Raj Agro Mills Limited vs Shree Gopal Vanaspati Limited

T.P.S. Mann, J.—Order passed by learned Additional District Judge, Hisar, on March 4, 2005, while holding that it had territorial

jurisdiction to decide the suit by virtue of Section 62 of the Copyright Act and also because it was a combined suit filed under the Copyright Act

and Trade Marks Act, has been challenged by the Defendant by filing the present revision under Article 227 of the Constitution of India.

The Plaintiff/Respondent filed a suit for permanent injunction, prohibitory as well as mandatory, to the effect that the Defendant/Petitioner be

restrained from infringement of trade mark, trade name and Copyright of the Plaintiff company and from passing of their goods under the trade

mark/name of the Plaintiff/company, namely, ""Sanjivani"" and further to restrain and forbid the Defendant, its servants, agents, dealers and

representatives from manufacturing, selling, offering from sale or otherwise dealing in and passing off its products, namely, Vanaspati Ghee under

the trade mark/name ""Sanjivani"" with the device of or under any other identical and deceptively similar trade mark/name for the goods

manufactured by the Plaintiff/company and for recovery of compensation.

In its written statement, the Defendant/Petitioner challenged the averments made by the Plaintiff. It also took a preliminary objection regarding

the territorial jurisdiction of the Court at Hisar as, according to it, mere residence or business concern of the Plaintiff at Hisar would not confer

jurisdiction upon Hisar Court, more so when the business place of the Defendant was not within the territorial jurisdiction of Hisar Court.

On the basis of the pleadings of the parties, learned lower Court framed twelve issues, including issue No. 2 regarding territorial jurisdiction of

the trial Court, which issue was treated as preliminary issue vide order dated 14.2.2005.

In view of the fact the Plaintiff was carrying on business within the territorial jurisdiction of Hisar Court and that it was a combined suit under the

Copyright Act and Trade Marks Act and also considering the judicial pronouncement of the Delhi High Court in Glaxo Orthopedic U.K. Ltd. Vs.

Samrat Pharma, , learned lower Court held that the Plaintiff could file a combined suit for infringement of trade mark and copyright at Hisar as

infringement of copyright could be challenged within the territorial jurisdiction of Hisar Court by virtue of Section 62 of the Copyright Act. The

observations made by learned Court below in holding so, are reproduced hereinunder:

Admittedly the Plaintiff is carrying on business within the territorial jurisdiction of Hisar and as such the suit with respect to infringement of Copy

Right can be filed in District Court at Hisar and as such for the purposes of Copy Right infringement District Court Hisar has jurisdiction whereas

for the infringement of trade mark the jurisdiction is to be decided as per provisions of CPC and according to CPC civil Court at Hisar has no

jurisdiction with respect to infringement of the trade mark. Present is a combined suit under the Copy Right Act and Trade Marks Act and in a

judicial pronouncement reported as Glaxo Orthopedic U.K. Ltd. Vs. Samrat Pharma, in case of combined causes of action relating to infringement

of trade mark and copy right, the Plaintiff can file a combined suit and when combined suit is permissible for infringement of trade mark and for

copy right or for passing off certainly the Courts at Hisar has territorial jurisdiction as infringement of copy right could be challenged within the

territorial jurisdiction of Hisar by virtue of Section 62 of the Copy Right Act. In the present case there are no different causes of action for relief

under trade Marks Act and Copy Right Act and as such when there is combined cause of action for filing the present suit under both the Acts, the

Plaintiffs suit at Hisar is within the jurisdiction by virtue of Section 62 of the Copy Right Act.

The law is now well settled that in terms of Section 20(c) of the Code of Civil Procedure, jurisdiction of Court to determine lis arises where the

whole or a part of the cause of action arises, and, though an additional forum has been created u/s 62(2) of the Copyright Act, yet it does not

confer jurisdiction upon a Court where the Plaintiff resides. In composite suits filed under the Copyright Act and the Trade Marks Act, the

jurisdiction cannot 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 territorial jurisdiction of the

Court, which otherwise had the necessary jurisdiction to decide all the issues. The observations made by the Hon''ble Supreme Court in Dhodha

House Vs. S.K. Maingi, are as under:

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.

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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.

A cause of action in a given case both under the 1957 Act as also under the 1958 Act may be overlapping to some extent. The territorial

jurisdiction conferred upon the Court in terms of the provisions of the CPC indisputably shall apply to a suit or proceeding under the 1957 Act as

also the 1958 Act. Sub-section (2) of Section 62 of the 1957 Act provides for an additional forum. Such additional forum was provided so as to

enable the author to file a suit who may not otherwise be in a position to file a suit at different places where his copyright was violated. Parliament

while enacting the Trade and Merchandise Marks Act in the year 1958 was aware of the provisions of the 1957 Act. It still did not choose to

make a similar provision therein. Such an omission may be held to be a conscious action on the part of Parliament. The intention of Parliament in

not providing for an additional forum in relation to the violation of the 1958 Act is, therefore, clear and explicit. Parliament while enacting the Trade

Marks Act, 1999 provided for such an additional forum by enacting Sub-section (2) of Section 134 of the Trade Marks Act. The Court shall not,

it is well well-settled, readily presume the existence of jurisdiction of a Court which was not conferred by the statute. For the purpose of attracting

the jurisdiction of a court in terms of Sub-section (2) of Section 62 of the 1957 Act, the conditions precedent specified therein must be fulfilled, the

requisites wherefor are that the Plaintiff must actually and voluntarily reside to carry on business or personally work for gain.

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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.

The above proposition of law was re-affirmed in Dabur India Ltd. Vs. K.R. Industries, except for explaining that in Dhodha House case

(supra), it was never meant that two suits based on different causes of action could be clubbed together as a composite suit. A composite suit

would mean the suit which is founded on infringement of a copyright and wherein the incidental power of the Court is required to be invoked. It

was observed as follows:

What then would be meant by a composite suit? A composite suit would not entitle a Court to entertain a suit in respect whereof it has no

jurisdiction, territorial or otherwise. Order 2 Rule 3 of the Code specifically states so and, thus, there is no reason as to why the same should be

ignored. A composite suit within the provisions of the 1957 Act as considered in Dhodha House, therefore, would mean the suit which is founded

on infringement of a copyright and wherein the incidental power of the Court is required to be invoked. A Plaintiff may seek a remedy which can

otherwise be granted by the Court. It was that aspect of the matter which had not been considered in Dhodha House but it never meant that two

suits having different causes of action can be clubbed together as a composite suit.

In the present case, it was a composite suit filed by the Plaintiff/Respondent under the Copyright Act and the Trade Marks Act. Keeping in view

the position of law, the Court at Hisar had no jurisdiction to entertain and decide the suit. Therefore, the impugned order cannot be sustained and

the plaint is liable to be returned for its presentation before the appropriate Court.

Resultantly, the revision is accepted, impugned order passed by the Court below while deciding the preliminary issue regarding territorial

jurisdiction, is set aside and the plaint is ordered to be returned to the Plaintiff/Respondent for its presentation before the appropriate Court.