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S. B. S. Jayam and Co., Represented by Its Managing Partner S. B. S. Selvaraj Vs. Krishnamoorthi, Proprietor, Gopi Chemical Industries - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property rights
CourtChennai High Court
Decided On
Reported in(1977)1MLJ286
AppellantS. B. S. Jayam and Co., Represented by Its Managing Partner S. B. S. Selvaraj
RespondentKrishnamoorthi, Proprietor, Gopi Chemical Industries
Cases ReferredR. Viswanathan v. Ruken
Excerpt:
.....pradesh and not in madras, the infringement of the plaintiff's right (in respect of the registered trade mark which is property) must be held to have happened at madras as well, which is the situs of such right. it is transferable (see sections 36 and 37 of the act). it is also not disputed that it is movable property as per section 3 (36) of the general clauses act, 1897. in the latest edition of ramaswami iyer's law of torts, at page 108, moveable property' is stated as property of every description except immoveable property and that it includes incorporeal rights like patent, copy right, trade mark etc. came to the conclusion that in the case before them, the cause of action had been disclosed in the notice under section 80. it was pointed out that the claim in that case was only for..........the powers conferred under the act. therefore there can be no doubt that in respect of a trade mark registered at the madras office, the situs of the property in the mark, is at madras.10. however, the learned counsel for the defendant contends that the plaintiff's mark in this case had been registered not under the act but under the former act, namely the trade marks act, 1940, that then, there was no registry at madras but the same was only at bombay and that, therefore, there is no question of the situs of the property being at madras. this is not correct. section 136 (1) of the act repeals the indian merchandise marks act, 1889 and the trade marks act. 1940 and sub-section. (2) thereof marks it clear that any registration etc. made under these acts (including the trade marks act,.....
Judgment:

N. S. Ramaswami, J.

1. This is a suit for a permanent-injunction and other reliefs is respect of a registered trade mark. The plaintiff is the proprietor of the registered trade mark 'Gopal Tooth Powder'. The allegation is that the defendant who is carrying on business in Nakrekal Post, Nalgonda District, Andhra Pradesh is infringing the said trade mark. It is stated that the defendant is' marketing tooth powder under the mark 'Gobi Tooth Powder' with a label which is either similar to the plaintiff's mark or a colourable imitation thereof. The defendant has raised several pleas and on the whole seven issues were settled for trial. But the first issue which is regarding the territorial jurisdiction of this Court was taken up as a preliminary issue.

2. Admittedly the defendant is carrying on business in tooth powder only in Andhra Pradesh and it is not the case of the plaintiff that the defendant's goods entered the market here. It is not in dispute that the defendant is using the mark 'Gobi Tooth Powder' and the offending label to market his goods in Andhra Pradesh. The contention on behalf of the defendant is that no part of the cause of action has arisen within the jurisdiction, of this Court inasmuch as the alleged infringement of the plaintiff's mark is only in Andhra Pradesh and the defendant not being a person residing within the jurisdiction of this Court, this Court has no jurisdiction to entertain the suit. It is contended that the plaintiff has obtained leave to sue, wrongly representing to the Court that part of the cause of action has arisen within the jurisdiction, of this Court.

3. The contention of the leaned counsel for the plaintiff is that part of the cause of action had in fact arisen within the jurisdiction of this Court and therefore the suit is maintainable here. One controversy is whether Clause 12 of the Letters Patent or Section 20 of the Code of Civil Procedure applies. It is under Clause 12 of the Letters Patent the plaintiff applied for leave to sue and the same has been granted. But according to the learned Counsel for the defendant, the suit for infringement of a registered trade mark is filed in this Court in its capacity as a District Court as defined under the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) and that, therefore, it is Section 20 of the Code of Civil Procedure that is applicable and not Clause 12 of the Letters Patent, This is not correct.

