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Bhikusa Yamasa Kshatriya Pvt. Ltd. Vs. Jagannath Bhikusa Kshatriya and ors. - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtMumbai High Court
Decided On
Case NumberWrit Petn. No. 191 of 1979
Judge
Reported inAIR1979Bom302; (1980)82BOMLR239
ActsTrade and Merchandise Marks Act, 1958 - Sections 2(1), 27, 27(1) and 105; Specific Relief Act
AppellantBhikusa Yamasa Kshatriya Pvt. Ltd.
RespondentJagannath Bhikusa Kshatriya and ors.
Appellant AdvocateM.V. Paranjape and ;V.V. Divekar, Advs.
Respondent AdvocateP.S. Patankar, ;D.D. Samant and ;S.M. Paranjape, Advs.
DispositionOrder accordingly
Excerpt:
trade and merchandise marks act (xliii of 1958), sections 105(c) and 27 - whether ordinary civil jurisdiction of the civil court to enforce a contract and prevent its breach is ousted by the provisions of sections 105(c) and 27 of the trade and merchandise marks act, 1958 -- civil procedure code (vol. 1908), section 9; order xxxix, rule 2.;the provisions of the law that seek to affect the jurisdiction of the civil court must be necessarily strictly construed as there is a universal presumption in favour of the jurisdiction and the jurisdiction so conferred is not to be excluded on the basis of any assumption. therefore, when the special statute is set up, the effort should be to find out what particular matters are specifically taken into account by that statute and by providing specific..........and passing off actions, the scope of which is limited and not universal. trade name and trademark is surely item of property and can be the subject-matter of transfer and assignment. several rights with regard to such item of property, like any other item of property, would arise and thecourt's jurisdiction would be invoked for adjudication thereof.9. with reference to the allegations in the plaint, it is obvious and it can be the only reasonable inference that the suit is filed on the foundation of the agreement upon the allegations that the said agreement was acted upon for over a period of 20 years and the defendants are resiling from the binding agreement to the detriment of the plaintiff. the relief claimed is with regard to the enforcement of the agreement and its.....
Judgment:
ORDER

1. This petition questions the order made by the Joint Judge, Nasik, whereby he vacated the order of injunction passed by the Civil Judge, Junior Division, Sinnar, holding that the suit filed by the present petitioner was not entertainable by the Civil Court in view of the provisions of the Trade and Merchandise Marks Act, 1958. There were also observations in the body of the judgment impugned that even otherwise also the injunction should not have been granted. But with regard to that aspect both the learned Counsel submit that the matter may be remanded for reconsideration in case this Court upholds the jurisdiction of the civil Court to entertain the suit filed by the present petitioner.

2. Thus, the sole question to be determined in the present petition is whether the jurisdiction of the Civil Judge to entertain Regular Civil Suit No. 327 of 1977 filed by the present petitioner was ousted by the provisions of the Trade and Merchandise Marks Act, 1958. The view that prevailed with the appeal Court is that in view of the provisions of Section 27 and Section 105(c) of the Act, the grievance of the plaintiff can only be entertained by the District Court and thus the Civil Court having ordinary civil jurisdiction was incompetent to try the suit.

3. Now, as far as the exclusion of the jurisdiction of the Civil Court is concerned, certain principles are well settled, in that the provisions of law that seek to affect the jurisdiction of the Civil Court must be necessarily strictly construed as there is a universal presumption in favour of the jurisdiction and the Jurisdiction so conferred is not to be excluded on the basis of any assumptions. (See Secretary of State v. Mask & Co., (1940) 67 Ind. App 222 and Magiti Sasmal v. Pandab Rissoi, : [1962]3SCR673 ). Therefore, when the special statute is set up, the effort should be to find out what particular matters are specifically taken into account by that statute and by providing specific remedy the otherwise universal civil jurisdiction is put under eclipse.

