertaking that the Appellants will not use the artistic work and the

style of writing belonging to the Respondent till the disposal of the suit.

Order dated 28.9.1994

Pursuant to our Order dated 14.9.1994, an affidavit has been filed by the Appellant in each case. In paragraph-4 of the affidavit, it is stated as

follows:

4.1 state that the Appellant will not use the design as found in document No. 4 or otherwise use a design which is deceptively similar to the

Respondent''s design in document No. 3 to the Plaint. I also append herewith the design that is currently being used by the Appellant, and submit

that only such design, or other similar design, which is not deceptively similar to the Respondent''s design in document No. 3 shall be adopted and

used by the Appellant herein.

A design is appended to each of the affidavit. It is now stated by learned Counsel for the Respondent that the design appended to the affidavits

does not infringe the copyright of the Respondent and he has no objection to the Appellant using the said design till the disposal of the suit subject

to the decision in O.A. Nos. 361 and 363 of 1993. The above statement is recorded.

The appeals are allowed accordingly permitting the Appellant in each appeal to use the design appended to the affidavit till the disposal of the

suit. This will, however, be subject to the decision in O.A. Nos. 361 and 363 of 1993 by the learned single Judge, which relates to passing off on

the footing that the use of the word ""PRICOL'' is itself objectionable. No costs."" (Emphasis added by us)

In the aforesaid order of the Division Bench, passed during pendency of the suit, no where it is indicated that the Plaintiff had abandoned the

cause of action relating to the Copyright Act, 1957. On the other hand, the Division Bench had passed the order only recognizing the interim

arrangement to use the design appended to the affidavit till the disposal of the suit, but nevertheless subject to the decision in O.A. Nos. 361 and

363 of 1993, which relate to passing off relatable to the word ""PRICOL"" itself is objectionable. It may be that the learned single Judge under the

present impugned judgment has though it fit not to grant the relief of rendering of accounts. It has to be remembered that the learned single Judge

had granted injunction in respect of the alleged violation relating to the Copyright Act as well as the Trade and Merchandise Marks Act, 1958. It

cannot be said that the Plaintiff''s projected cause of action relatable to the Copyright Act was frivolous and calculated to clutch at the jurisdiction.

In other words, the trial Court had jurisdiction initially and may be at the time it has decided the relief relatable to the Copyright Act, it was either

given up in view of the subsequent event or not pressed. Under such circumstances, we are unable to accept the contention that the Court did not

have the continued jurisdiction to deal with the matter.

Even assuming that the Original Side of the Madras High Court did not have any jurisdiction, the question arises as to whether the appellate

Court should interfere with the ultimate finding and the decision of the trial Court. Section 21(1) of the CPC is extracted hereunder:

Objection to jurisdiction.--(1) No objection as to place of suing shell be allowed by any Appellate or revisional Court unless such objection

was taken in the Court of first instance at the earliest possible opportunity and in all cases where issues are settled at or before such settlement, and

unless there has been a consequent failure of justice."" (Emphasis added)

Even though by virtue of Section 120 CPC Sections 16, 17 and 20 CPC are made inapplicable to any High Court in the exercise of its

Original Civil Jurisdiction, there is no such exclusion so far as Section 21 CPC is concerned. A bare reading of Section 21 makes it clear that

objection relating to place of suing shall not be allowed by the Appellate Court unless such objection is taken at the first instance and such

objection is raised at the earliest opportunity and unless there has been a consequent failure of justice.

In Pathumma and Others Vs. Kuntalan Kutty Dead by Lrs. and Others, , while referring to Section 21(1) of the Code of Civil Procedure, it

was observed:

In order that an objection to the place of suing may be entertained by an appellate or revisional Court, the fulfilment of the following three

conditions is essential:

(1) The objection was taken in the Court of first instance.

(2) It was taken at the earliest possible opportunity and in cases where issues are settled, at or before such settlement.

(3) There has been a consequent failure of justice.

All these three conditions must co-exist.

Now in the present case Conditions 1 and 2 are no doubt fully satisfied; but then before the two appellate Courts below could allow the objection

to be taken, it was further necessary that a case of failure or justice on account of the place of suing having been wrongly selected was made out...

