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Amrutanjan Limited Vs. AshwIn Fine Chemicals and Pharmaceuticals, Kashi Mira District - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtChennai High Court
Decided On
Case NumberC.S. No. 74 of 1982
Judge
Reported inAIR1991Mad277
ActsTrade and Merchandise Marks Act 1958 - Sections 105 and 136; Code of Civil Procedure (CPC), 1908 - Sections 20; Indian Companies Act, 1956; Trade Marks Act, 1940 Sections 2, 8, 30, 34 and 35
AppellantAmrutanjan Limited
RespondentAshwIn Fine Chemicals and Pharmaceuticals, Kashi Mira District
Appellant Advocate U.N.R. Rao, for C.Daniel, Counsel
Respondent Advocate V.N. Krishna Rao, Counsel
Cases ReferredBrookebond India Ltd. v. Balaji Tea
Excerpt:
.....trade mark - respondents challenged jurisdiction of court to try suit - petitioner's trade-mark registered at madras and their products marketed throughout country were facts not disputed by respondent - once trade-mark of product registered at place and marketed throughout india then cause of action will arise at place where trade-mark is registered - court found cause of action arose within jurisdiction of court hence suit maintainable. - - the defendants plead further in paragraph 7 of the written statement that in or about the year 1977, the defendants bona fide,,and honestly adopted a trade-mark label, ashw1ns' from their trading style, ashwin fine chemicals and pharmaceuti-cals' and have been using the same continuously, voluminously and extensively in the state of..........their products as those of the plaintiffs and by doing so, the defendants have infringed the trade mark registered by the plaintiffs and thereby profited themselves by marketing the offending trade mark within the state of madhya pradesh and so on. the plaintiffs issued a lawyer's notice prior to suitto the defendants on 19-9-1980 to which the defendants have sent their reply notice on 23-12-1980 through their counsel. the plaintiffs have alleged the cause of action for the suit having arisen within the city of madras where the plaintiffs' appropriate trade mark registry is situated and from september, 1980 from when the defendants' impugned products were known to be sold, at madras, within the jurisdiction of this court.4. in paragraph 4 of the plaint it has been averred that the.....
Judgment:
ORDER

1. The suit is tried for the limited aspect of deciding as to whether this Court has got jurisdiction to try the suit or not, as a preliminary issue, covered under Issue No. f as settled for the purpose of trial.

2. For this limited purpose, the averments made in the plaint arc as follows, which are extracted for purposes of appreciation of the above issue. The plaintiffs, a limited company incorporated under the Indian Companies Act, 1956, and having their registered office atNo. 14/15, Luz Church Road, Mylapore, Madras-4, being the proprietor of the trade mark concerned in the suit, started about eighty years ago in manufacturing and selling, goods covered under the abovcsaid trade mark, 'AMRUTANJAN' got registered before the Trade Mark Registry situated at Haddows Road, Madras-6, under the Trade and Merchandise Marks Act, (43 of 1958) (hereinafter referred to as the Act). The plaintiffs have filed the suit for the reliefs of a permanent injunction restraining the defendants, their servanls, agents or anyone claiming through them from manufacturing and selling and offering for sale the offencing ASHWIN'S PAIN BALM with carton marked as Document No. 3 filed along with the plaint in any colour or any other trade mark which is deceptively similar to, or a colourable imitation of, the plaintiffs' registered trade mark 'AMRUTANJAN' filed as Document No. 2 filed along with the plaint; directing the defendants to render a true and faithful account of the profits earned by them through the manufacture and sale of the offending 'ASHWIN PAIN BALM' and so on and also for directing the defendants to surrender to the plaintiffs for destruction all the cartons, labels or any other printed matters containing or consisting of the offending 'ASHWINS' Trade mark together with the blocks used for the purposes of printing the same, and for the costs of the suit.

3. The plaintiffs came foward with the abovesaid claim on the following grounds; the defendants, a registered firm, are doing business in the State of Madhya Pradesh, manufacturing the offending product, viz. 'Ashwins' Pain Balm, and selling the same in several places in the State of Madhya Pradesh, where the plaintiffs' products are being sold and the defendants are carrying on the said spurious business by camouflaging the registered trade mark of the plaintiff and passing off their products as those of the plaintiffs and by doing so, the defendants have infringed the trade mark registered by the plaintiffs and thereby profited themselves by marketing the offending trade mark within the State of Madhya Pradesh and so on. The plaintiffs issued a lawyer's notice prior to suitto the defendants on 19-9-1980 to which the defendants have sent their reply notice on 23-12-1980 through their counsel. The plaintiffs have alleged the cause of action for the suit having arisen within the city of Madras where the plaintiffs' appropriate Trade Mark Registry is situated and from September, 1980 from when the defendants' impugned products were known to be sold, at Madras, within the jurisdiction of this Court.

