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Manash Ranjan Chakravarty Vs. Tropical Accumulators Ltd. - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights;Civil
CourtKolkata High Court
Decided On
Case NumberA.F.O.D. No. 255 of 1953
Judge
Reported inAIR1957Cal135,60CWN590
ActsCode of Civil Procedure (CPC) , 1908 - Sections 2(2), 9, 104 and 115 - Order 43, Rule 1; ;Trade Marks Act, 1948 - Sections 39 and 73
AppellantManash Ranjan Chakravarty
RespondentTropical Accumulators Ltd.
Appellant AdvocateJitendra Mohan Banerjee and ;Naresh Chandra Ganguli, Advs.
Respondent AdvocateUpendra Chandra Mallik and ;Sudhansu Kumar Hazra, Advs.
Cases ReferredCommissioners of Customs and Excise v. Ingram
Excerpt:
- .....brought a suit in the 4th court of the subordinate judge at alipore for a declaration that the trade mark 'sakti' is being used and exploited by the plaintiff ever since 1936 and is not liable to be sold in execution of a certain decree which has been passed against the pro forma defendant madhusudhan majumdar at least till the disposal of the application by the plaintiff before the registrar of trade marks for registration as a user and for certain other reliefs.2. manash chakravarty, defendant no. 1 appellant before this court raised various defences as regards the merits of the case and. in addition, the jurisdiction of the court to entertain the suit in the present form was also questioned. defence was also filed on behalf of the other contesting defendants.3. various issues were.....
Judgment:

R.P. Mookerjee, J.

1. The plaintiff respondent Company brought a suit in the 4th Court of the Subordinate Judge at Alipore for a declaration that the Trade Mark 'Sakti' is being used and exploited by the plaintiff ever since 1936 and is not liable to be sold in execution of a certain decree which has been passed against the pro forma defendant Madhusudhan Majumdar at least till the disposal of the application by the plaintiff before the Registrar of Trade Marks for registration as a user and for certain other reliefs.

2. Manash Chakravarty, defendant No. 1 appellant before this Court raised various defences as regards the merits of the case and. in addition, the jurisdiction of the court to entertain the suit in the present form was also questioned. Defence was also filed on behalf of the other contesting defendants.

3. Various issues were raised including one Which was in the following terms:

'Has the Court jurisdiction to try the suit?'

4. This issue along with another were taken up as preliminary issues. The second issue which related to valuation & the requisite court-fee payable was decided in favour of the plaintiff. The issue about the jurisdiction of the Court was also decided in favour of the plaintiff.

5. The learned Subordinate Judge also found that he had jurisdiction to try the suit and directed the other issues to be taken up in the usual course. It is against the decision so far as the jurisdiction of the trial court is concerned that the defendant has come up to this Court. But the learned Advocate for the respondent has raised a preliminary objection about the maintainability of the appeal. This objection must prevail. The order passed by the learned Subordinate Judge deciding the preliminary issue is neither a decree nor an order which is appealable under Order 43 Rule 1, Civil P. C.

6. Reliance was placed on behalf of the appellant on the recent Privy Council decision Adaikappa Chettiar v. Chandrasekara Thevar .

7. The decision in that case rested on an interpretation of Section 19, Madras Agriculturists Relief Act, (Madras Act IV of 1938). Where a legal right is in dispute and the ordinary courts of the country are seized of such disputes the courts are governed by the ordinary rules of procedure applicable thereto and an appeal would lie if authorised by such rules, notwithstanding that the legal right claimed arises under a special Statute which does not in terms confer a right of appeal. This is no authority for the very broad proposition which was attempted to be enunciated by the learned Advocate for the appellant that every order passed by a Subordinate Court is an appealable one.

8. This appeal must accordingly be dismissed as not maintainable in law.

9. The appellant had at the time of the filing of the Memorandum of Appeal in this Court filed an application in revision in the alternative. That application now falls to be decided. There can be no question that the order complained of raises a question of jurisdiction and Section 115, Civil P. C. is prima facie attracted.

10. Reference may be made to such only of the facts as would be relevant for appreciating the objection as to jurisdiction as raised by the defendant in the trial court.