(Emphasis added by the Supreme Court)

The aforesaid observation was followed by the Madras High Court in the decision reported in 1994 MLJ 258 (Paramount Group Pvt. Ltd. v.

Tamil Nadu Industrial Investment Corporation Limited).

While considering a similar question in R.S.D.V. Finance Co. Pvt. Ltd. Vs. Shree Valllabh Glass Works Ltd., , the Supreme Court observed:

....The Division Bench was totally wrong in passing an order of dismissal of suit itself when it had arrived to the conclusion that the Bombay

Court had no jurisdiction to try the suit. The only course to be adopted in such circumstances was to return the plaint for presentation to the proper

Court and not to a dismiss the suit. It may be further noted that the learned single Judge trying the suit had recorded a finding that the Bombay

Court had jurisdiction to entertain and decide the suit. Sub-section (1) of Section 21 of the CPC provides that no objection as to the place of suing

shall be allowed by any appellate or revisional Court unless such objection was taken in the Court of first instance at the earliest possible

opportunity and in all cases where issues are settled at or before such settlement and unless there has been consequent

failure of justice. The above provision clearly lays down that such objection as to the place of suing shall be allowed by the appellate or revisional

Court subject to the following conditions:

(i) That such objection was taken in the Court of first instance at the earliest possible opportunity;

(ii) in all cases where issues are settled then at or before such settlement of issues;

(iii) there has been a consequent failure of justice.

In the present case though the first two conditions are satisfied but the third condition of failure of justice is not fulfilled. As already mentioned

above there was no dispute regarding the merits of the claim. The Defendant has admitted the deposit of Rs. 10,00,000 by the Plaintiff, as well as

the issuing of the five cheques. We are thus clearly of the view that there is no failure of justice to the Defendant by decreeing of the suit by the

learned Single Judge of the Bombay High Court, on the contrary it would be totally unjust and failure of justice to the Plaintiff in case such

objection relating to jurisdiction is to be maintained as allowed by the Division Bench of the High Court in its appellate jurisdiction."" (Emphasis

added)

In Kiran Singh and Others Vs. Chaman Paswan and Others, , the Plaintiffs filed the suit in the Court of the Subordinate Judge and valued it at

Rs. 2950. The said suit having been dismissed by the trial Court, Plaintiffs filed an appeal before the Court of the District Judge. The First

Appellate Court confirmed the judgment of the trial Court and dismissed the appeal. Plaintiffs filed a Second Appeal in the High Court. In the High

Court Stamp Reporter raised an objection regarding the value of the suit. Question was referred to the Court and it was determined that correct

valuation of the suit was Rs. 9980. After revision of valuation, Plaintiffs raised an objection in the High Court that the appeal from the decree of the

Subordinate Judge (trial Court) would lie not to the District Court, but directly to the High Court and it was urged that the appeal should be heard

as a first appeal ignoring the judgment of the District Court. The High Court rejected the said contention and dismissed the second appeal. Plaintiffs

approached the Supreme Court. By an elaborate judgment, the Supreme Court negatived the contentions of the Plaintiff and clarified the position

of law. It was held by the Supreme Court as follows:

7....With reference to objections relating to territorial jurisdiction, Section 21 of the CPC enacts that no objection to the place of suing should be

allowed by an appellate or Revisional Court, unless there was a consequent failure of justice. It is the same principle that lias been adopted in

Section 11 of the Suits Valuation Act with reference to pecuniary jurisdiction. The policy underlying Sections 21 and 99 of the CPC and Section

11 of the Suits Valuation Act is the same, namely, that when a case had been tried by a Court on the merits and judgment rendered, it should not

be liable to be reversed purely on technical grounds, unless it had resulted in failure of justice, and the policy of the Legislature has been to treat

objection to jurisdiction both territorial and pecuniary as technical and not open to consideration by an appellate Court, unless there has been a

prejudice on the merits. The contention of the Appellants, therefore, that the decree and judgment of the District Court, Monghyr, should be

treated as a nullity cannot be sustained u/s 11 of the Suits Valuation Act.