4. In paragraph 4 of the plaint it has been averred that the plaintiffs have duly registered their aforesaid trade mark' AMRUTANJ AN' under the Trade Marks Act, 1940, corresponding to the Trade and Merchandise Marks Act, 1958 as evidenced by Document No. 1 filed along with the plaint, which registration is being renewed from time to time, their registered trade mark number being 198004 as evidenced by Document No. 2 filed with the plaint, and in paragraph 7 of the plaint it has been further averred that the plaintiffs came to know of the defendants' illegal business through their (plaintiffs') representative at Madhya Pradesh, which is the place of manufacture of their impugned products, at the end of September, 1980 and that the defendants' products are also available at all places and that wherever the plaintiffs' products are being sold, the products of the defendants are being sold with the infringing carton and thus, the defendants are carrying on their spurious business, passing off their products as the products of the plaintiffs. The other averments made in the plaint are not necessary for being referred to or considered for the purpose of determining the preliminary issue on the question of jurisdiction.

5. In paragraph 2 of their written statement, the defendants have pleaded, among other things, that this Court has no jurisdiction to entertain the suit of the plaintiffs in view of the fact that the defendants do not sell any goods in the State of Tamil Nadu and, therefore, the alleged infringement is not within the jurisdiction of this Court and that the present suit is laid questioning the trade mark of the defendants which has been ..accepted by the Trade Mark Registry at Bombay and that as such, only the Courts atBombay have jurisdiction to entertain the suit. The defendants plead further in paragraph 7 of the written statement that in or about the year 1977, the defendants bona fide,, and honestly adopted a trade-mark label, 'ASHW1NS' from their trading style, 'Ashwin Fine Chemicals and Pharmaceuti-cals' and have been using the same continuously, voluminously and extensively in the State of Maharashtra, and that since the defendants' products are Ayurvedic medicine, the high quality and use and publicity of which has led the Medical Trade as well as the public associating the said trade mark with the defendants' products alone in the State of Maharashtra and that as such, they have applied for registration and the said application had been accepted and advertised in the Trade Marks Journal, which fact is known to the plaintiffs even prior to the institution of the suit. In paragraph 12 of the written statement, the defendants have contended further that the claim of jurisdiction within this Court is not correct as no sales are effected by the defendants of their products within the jurisdiction of this Court and as such, no infringement of the trade mark has taken place within the jurisdiction of this court. The defendants'trade mark has been accepted by the Trade Mark Registry of Bombay, which is now challenged in this suit and, therefore, as claimed by the plaintiffs, the appropriate Trade Mark Registry of the plaintiffs' mark will not give them a cause of action to institute the suit in this Court, and as such, the present suit of the plaintiffs is liable to be dismissed on the sole ground that this Court has no jurisdiction to entertain the suit.

6. On the aforesaid and other pleadings of the parties, a preliminary Issue (Issue No. 1), among other issues, was framed, 'as to whether this Court has got the jurisdiction to try the suit or not?' was settled for trial and consequently, learned counsel for both parties insisted the abovesaid issue being tried as a preliminary issue as it releates to the question of jurisdiction of this Court to try the suit.

7. While trying Issue No. 1, as a preliminary issue, it has become necessary to note that both parties have not adduced anyoral evidence or any documentary evidence except filing certain documents along with the plaint and we are left only with the pleadings of the parties as set out in the plaint and in the written statement. Learned counsel appearing on either side addressed their arguments in the light of the pleadings on the question of jurisdiction covered by Issue No. 1.

8. On a careful reading and perusal of the prayers made in the plaint and the basis upon which the reliefs are sought, wifh reference to paragraphs 4, 5, 7, 8, 11 and 13 of the plaint, as well as the plaint document No. I, dated 30-11 -1962 which relates to the registration of the plaintiffs' trade-mark, and plaint documents Nos. 4 and 5, copies of notices exchanged between the parties herein, I am fully satisfied that the suit of the plaintiffs is one filed, based on the infringement of the plaintiffs' trade-mark namely, 'AMRUTAN-JAN', with a similar product with the mark 'ASHWINS' being produced and marketed by the defendants. Learned counsel for the defendants, Thiru V. N. Krishna Rao, contended before me that the suit of the plaintiffs is one for a mere relief against the passing off of the defendants' product and that as such, the necessary ingredients which are required to be proved had happened only in the State of Madhya Pradesh and that inasmuch as the same remaining to be the stale of affairs, and considering the burden of proof of the ingredient of actual unlawful profit stated to have been derived by the defendants, which is relevant to the said relief, the cause of action must be taken to have happened in the State of Madhya Pradesh, as no act of production, marketing or sales was alleged to have taken place within the State of Tamil Nadu so as to bring the suit within the jurisdiction of this Court.