11. Section 73 of the Trade Marks Act (Act V of 1940) provides:

'Suits for infringements to be instituted before district court -- No suit for the infringement of Trade Mark or otherwise relating to any right in a Trade Mark shall be instituted in any court inferior to a district court having jurisdiction to try the suit'.

' (12) 'District court' is defined In Clause (c) of sub-sec. 1 of Section 2 of the same Act as having 'the meaning assigned to it in the Code of Civil Procedure (Act V of 1908)'.

13. Under Section 2(4), Civil P. C., 'District' means the local limits of the jurisdiction of a principal Civil Court of Original Jurisdiction (hereinafter called a 'District Court').

14. It is therefore clear that if the present, suit is either for the infringement of a Trade, Mark or otherwise relates to any right in a Trade Mark it could not have been instituted in a court inferior to that of the District Judged.

15. It is argued on behalf of the plaintiff that the expression 'right in a Trade Mark' as appearing in Section 73, Trade Marks Act relates to 'rights of ownership' and not those as a registered user. There is no bar to a suit being filed in any court of competent jurisdiction under the Code of Civil Procedure even if such a Court be not the Court of the District Judge if the suit is one for enforcement of the right to use as contra-distinguished from the enforcement of the right of proprietorship.

16. When a, question of jurisdiction is raised as a preliminary issue and before evidence had been adduced falls to be decided on the plaint filed reference need be made to the case as it appears from the plaint. The case of the plaintiff was that the plaintiff Company had been using and exploiting the trade mark 'Sakti' since 1936 i.e. from before She passing of the Trade Marks Act of 1940. After registration of the proprietary right in favour of the pro forma defendant of the Trade Mark after the Act had been passed the plaintiff applied for registration as Registered User and the said proceeding was pending before the Registrar of Trade Marks. Reference was made to certain transactions as between defendant No. 1 and defendant No. 2 and to proceedings in execution initiated by the Southern Bank Ltd. against the pro forma defendant. The present plaintiff filed an objection under Order 21 Rule 58, Civil P. C, when defendant No, 1 as the assignee decree-holder had a sale proclamation issued wherein a sign board of the plaintiff and the Trade Mark 'Sakti' with the good-will and some other properties were advertised for sale. The executing court allowed the plaintiff's claim in respect of the sign board but disallowed its claim so far as the Trade Mark was concerned. Being aggrieved by the said summary decision the plaintiff instituted the Present suit for setting aside the summary order referred to above. The plaintiff accordingly prayed for

(a) 'a decree declaring that the trade mark 'Sakti' is being used and exploited by the plaintiff since 1936 and that it is not liable to be sold in execution of the decree in question against the pro forma defendant at least till the disposal of the application of the plaintiff before the Registrar of Trade Marks, for registration as a user and for setting aside the summary order dated 31-7-1952.

(b) Injunction restraining defendant No. 1 from executing the decree in Money Execution Case No. 217 of 1951 of the local second court of the Munsif'.

17. The present suit is not prima facie a suit for the infringement of the Trade Mark. The question is whether the present suit is covered by the expression 'or otherwise relating to any right in Trade Mark' as appearing in Section 73, Trade Marks Act.

18. In Ramkrishna Bhakat v. Firm Haji Jo-nabally and Abdul Jalil AIR 1948 Cal 321 (B) Section 73 of the Trade Marks Act came up for consideration. In that case in the plaint nowhere was stated

'that the plaintiff had got any trade mark Of a particular variety and wants any declaration of title or relief in regard to the particular trade mark. Their case definitely is that they were selling biris manufactured by them under a particular trade name and under a distinctive label. The defendants, it is stated, are counterfeiting the name and the label and are passing off their goods as the goods of the plaintiff.'

19. The plaintiff's action was held to be a common law action of 'passing off' which existed independently of the provisions of the Trade Marks Act, 1940 and had been expressly safeguarded by Section 20(2) of the said Act. Consequently the Subordinate Judge, in whose court the plaint had been filed, was found to have jurisdiction to entertain and dispose of the suit.

20. The case now before us is not one for passing off and is not founded on rights independent of the provisions contained in the Trade Marks Act. We have to consider whether this suit 'otherwise relates to any right in a trade mark'.