If the fact of an appeal being heard by a Subordinate Court or District Court where the appeal would have lain to the High Court if the correct

valuation had been given is itself a matter of prejudice, then the decree passed by the Subordinate Court or the District Court must, without more,

be liable to be set aside, and the words ""unless the overvaluation or undervaluation thereof has prejudicially affected the disposal of the suit or

appeal on its merits"" would become wholly useless. These words clearly show that the decrees passed in such cases are liable to be interfered

within an appellate Court, not in all cases and as a matter of course, but only if prejudice such as is mentioned in the section results. And the

prejudice envisaged by that section therefore must be something other than the appeal being heard in a different forum. A contrary conclusion will

lead to the surprising result that the section was enacted with the object of curing defects of jurisdiction arising by reason of overvaluation or

undervaluation, but that, in fact, this object has not been achieved. We are therefore clearly of opinion that the prejudice contemplated by the

section is something different from the fact of the appeal having been heard in a forum which would not have been competent to hear it on a correct

valuation of the suit as ultimately determined."" (Emphasis added)

In Kumari Rakhi and another Vs. Ist Additional District Judge, Firozabad and others, , it has been observed:

29....The Apex Court in the case of Kiran Singh and Others Vs. Chaman Paswan and Others, , had held that policy of legislation of Section 21 of

the Code is the same as in Section 99 of the Code and Section 11 of the Suits Valuation Act.

The Allahabad High Court had also followed the ratio laid down in the decision reported in Pathumma and Others Vs. Kuntalan Kutty Dead by

Lrs. and Others, and R.S.D.V. Finance Co. Pvt. Ltd. Vs. Shree Valllabh Glass Works Ltd., .

In Seth Hiralal Patni Vs. Sri Kali Nath, , the Appellant before the Supreme Court had engaged the services of the Respondent to negotiate the

bill relating to acquisition of shares in certain mills. The Respondent instituted the suit on the original side of the Bombay High Court for recovery of

his commission and the matter was referred to arbitration. One of the defences taken by the Appellant was that the suit filed in the Bombay High

Court was outside the territorial jurisdiction of the Bombay High Court in the Original Side. Ultimately, the award passed by the arbitrator was

confirmed by the Bombay High Court. The decree incorporating such award was transferred to the District Court, Agra for execution. The

Appellant, as the judgment debtor, filed Objection under Sections 47 and 151 of the CPC objecting to the execution of the decree inter alia on the

ground that Bombay High Court had no jurisdiction to entertain the suit and to make the award a decree of the Court. The objection was rejected

by the executing Court and the appeal was dismissed by the Allahabad High Court. In appeal against such order before the Supreme Court, the

only contention raised was to the effect that the suit instituted on the Original Side of the Bombay High Court was incompetent for want of

territorial jurisdiction and, therefore, the award and the subsequent decree of the Court were null and void. While repelling such contention, it was

observed:

4.....In our opinion, there is no substance in this contention. There was of inherent lack of jurisdiction in the Bombay High Court where the suit was

instituted by the Plaintiff-decree holder. The plaint had been filed after obtaining the necessary leave of the High Court under clause 12 of the

Letters Patent. Whether the leave obtained had been rightly obtained or wrongly obtained is not a matter which can be agitated at the execution

stage. The validity of a decree can be challenged in execution proceedings only on the ground that the Court which passed the decree was lacking

in inherent jurisdiction in the sense that it could not have seizing of the case because the subject-matter was wholly foreign to its jurisdiction or that

the Defendant was dead at the time the suit had been instituted or decree passed, or some such other ground which could have the effect of

rendering the Court entirely lacking in jurisdiction in respect of the subject-matter of the suit or over the parties to it. But in the instant case there

was no such inherent lack of jurisdiction.