9. At the outset, I may state that there is no substance in the argument of learned counsel for the defendants, because the specific plea taken in the plaint clinches the fact that the relief asked for in the suit by the plaintiffs is one for infringement of their trade mark by the defendants, and not a relief for the mere passing off. The further discussion as to how, in what manner and mode, the trademark registered and owned by the plaintiffs is. being infringed and at which place and during: what period, all depends purely on factual points to be proved and established by adduc-ing necessary evidence by the respective parties during the trial, and not at the present; stage.

10. It is more important to note that the defendants have not disputed the factum of registration of the plaintiffs' trade-mark 'AMRUTANJAN' in the Trade-mark Registry at Madras, long back and that the plaintiffs have been manufacturing the said product from Madras and marketing the same in various parts of the country for purposes of sale. In other words, the aver mcnts relating to the abovesaid aspect, made in paragraphs 2 to 6 of the plaint, have not been specifically denied, as is required of them under law, and it is admitted by the defendants in this case that they are producing 'ASHWINS' pain balm and marketing the same throughout the State of Madhya Pradesh after having taken out proceedings to, get their trade-mark registered at Bombay to' the knowledge of the plaintiffs. In so far as the definition of the terms, 'mark', 'registered trade-mark', 'trade-mark' etc., as found in S. 2 of the Act, in its various clauses, viz., Cls. (j), (r) and (v), as well as the provisions of; S . 3 of the Act determining jurisdiction are, concerned, I may state that the question involved and to be decided in that case is, beyond the purview of the present issue and has to be gone into only during the time of tiral, and the further reliance of learned counsel for the defendants that as per S. 3 of the Act, jurisdiction to entertain the suit vests only with the High Court at Bombay where the defendants' trade-mark had been registered and the dispute relating to [he said registration of trade-mark of the defendants is pending, has no relevancy, particularly in the context of the present suit, which has been filed by the plaintiffs in this Court. However, the defendants candidly admit that the plaintiffs' trade-mark 'AMRUTANJAN' has been registered in the Trade-mark Registry at Madras, and the very factum cannot be ignored that by having their trade-mark 'AMRUTANJAN' registered long back in.the Trade-mark Registry at Madras, as seen in document No. 1 filed with the plaint, and the further fact that the plaintiffs have been manufacturing and producing their goods pursuant thereto only from Madras and marketing the same throughout the country and abroad, as seen from the averments in the plaint and these facts, in my view, assume importance and form the very basis and foundation for the present suit filed by the plaintiffs in this Court.

11. Learned counsel for the plaintiffs contended that if part of the cause of action arises in Madras and consequently'; leave has been granted to the plaintiffs to sue in this High Court, then by virtue of Cl. 12 of the Letters Patent, this Court has got jurisdiction on the basis of the cause of action, as has been averred by (he plaintiffs (paras 3 and 4 of the plaint). I agree with the argument of learned counsel for the plaintiffs in the matter, because the trade-mark of the plaintiffs was registered at Madras long time back and their products are being manufactured from Madras only and the same is being marketed throughout the country, which facts have not open specifically denied by the defendants. As such, there is no difficulty in concluding that part of the cause of action for the plaitniffs' suit arose in Madras within the jurisdiction of this court. Further, the Act was enacted by Parliament and its operation extends to the whole of India as a Central Act. Therefore, I have no hesitation in holding that considering the very object and purview of the Act, when once the trade-mark of a product has been registered at a place specified by the Act and in pursuance of the same the product in accordance with the registered trade-mark has been produced and is being marketed throughout India, then for any wrong done to the said trade-mark, part of the cause of action will arise in the place where the trademark was registered and the products are being produced and marketed.

12. In this context, I may refe'r to a Decision of the Supreme court, reported in Rustorn Homnby Ltd. v. Zamindara Engineering Co. : [1970]2SCR222 . Though the facts upon which the abovedecision was rendered by the Supreme Court are somewhat different, the ratio laid down will be safely applicable to the facts of the present case. The relevant passages available in the said decision are as follows (at p. 1650 of AIR 1970 SC):--

'The action for infringement is a statutory right. It is dependent upon the validity of the registration and subject to the other restrictions laid down in Ss. 30, 34 and 35. On the other hand, the gist of a passing off action, is that A is not entitled to represent his goods as the goods of B, but it is not necessary for B to prove that A did this knowingly or with any intent to deceive. The two actions are, however, closely similar in some respects.'