21. It had been suggested at one stage on behalf of the plaintiff that the use of the word.. 'otherwise' under Section 73 after the words 'no suit for the infringement of a trade mark' should be interpreted as controlled by the rule of ejusdem generis. This cannot be sustained.

22. Although Pollock B. in Monck v. Hilton (1877) 46 LJMC 163 (C) had observed that speaking generally 'otherwise' when following the enumeration should receive an ejusdom generis interpretation i.e. in the same way as the other and 'the principle upon which this rule is founded is thoroughly established' a contrary view was expressed by Russell C. J. in Sutton v. London Chatham and Dover Railways (1896) '12 TLR 425 (D) 'that the doctrine of ejusdem generis does not apply to the words 'or otherwise'.

23. Jessel M, R. had also observed in Lowther v. Bentinck, (1874) 19 Eq. 166 (E) that

'When I find the words 'or otherwise' I am bound to say I do not know what is ejusdem generis'.

24. It is not necessary to refer to the various conflicting decisions as many of those will be found collected by Cave J. in Ex parte, Tidswell, (1887) 56 LJ QB 548 (F). After analysing the' use of the word 'otherwise' in several of the sections of the Married Women's Property Act,' 1882 45 and 46 Vict. C. 75.it was held that the principle of ejusdem generis would not be attracted.

25. In a recent decision the Judicial Committee observed that for applying the rule of ejusdem generis there must be more than one specie-mentioned to construe the genus; the mention of a single specie for example water rates does not construe the genus (United Towns Electric Co. Ltd. v. Attorney General for Newfoundland, 1939-1 AII' ER 423 (428) (G), Roe v. Hemmings, 1951-1 KB 676 (H).

26. In Section 73, Trade Marks Act, only one particular specie is mentioned and that is to a suit for infringement of a trade mark. The words which follow that one particular specie cannot attract the rule of ejusdem generis and such words are to be taken in the wider sense.

27. Suits of what nature are to be considered-to be suits relating to any right in a Trade Mark?

28. What was the intention of the legislature in using the expression 'relating to a right'. While dealing with the implication of the expression 'relating to the execution of the decree' appearing in Section 47, Civil P. C., Pigot J. had observed in Haragobind Das v. Issuri Dasi, ILR 15 Cal 187 at p. 193 (I) that the words were very vague and sweeping ones

'but the question arising here is certain in respect of the furtherance of. or hindrance to, or the manner of carrying out, the execution of the decree, for the foundation of the plaintiffs' claim is the execution of the decree.'

29. In Srinivas Prosad Singh v. Kesho pro-sad Singh 14 Cal LJ 489 (J) the comprehensiveness of the expression was accepted and the order was taken to be comprehensive enough to include an order relating to the stay of execution thereof though

'it is manifest that every order, may in course of proceedings Or execution of a decree, cannot be treated as involving the determination of a question relating to the execution of a decree'. If such a view were maintained every order in course of an execution proceedings would be a decree, and appealable as such; in other words, at every stage, the execution proceedings would be liable to be arrested by an appeal'. (See also Behary Lal v. Kedar Nath Mullick, ILR 18 Cal 469 (K) ).

30. Reference may also be made to the effect given to the expression 'relating to' in other statutory provisions. In the expression 'agreement relating to the sale of goods, wares or merchandise' appearing in exemption 2, Stamp Act 1891, 54 & 55 Victoria c. 39 the 'agreement' Was taken to include an indemnity to a broker against loss on re-sale of the goods purchased (Curry v. Edinsor, (1790) 3 TR 523 (L)) or a memorandum of advance on goods handed over for immediate sale (Southgate v. Bonn (1846) 16 LJ Ex 50 (M)), or a guarantee for price of goods to be applied to a third person (Chatfield v. Cox, (1852) 18 QB 321 (N)). But the exemption does not extend to a documents in which the sale 01 goods is a secondary matter (Smith V. Cator, (1819) 2 B & Aid 778 (O)) and does not cover an ordinary guarantee for debt for that involves no sale of goods (Glover v. Halkett (1857) 26 LJ Ex 416 (P) ), nor does it exonerate & document which on other grounds requires a stamp (Horsfall v. Hey, (1848) 2 Ex 778 (Q)).