4. In Section 2 (1) (e) of the Act it is stated that 'District Court' has the meaning assigned to it in the Code of Civil Procedure, 1908. In the said Code the term 'District Court' as such is not defined but the word 'District' is defined as the local limits of the jurisdiction of a principal civil Court of original jurisdiction hereinafter called a 'District Court'. It is significant to note that the same definition makes it clear that the local limits of the ordinary ; civil jurisdiction, of a High Court is also ! included in the definition, of the word 'District'. Therefore under the Code the local limits of the ordinary original jurisdiction of this Court is a district. But that does not mean this Court becomes a District Court.

5. Under Section 110 of the Act the High Court has framed Rules to regulate the proceedings under the Act. Rules 4 and 5 under Chapter II of the said Rules relate to suits. Rule 5 (1) says that all suits instituted in the High Court shall be governed by the Original Side Rules and 5 (ii) says that all suits instituted in the District Court shall be governed by the provisions of the Code of Civil Procedure. The learned Counsel for the defendant says that the present suit which is ore for an alleged infringement of a registered trade mark is filed in this Court functioning as a District Court under the Act, that, therefore, according to Rule 5 (ii) referred above, only the provisions of the Code of Civil Procedure would be applicable and that the clauses in the letters patent have no application. But the learned Counsel is not light. He is under a misapprehension that under Section, 105 of the Act, a suit for infringement of a trade mark shall be instituted only in a 'District Court'. On this assumption he contends that as far as this suit is concerned, this Court is functioning only as District Court as defined under the Act. But Section 105 does not say that such a suit shall be instituted only in a 'District Court'. It says that a suit for infringment 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 a suit can be filed in the High Court. Of course the territorial jurisdiction of the original side of this Court comes within the definition of the word 'District' in the Code and this is the principal civil Court of original jurisdiction as far as the said 'District' is concerned but that does not mean that the Original Side Rules and the Letters Patent are not applicable to a suit instituted in this Court for infringement of a registered trade mark.

6. However, this discussion is really academic. Whether Clause 12 of the Letters Patent applies or Section 20 of the Code of Civil Procedure applies, the plaintiff can succeed on the preliminary issue (regarding territorial jurisdiction) only if it is shown that part of the cause of action has arisen within the jurisdiction of this Court. It cannot be disputed that even under Section 20 of the Code, if part of the cause of action has arisen within the jurisdiction of this Court, the suit is maintainable here. Therefore the real question is whether any part of the cause of action for the suit has arisen within the jurisdiction of this Court.

7. The learned Counsel for the plaintiff put forward two contentions. The first is that the plaintiff has necessarily to allege and, if traversed, should prove the fact that his mark is registered mark, inasmuch as the suit is one for infringement of a registered trade mark and that is part of the cause of action. It is stated that a registered trade mark is property and as the office of the Registrar of Trade Marks is situate at Madras, the situs of that property must be held to be Madras and. that therefore the fact of registration of the mark which constituted part of the cause of action must be held to have arisen in Madras. The second aspect of the contention is that; though the offending mark of the defendant is being used only in Andhra Pradesh and not in Madras, the infringement of the plaintiff's right (in respect of the registered trade mark which is property) must be held to have happened at Madras as well, which is the situs of such right.

8. There can be no doubt that the right of the plaintiff to the registered trade mark is a proprietary right and therefore it is property. It is transferable (See Sections 36 and 37 of the Act). It is also not disputed that it is movable property as per Section 3 (36) of the General Clauses Act, 1897. In the latest Edition of Ramaswami Iyer's Law of Torts, at page 108, 'moveable property' is stated as property of every description except immoveable property and that it includes incorporeal rights like patent, copy right, trade mark etc. The question is whether the situs of such property of the plaintiff is Madras.