4. As far as the facts as disclosed by the allegations in the plaint are con-cerned, the suit is filed seeking relief of permanent injunction with respect to the right to manufacture and trade of label and trade name upon the allegations that the plaintiff is a registered company and defendants Nos. 1 to 3 were the proprietors of the label and trade name fully described in para 2 of the plaint which was exclusively being used by the plaintiff for the purpose of manufacture and sale of bidis and tobacco under an irrevocable agreement of November 1, 1956 under which all rights with regard to the use of that label and trade name have been assigned to the plaintiff. Para 2 of the plaint, goes on to assert that the plaintiff is seized and possessed of all the rights under the agreement duly entered into and binding on the defendants. It further narrates how it is using that trade name and label since the beginning of the agreement. Para 4 of the plaint goes on to say that the defendants have no right because of the agreement to use the trade name and label for their own purposes. Para 5 of the plaint goes on to allege that in breach of that agreement, which was being acted upon for more than 20 years, how the defendants are trying to act and commit breach by attempting to manufacture and trade of the bidis under the said label and trade name, which constitutes, as the plaint allegation goes, 'a breach of the agreement in perpetuity, giving rise to wrongful and irreparable loss monetary as well as amounting to loss of reputation and goodwill with respect to the said trade name and label'. Para 5 of the plaint, therefore, goes on to state that there is necessity of issuing a permanent injunction against the defendants. Para 6 of the plaint asserts that the defendants have no right after the agreement to resort to any such user of the trade name and label assigned to the plaintiff. Para 7 of the plaint states that defendants Nos. 2 and 3 are the joint owners of the trade name and label along with defendant No. 1 and para 8 of the plaint alleges that defendant No. 1 attempted to commit the breach and violation of the agreement executed at Sinnar on October 21, 1977, thus giving cause of action to file the suit.

5. Simply stated, this plaint is based on the agreement and the cause of action which has to be gathered from the bundle of facts alleged is in express terms the alleged commission of the breach or violation thereof. In terms,the plaint states that defendants Nos. 2 and 3 and defendant No. 1 are the owners of the suit trade name and label, but they have no right under the agreement, having assigned the same, to commit breach thereof by trying to use the same in their own favour Therefore, it has to be concluded that the action is based on the contract with regard to the property, being the trade name and label, described in para 2 of the plaint. In support of the claim that there is an assignment of this item of property, the agreements of November 1, 1956 and also of October 31, 1962 are produced on record. It may further be added that the said trade name and label is an unregistered one within the meaning of the provisions of the Trade and Merchandise Marks Act, 1958 and there is no dispute about that position.

6. Therefore, if the cause be the contract between the parties and the cause of action its breach or violation, it is undisputed that the Civil Court will possess the jurisdiction. The question is whether the provisions of the Trade and Merchandise Marks Act, 1958 affect or take away that jurisdiction by any specific enactment in that regard.