A decision reported in S. B. S. Jayam and Co. v. Gopi Chemical Industries, India : (1977)1MLJ286 was then relied on by learned counsel for the plaintiffs in support of his contention that the present suit is well within the jurisdiction of this Court. N. S, Rama-swami, J., has held in the above decision, on the basis of identical facts, that under the Code of Civil Procedure, the local limits of ordinary original civil jurisdiction of the High Court is a district, but that does not mean that the High Court becomes a District Court. Under S. 105 of the Trade and Merchandise Marks Act, 1958, a suit can be filec in the High Court and all that the said section saj s is that a suit for infringement of a registered trade-mark shall not be instituted in any Court inferior to a District Court having jurisdiction to try the suit. That means, such suit can be filed in the High Court. The fact that the original side of the High Court comes within the definition of the word 'District' in the Act, does not mean that the Original Side Rules and the Letters Patent are not applicable to a suit instituted in the High Court for infringement of a registered trade-mark. Applying the principles of law thus laid down by the learned Judge in the abovesaid decision to the facts of the present case, since the defendants have not disputed the registration of the trade-mark of the plaintiffs at Madras and their manufacturing, marketing and selling their product throughout the country, there is no difficulty in holding that on acombined perusal of Cl. 12 of the Letters Patent and S. 20 of the Code of Civil Procedure as well as S. 105 of the Act, it can be safely held that the suit can be filed in this Court and that this Court has jurisdiction to try the same.

13. It was further held in the abovesaid decision that in respect of the Trade Marks Registry in Madras, the situs of the property in the mark is at Madras and that even though the plaintiffs' mark had been registered under the Trade Marks Act of 1940 at Bombay, by virtue of S. 136(2) of the Trade and Merchandise Marks Act, 1958, it should be deemed to have been registered only at Madras. (Vide : paras 9 and 10 of the reported judgment in : (1977)1MLJ286 . It was further held that even though the product with the alleged offending mark had not come to Madras market, there can be little doubt that the alleged infringement was not only at the place where the defendants marketed their goods, but also where the plaintiffs' property itself was situated.

14. At the outset, I may state that it cannot be disputed that even under S. 20 of the Code of Civil Procedure, if it shows that part of the cause of action has arisen within the jurisdiction of this Court, then the suit as filed is maintainable in this Court. But, the real question to be decided in this case is whether any part of the cause of action for the suit has arisen within the Trade Marks Registry at Madras so as to bring the suit of the plaintiffs within the jurisdiction of this Court. There cannot be any doubt that the right of the plaintiffs to the registered trade mark is a proprietory right duly safeguarded by the statute and that therefore, it is a property and that there cannot be any dispute that such registered trade mark is a movable property as given by law, as it attracts incorporial rights like patent, copyright, trade-marks etc. Then the question remains to be considered, is as to whether the situs of such property of the plaintiffs is at Madras. It is provided under S. 5(2) of the Act that the head office of the Trade Marks Registry shall be at such place as the Central Governmentmay specify and for the purpose of facilitating registration of trade marks, there may be established at such places as the Central Government may think fit branch offices of the Trade Marks Registry. On a careful perusal of the available pleadings made in the plaint with reference to the copies of the documents filed along with the plaint, J am inclined to hold that by virtue of S. 136(2) of the Act, it is clear that the territorial jurisdiction in respect of the registration of trade mark of the plaintiffs product, is conferred in the Trade Marks Registry at Madras, within the jurisdiction of this Court. It follows that in view of the notification issued by the Central Government the territorial limits within which each of the office of the Registry shall exercise its functions are also defined, even though the original registration was done at a different place for the plaintiffs' trade mark, since Madras happens to be one of its branches having independent territorial jurisdiction regarding the powers conferred under the Act and there cannot be any doubt that the plaintiffs' registration of the trade mark at the Madras office, the situs of the property in the registration of trade mark, is deemed to be at Madras.

15. On a very careful perusal of the facts as well as the principles of law laid down by the learned Judge in S. B. S. Jay am & Co. v. Gopi Chemical Industries, India ( : (1977)1MLJ286 with reference to the facts of the present case, I am fully satisfied that the abovesaid principle of law can be made applicable in its entirety and by doing so, I am inclined to hold that this Court has got ample jurisdiction to try the present suit filed by the plaintiffs.