9. Under Section 5 (2) of the Act, it is provided that the head-office of the Trade Marks Registry shall be at such place as the Central Government may specify and for the purpose of facilitating the 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. Sub-section (3) of the same section gives power to the Central Government to define the territorial limits within which an office of the Trade Marks Registry may exercise its functions. Under the Act Section 133; (2) (1), the Central Government may make Rules for the establishment of offices of the Trade Marks Registry for facilitating the working of this Act, the territorial jurisdiction of each office of the Trade Marks Registry. The Central Government by notification has , established the Trade Marks Registry with its head office at Bombay and branch offices of the Registry at Calcutta, Delhi and Madras. The territorial limits within which each, of the Offices of the . Registry shall exercise its functions are also defined in the notification. Even though the head office is at Bombay, the branch offices including the one at Madras have independent territorial jurisdiction regarding the powers conferred under the Act. Therefore there can be no doubt that in respect of a Trade Mark Registered at the Madras Office, the situs of the property in the mark, is at Madras.

10. However, the learned Counsel for the defendant contends that the plaintiff's mark in this case had been registered not under the Act but under the former Act, namely the Trade Marks Act, 1940, that then, there was no Registry at Madras but the same was only at Bombay and that, therefore, there is no question of the situs of the property being at Madras. This is not correct. Section 136 (1) of the Act repeals the Indian Merchandise Marks Act, 1889 and the Trade Marks Act. 1940 and Sub-section. (2) thereof marks it clear that any registration etc. made under these Acts (including the Trade Marks Act, 1940) shall (if in force at the commencement of the Act), 'continue in force and have effect as if made, issued, given or done under the corresponding provision of this Act.' Therefore even though the plaintiff's mark in this case had been registered under the Trade Marks Act, 1940 at Bombay, by virtue of Section 136 (2) of the Act, it shall be deemed to have been registered only at Madras. There can be no dispute that in respect of the plaintiff's registered trade mark as at persent only the Registry at Madras has jurisdiction. If any action in respect of the said mark of the plaintiff is to be taken under Sections 16, 22, 44 or other section of the Act it has necessarily to be taken, only at the Registry at Madras and not at Bombay. Therefore, there is no merit in the contention that the registration of the plaintiff's mark having been done at Bombay (under the Trade Marks Act, 1940) there is no question of the situs of the property being at Madras.

11. In the above background, one has to see whether any part of the cause of action for the present suit has arise an Madras, in. State of Madras v. C. P. Agencies A.I.R. 1960, their Lordships of the Supreme Court have quoted with approval the definition of 'cause of action,' given in some of the English cases. In Read v. Brown (1988) 22 Q.B.D. 128. Lord Esher, M.R., defined 'cause of action' to mean:

Every fact which it would be necessary for the plaintiff to prove, if traversed in order to support his right to the judgment of the Court. It does not comprise every piece of evidence which is necessary to prove each fact but every fact which is necessary to be proved.

In the same case, Fry, L.J., agreeing with Lord Esher, M.R. said:

Everything which, if not proved, gives the defendant an immediate right to judgment must be part of the cause of action.

It is indisputable that cause of action has no relation whatever to the defences that may be set up by the defendant, nor does it depend upon the character of the relief prayed for by the plaintiff. It refers entirely to the grounds set forth in the plaint as the cause of action.

12. In the present case the contention on behalf of the plaintiff is that the suit being one for infringement of the registered trade mark, the plaintiff has necessarily to aver the facts relating to the registration, of his mark and, if the same is traversed, to prove, in order to get judgment in his favour and that therefore that fact is part of the cause of action. That the defendant in his written statement is not disputing the registration, of the plaintiff's mark has nothing to do with the question whether the fact of registration which is averred in the plaint is part of cause of action or not.

13. In, the Supreme Court case referred above, the question was whether the notice under Section 80, Code of Civil Procedure, was invalid on the ground that it has not disclosed the cause of action for the proposed suit. Their Lordships after referring to the definition of the term 'cause of action' contained in Read v. Brown1. came to the conclusion that in the case before them, the cause of action had been disclosed in the notice under Section 80. It was pointed out that the claim in that case was only for godown rent with interest thereon as well as lawyer's fee for drafting and sending the notice. It was further pointed out that the averments in the plaint relating to the contract for sale of black-gram and the terms thereof are only matters of history set out as matters of inducement and are not strictly speaking part of the cause of action on which the suit had been filed.