7. As far as the provisions of Section 105(c) of the Trade and Merchandise Marks Act, 1958 are concerned, those deal with two types of actions, one being the infringement action and the other being passing of action, and specifically provide that in both these actions the suit has to be instituted only in the District Court. As far as clauses (a) and (b) of Section 105 of the Act are concerned, the same are not applicable to the controversy, for both those clauses deal with registered trade marks and, admittedly, the trade mark in issue is an unregistered one. As far as clause (c) of Section 105 is concerned, it specifically deals with passing off action. The terms of clause (c) are restrictive with regard to the matters of which the District Court can take cognizance under Section 105(c). The suits should relate to the passing off of the trade marks, whether registered or unregistered, and the actions should be founded on the basis of the use by the defendants of any trade marks which are identical or deceptively similar to the plaintiffs' trade marks. In other words, it postulates that with regard to the trade mark in issue, the defendants who are not concerned with the trade mark of theplaintiff are charged with use of the same in a deceitful manner having no entitlement whatsoever to such use. Passing off cannot be answered unless there is an element of deceit in the use of the trade mark. A person, who is admittedly the owner of a given trade mark but under an agreement has assigned the rights of its use, when resorts to the use of such a trade mark in breach of the agreement would not be the person who would be passing off the trade mark of the other person. Several cases may arise where title to trade mark may come in issue and relief with regard to the ownership of such a trade mark simpliciter may fall for adjudication. No doubt, by virtue of the definition of 'trade mark' as contained in the Act (Section 2(1)(v)), a mark has to possess a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user, to use the mark, and questions, when the matters are under Section 105(c) of the Act, may in a given case give rise to determination of exclusive entitlement of either of the parties to the use of such trade mark, but that would be in a way necessary to find out the 'passing off' alleged. The trade mark contemplated by the Act is necessarily a distinctive mark, in the sense that it distinguishes the goods to which it attaches as those made or sold by the person who uses the mark and is a symbol of identity of the make, manufacture and the producer of the goods. By long user such marks may appropriately be the valuable adjunct of the particular trading business and its entitlement by continuous user thereof may arise because of the lawful agreements supporting such user, notwithstanding that the title and ownership of such item of property may rest and remain with other person. Rights flowing from the entitlement to use the property of others are specific civil rights and can be protected and enforced by grant of specific reliefs. Such protective remedies and actions are specific remedies available at general law and would not partake by themselves into actions for infringement or passing off within the specific contemplation of the provisions of Section 105. Having not provided any infringement action with regard to unregistered trade mark by Section 105(a) and (b), the provisions of Section 27(1)would hardly be appropriate to haverelevance for finding forum. Section 27(1) is by its nature declaratory in character with regard to the infringement of an unregistered trade mark. Section 27(1) does not deal with the initial jurisdiction but the entitlement or otherwise if the action were for infringement of an unregistered trade mark. What reliefs can be granted under the provisions of the Act are enumerated in Section 108 of the Act and where the infringement action is brought with regard to an unregistered trade mark, presumably, the provisions of Section 27(1) to the extent they bar the relief would be of applicative use.

8. Here, as stated above, the action is neither for infringement nor for passing off. It is specifically for threatened breach of the contracts or agreements and its prevention. The provisions of Section 105 of the Trade and Merchandise Marks Act, 1958 obviously are not intended to cover all types of actions. Actions under the provisions of the Specific Relief Act and under the Contract Act are clearly not excepted nor the jurisdiction of the Courts which can enforce the contract and prevent its breach is ousted by enacting the provisions of Section 105. If one were to hold so, a large number of cases will arise where there would be no specific remedy available. In a case of dispute as to title, the ordinary Civil Court will not be able to adjudicate if we were to hold that because of the enacting of Section 105, the only Court that can cognize such declaratory causes is the District Court. So also the suits (or specific performance of agreements to transfer or assign rights or the cases where there are breaches of completed agreements would also be without remedy as these are not specifically covered by any of the clauses of Section 105. Effort should be in principle to assume jurisdiction in favour of the Civil Court which partakes in the nature of the universal jurisdiction and to find exception specifically enacted. For all intent and purposes the provisions of Section 105 operate on specific causes known as infringement and passing off actions, the scope of which is limited and not universal. Trade name and trademark is surely item of property and can be the subject-matter of transfer and assignment. Several rights with regard to such item of property, like any other item of property, would arise and theCourt's jurisdiction would be invoked for adjudication thereof.

9. With reference to the allegations in the plaint, it is obvious and it can be the only reasonable inference that the suit is filed on the foundation of the agreement upon the allegations that the said agreement was acted upon for over a period of 20 years and the defendants are resiling from the binding agreement to the detriment of the plaintiff. The relief claimed is with regard to the enforcement of the agreement and its continuance in favour of the plaintiff. Such a case does not fall within the purview of Section 105 of the Trade and Merchandise Marks Act, 1958 or any of the clauses thereof,

10. That being the position, the appeal Court was not right in holding that the Civil Court had no jurisdiction to entertain the suit. That finding of the appeal Court recorded in the impugned order is set aside and it is directed that the appeal Court will now proceed to hear the appeal on the basis that the suit is properly entertained and decide whether the order for injunction was properly made. The appeal Court to decide the appeal as far as possible by the end of April 1979. Though the petition is thus allowed and the order impugned is set aside and the matter is' remitted back to the appeal Court, there would be no order as to costs in the present petition. Rule made absolute.

11. Order accordingly.


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