The decision of the Privy Council in the case of 13 Ind. App. 134 (P.C.) is an authority for the proposition that consent or waiver can cure defect

of jurisdiction but cannot cure inherent lack of jurisdiction. In that case, the suit had been instituted in the Court of the Subordinate Judge, who was

incompetent to try it. By consent of the parties, the case was transferred to the Court of the District Judge for convenience of trial. It was laid

down by the Privy Council that as the Court in which the suit had been originally instituted was entirely lacking in jurisdiction, in the sense that it

was incompetent to try it, whatever, happened subsequently was null and void because consent of parties could not operate to confer jurisdiction

on a Court which was incompetent to try the suit. That decision has no relevance to a case like the present where there could be no question of

inherent lack of jurisdiction in the sense that the Bombay High Court was incompetent to try a suit of that kind. The objection to its territorial

jurisdiction is one which does not go to the competence of the Court and can, therefore, be waived. In the instant case, when the Plaintiff obtained

the leave of the Bombay.High Court on the original side, under clause 12 of the Letters Patent, the correctness of the procedure or of the order

granting the leave could be questioned by the Defendant or the objection could be waived by him. When he agreed to refer the matter to

arbitration through Court, he would be deemed to have waived his objection to the territorial jurisdiction of the Court, raised by him in his written

statement. It is well settled that the objection as to local jurisdiction of a Court does not stand on the same footing as an objection to the

competence of a Court to try a case. Competence of a Court to try a case goes to the very root of the jurisdiction, and where it is lacking, it is a

case of inherent lack of jurisdiction. On the other hand, an objection as to the local jurisdiction of a Court can be waived and this principle has

been given a statutory recognition by enactments like Section 21 of the Code of Civil Procedure...

Incidentally that was a case where the original side jurisdiction of the Bombay High Court had been invoked.

In Dhodha House case, even though there is passing reference to the decision of the Supreme Court reported in Kiran Singh and Others Vs.

Chaman Paswan and Others, , no reference has been made to Sections 21(1), 99 CPC as well as the decisions of the Supreme Court in Seth

Hiralal Patni Vs. Sri Kali Nath, , which was the decision rendered by four Judges, Pathumma and Others Vs. Kuntalan Kutty Dead by Lrs. and

Others, , which was the decision rendered by three Judges, and AIR 1998 SC 2094, which was the decision rendered by three Judges.

In the present case, as we have already emphasised several times, the solo contention, which was presented at the time of hearing and in the

written submissions, is relating to lack of territorial jurisdiction regarding cause of action arising under the Trade and Merchandise Marks Act,

1958. There is no whisper either in the Memorandum of appeal or during the course of argument regarding any prejudice caused to the Appellants

on account of the trial of the suit by the Madras High Court. Learned counsel for the Appellant has fairly conceded that the Plaintiff could have

filed the suit at Coimbatore. If such a suit would have been filed at Coimbatore on the allegation of violation of the Trade and Merchandise Marks

Act, the appeal would have been heard and disposed of by the same High Court. Even assuming that such appeal would have been heard by a

single Judge and the present appeal has been heard by a Division Bench, we do not think this can he considered as a prejudice (see Kiran Singh

and Others Vs. Chaman Paswan and Others, ). It is not the case of the Appellant that on account of the trial being taken up at Madras, the

Appellant was prevented from pursuing the matter diligently. Therefore, we do not find any prejudice whatsoever has been caused to the

Appellants, even assuming that the Court had no territorial jurisdiction to deal with the matter. Under such circumstances, the question arises is

whether the decision of the Supreme Court in Dhodha House case can be said to have been rendered per incuriam. One has to remember that the

said decision was rendered in the context of the orders of injunction under Order 39 Rule 1 and 2 Code of Civil Procedure, during pendency of

the suit. Since on the face of it the Courts did not have any jurisdiction, the Supreme Court apparently upheld such contention. Since the question

relating to jurisdiction was raised in an interlocutory matter during pendency of the suit, the third condition envisaged u/s 21(1) of the CPC was not

relevant as the trial was yet to take place.

In the above view of the matter, it can be argued fairly by the Plaintiff/Respondent that even assuming that there was no territorial jurisdiction,

since no prejudice has been caused to the Appellant and since substantial justice has been done, the appellate Court should not interfere with the

order of the trial Court.

For the aforesaid reasons, we do not find any merit in these appeals, which are accordingly dismissed. No costs.