31. While discussing the implication of the clause 'information relating to the goods, or to the purchase ......:.... thereof' appearing in Section 30(3) of the Finance Act 1946 (9 and 10 Geo VI e. 64 ) it was observed in Commissioners of Customs and Excise v. Ingram (1949) 2 KB 103 (R) that

'It is not easy to see why the phrase should not mean and include information not only as to the sharacter of goods but also as to what has happened to them.'

32. We now proceed to consider to determine the sense in which the expression 'right in a trade mark' has been used in Section 73, Trade Marks Act. The word 'right' when used as a noun and in the singular signifies a just claim that which may be lawfully claimed of any other person that which the law directs, an enforceable claim or tills to any special matter whatsoever.

33. The extent or nature of the claim as in certain places has been considered to be an absolute right but it is generally accepted that when the claim is in respect of a share of a particular property or the claim is limited to a particular aspect that also is considered to be a right. Even when a person has a claim to possess though he is not entitled to full ownership the claim of possession is in recognition of a right in the possessor; ownership may vest or be claimed by some other person.

34. It is therefore patent that the right in a Trade Mark referred to in Section 73, Trade Marks Act, connotes either the full right of ownership or the right to user thereof though the person claiming may not be the proprietor or owner of the Trade Mark. In the present case before us, the plaintiff claims that as he has started proseedings for having his name registered under 3. 39 at the Act whereunder

'A person other than the proprietor of a trade mark may be registered as a registered user thereof in respect of all or any of the goods in respect of which it is registered (otherwise than as a defensive trade mark) and either With or without conditions or restrictions.'

He is entitled to have an order against the alleged transferee from one who claims to be the alleged proprietor of the trade mark GO as not to affect his claims for the use of the Trade Mark.

35. The Trade Marks Act 1940 brought into existence as did the Trade Marks Act 1938 (1 and 2 Geo. VI c. 22) a new class of person viz: 'registered user' who may be permitted to use a trade mark independently of the proprietor (see Section 28(1) of the English Act), There are certain restrictions under which a person may apply to or have his name registered as a registered user.

36. The claim put forward by the plaintiff cannot but be deemed to be the enforcement of a right which he claims to have in the Trade Mark and the suit is one relating to a right in a trade mark.

37. The conflicting claims are as between an alleged assignee from the registered owner and another who claims to have rights as an applicant to be registered as a registered user of the said trade mark. Such a suit clearly comes under the restrictive clause in Section 73 of the Trade Marks Act.

38. We should however indicate that in view of the use of words 'relating to' before 'any right in trade mark' although a wider meaning is taken to connote it is not the intention of the Legislature to bar out every suit in which Trade Mark as a property is included.

39. Take for instance if in a suit for partition amongst co-sharers the ownership in certain registered trade mark is one of the properties jointly owned by all of them and is included in the schedule to the plaint that is not a suit which is to be taken to be outside the Jurisdiction of Courts other than the Court of the District Judge.

40. The expression 'suit * * * relating to any right in a trade mark' refers to a suit in which the dispute, is amongst contesting parties about claim to trade mark either as a proprietor or as a user which is questioned by one as against the other, which is as it was held that in the case Of a passing off (AIR 1948 Cal 321 (B)) Section 73 of the Trade Marks Act does not oust the Jurisdiction of the ordinary Court, (sic) So also in a suit for partition or for accounts the suit may be brought in the Court which has Jurisdiction under the Code of Civil Procedure.

41. In this view we must hold that the suit riled in the Court of the Subordinate Judge was incompetent. The result therefore is that the application in revision is allowed, the order passed, by the Subordinate Judge on 2-7-1953 is set aside and the case remitted to the Court of the Subordinate Judge with a direction that the plaint be returned to the plaintiff for filing it in the proper Court.

42. The petitioner before this Court will be entitled to the costs of this Court, hearing fee being assessed at Rs. 85/-.

43. The appeal is dismissed without costs as not maintainable.

44. Until the records go back to the Lower Court and that Court directs the plaint to be taken back the order for injunction issued by that Court will remain in force.

Renupada Mukherjee, J.

45. I agree.


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