14. In Md. Khalil Khan v. Mahbub Ali Mian , also the definition of the term 'cause of action' given by Lord Esher, M. R. (in the case referred above), is relied on. In that case the question was whether the suit was barred under Order 2, Rule 2, Code of Civil Procedure, in view of an earlier suit in which the plaintiff had omitted to include a claim in the plaint. It was held, on facts, that the cause of action for the earlier suit as well as the subsequent suit was one and the same and that therefore the subsequent suit was barred. There were two sets of properties, one property is referred to as Oudh property and the other is referred to as Shahjahanpur property. The former suit was in respect of the Oudh property and the latter in respect of Shahjahanpur property. It has been pointed out that both the suits referred to trespass on. the property as the cause of action and that such trespass being similar in character formed part of one and the same transaction and as the evidence to prove the fact was the same, the subsequent suit was barred by virtue of Order 2, Rule 2. Code of Civil Procedure.

15. Therefore, it is clear that the fact which, if traversed, has to be proved to become part of the cause of action must b' one relating to the transaction in question.

16. In the present case, on a careful consideration I agree with the contention of the learned Counsel for the plaintiff that the facts relating to the registration of the plaintiff's trade mark is one-connected with the transaction concerning the suit and that therefore, it. is part of the cause of action. It is not possible to hold that the registration of the plaintiff's mark has nothing to do with the infringement complained of But for the fact that the plaintiff's mark is a registered one, the question of infringement of the mark would notarise.

17. What is stated earlier is sufficient to hold that this Court has jurisdiction to entertain the suit, as I am of the view that the fact of registration which has necessarily to be alleged and, if traversed, to be proved is part of cause of action and the same has arisen in Madras But 1 am of the view that even on the second aspect put forward by the learned Counsel for the plaintiff, he has to succeed. 1 have already indicated that the situs of the property (plaintiff's trade mark) is Madras. To fortify that conclusion I may also refer to R. Viswanathan v. Ruken-ul-Mulk Syed Abdul Wajid : [1963]3SCR22 , where the Supreme Court has held that the situs of certain shares (which are moveables) is the place where the registered office of the company is situate, that being the place where the shares can be effectively dealt with.

18. The property being moveable property, the mere fact that the same is at Madras would not entitle the plaintiff to institute a suit here, for only in respect of immoveable property the Court within whose jurisdiction the property is situate shall have jurisdiction (without any reference to the question of cause of action). In the present case, the question is whether the cause of action due to infringement of the mark has not arisen at Madras. It is true that the defendant is marketing his product with the alleged offending mark in Andhra Pradesh, and not in Madras Even so, when the property is at Madras J fail to see how it can be said that the infringement was only in Andhra Pradesh and not at Madras. After all what the plaintiff complains is that his registered trade mark is being infringed. Even though the product with the alleged offending mark has not come to the Madras market, there can be little doubt that the alleged infringement is not only at the place where the defendant markets his goods but also where the plaintiff's property itself is situated.

19. Issue No. 1 is answered in favour of the plaintiff holding that this Court has territorial jurisdiction to entertain the suit.

20. When the suit was taken up for trial on the other issues, course 1 on either side stated that they were not leading any evidence. On behalf of the defendant it is conceded that his mark in reality infringes the registered trade mark of the plaintiff. It is further conceded that the plaintiff is entitled to an injunction as prayed for.

21. The plaintiff having not let in any evidence, there is no proof regarding the quantum of damages suffered by him. However, I think that he should be granted at least a nominal damages of Rs. 10 and accordingly it is granted.

22. Issues 3 to 5 are not pressed by the defendant.

23. Issue 2 is answered in favour of the plaintiff.

24. Issue 6 is also answered partly in favour of the plaintiff in that he is entitled to a nominal damage of Rs. 10 but not entitled to the relief of accounting.

25. I he suit is decreed accordingly. But under the circumstances, there will be no order as to costs.


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