16. The above principles of law were followed by a Bench of this Court in a later decision reported in Herold Charles Pinto v. Hilda Mcnezcs 1977 TLNJ 214 to a limited extent. But, the facts upon which the Bench ruling was rendered by the learned Judges were not identical, but stood in a different position. However, the very tenor of the principle of law laid down by the learned single Judge in S. B. S. Jayam & Co. v. Gopi Chemical Industries, India : (1977)1MLJ286 was maintained by the Bench in itsdecision as far as the purpose of the jurisdiction of the High Court was concerned.

17. Then, two other reported cases, one in Ranjit Singh v. Jaswant Singh and the other in Brookebond India Ltd. v. Balaji Tea (India) Pvt. Ltd. 1989 104 MLW 551 were relied on by learned counsel appearing for the plaintiffs in support of the plaintiffs' case. On a perusal of the facts upon which the learend Judges in the above two cases have laid down the principles of law, in my respectful view, are not identical with the facts of the present case, relating to the question of jurisdiction of this Court as a preliminary point. Therefore, the argument advanced by lerned counsel for the plaintiffs on the basis of the above two rulings (last referred to above) has no force with regard to the relevancy and as such, I have no hesitation in rejecting the same.

18. Mr. V. N. Krishna Rao, learned counsel for the defendants, contended that in considering whether the jurisdiction lies with one Court, the cause of action arising even under the Trade and Merchandise Marks Act is fully governed by the provisions of the Code of Civil Procedure on the basis of which the cause of action, either wholly or in part should arise in the place where the plaintiffs reside or, to entertain a suit the Court should have jurisdiction at that place, and in support of the above contention he referred to the Text Book entitled 'Trade Marks and Passing Off' by Narayanan (III Edn. (1981), para 1075) wherein it is observed as follows under the heading 'Jurisdiction':--

'A jurisdiction of the Court for the purpose of infringement suits is governed by the provisions of the Code of Civil Procedure. The cause of action must have arisen in a place within the jurisdiction of the Court where the suit is to be filed. The Court in the district where the spurious goods were sent for sale on a commercial scale must have jurisdiction, to entertain the suit. Actual sale is not necessary.'

But, the learned author has not confined anything in making the above observation, that part of the casue of action arising inthe place where the party who is wronged resides, he can maintain the action in the Court which has got jurisdiction over that place, as provided under the Code of Civil Procedure. It follows, therefore, that even applying the principles expressed by the learned author, in view of the part of the cause of action having arisen for the plaintiffs in Madras, by their having their Trade Mark Registry at Haddows Road, Madras by virtue of the provisions of Act 43 of 1958, and by manufacturing their products from Madras as borne out by the pleadings in the plaint and marketing the said products throughout the country, and this trade mark allegedly being offended by the defendants in one part of the country, namely, Madhya Pradesh, the situs of the property in the trade mark of the plaintiffs also being at Madras, even applying the provisions of the Code of Civil Procedure, since the suit of the plaintiffs is based on infringement of their trade mark, the present suit filed by the plaintiffs can be perfectly maintained in this Court and is triable by this Court in accordance with law. It may not be out of point if I observe that the averred pleadings in the plaint regarding the alleged infringement of the registered trade mark of the plaintiffs by the defendants are not adequate enough. But, it is open to the plaintiffs to work out their remedies in any appropriate way as provided by law.

19. Besides, I may advert to one other inherent laches on the part of the defendants' case relating to this issue; that is, before entertaining the suit in this Court, it appears the plaintiffs had filed an application seeking the leave to file the suit in this Court, upon which leave was granted to the plaintiffs, but the defendants, after they came to know of the event of the filing of the suit, though a remedy was available to them to have the leave revoked, do not appear to have taken any steps if really they were aggrieved by a wrong entertainment of the suit in this Court. It is incumbent on the part of the defendants that they should have taken necessary steps to revoke the leave to sue granted already in favour of the plaintiffs and this fact also fortifies the claim of the plaintiffs to have the suit tried in this Court.

20. Thus, having considered all the pleadings made in the plaint as well as in the written statement with reference to the relevant documents and the case law cited and the arguments of learned counsel appearing on both sides, 1 have no hesitation in holding that this Court has got every jurisdiction to try the suil, and accordingly, I answer Issue No. 1 in favour of the plaintiffs and against the defendants. I would make it clear that none of my observations made herein will have any bearing or cause any impediment whatever upon the rights and interests of the parties herein in discharging their onus of proving their respective cases by adducing alt kinds of evidence as contemplated under law with regard to the factual points and questions of law involved in the other issues during trial. Post the case for trial on 8-10-1990.

21. Order accordingly.


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