Sa & Anr Vs. Eupharma Laboratories Ltd. & Anr  Insc 110 (20 February 2004)
Pal & P. Venkatarama Reddi.
out of SLP(C) No. 3551-3552 of 2003) RUMA PAL, J.
issue in these appeals is whether the High Court of Delhi has the jurisdiction
under Section 62(2) of the Copyright Act, 1957 to entertain a suit filed by the
appellants and one other.
suit was filed by the appellants and M/s Shreechem Laboratories against the two
respondents, the first of whom is the Director of the respondent No. 2.
to the plaint, the appellant No. 1 manufactures a medicine for the treatment of
malaria. The medicine is sold under the trademark 'Maloxine' in packaging
having a distinctive get up, lay-out and design. The appellant No. 1 has
claimed to be the owner of the copyright in the trademark 'Maloxine'. The
plaint also contains a description of the distinctive carton in which the
medicine is sold.
to the appellants, the appellant No. 1 had entered into a contract with
appellant No. 2 by which the appellant No. 2 was authorised to manufacture
tablets under the appellants' trade mark for sale in the rest of the world
apart from Nigeria. As far as Nigeria is concerned, the appellant No. 1
had entered into a contract with M/s Shreechem Laboratories for manufacturing 'Maloxine'.
These agreements have been described as agency/ manufacturing agreements. It is
also averred in the plaint that the appellant No. 1 had entered into an earlier
agreement with the second respondent but that agreement was terminated for
reasons which are unnecessary to be considered by us in these proceedings. What
is of importance is that respondent No. 2 wrote two letters to the second
appellant and to Shreechem Laboratories dated 5th November 1993 and 19th May
1998, by which the respondents called upon the appellant No.2 and Shreechem to
cease and desist from manufacturing pharmaceutical preparations under the
meanwhile, in 1996, the first appellant had instituted a civil suit against one
M/s Moore Associates Limited before the Federal High Court of Nigeria in which
it was claimed that M/s Moore Associates Ltd. and the second respondent were
wrongly passing-off its products under the first appellant's trade mark 'Maloxine'.
That suit is still pending.
present suit, the appellants have claimed that the respondent No. 2, despite
termination of the manufacturing arrangement with the first appellant, had
continued to manufacture 'Maloxine' tablets and was exporting the same, inter-alia,
to M/s Moore Associates Ltd.
also claimed that the respondents were considering launching the product 'Maloxine'
in the Indian market. In the circumstances, the prayers in the suit were,
inter-alia, for an injunction to restrain the respondents from passing- off the
trademark 'Maloxine' or adopting the distinctive get up of the 'Maloxine'
carton; restraining the infringement of the copyright of the first appellant in
the artistic work comprised in the 'Maloxine' carton; for delivery up of the
infringing goods and for accounts on account of the use of the impugned mark.
The jurisdiction of the Delhi High Court was sought to be attracted on the
copyright of the plaintiffs (appellants) in the 'Maloxine' carton was being
infringed by the respondents;
plaintiffs (appellants) carry on business in Delhi and one of them has a registered office in New Delhi. It was also stated that the
defendants carry on business for profit in New Delhi within the jurisdiction of the High Court.
interlocutory application filed by the appellants in the suit, an ex-parte
interim order was passed in favour of the appellants on 26th October 1998 by a learned Single Judge of the
Delhi High Court. The interim order was confirmed on 28th September 1999. It does not appear from the
judgment that the respondents had at all raised the issue regarding lack of
territorial jurisdiction before the Single Judge. Although a prima facie view
has been expressed that there was no doubt about the territorial jurisdiction
of the Court but this was not with reference to any argument raised by the
respondents. The operative portion of the order of the learned Single Judge is
the circumstances mentioned above, and in order to protect the interests of
both the parties, it is felt that the following arrangement may be made in
terms of Ciba Geigy Ltd. v. Sun Pharmaceutical Industries, 1997 PTC (17) 364:
The defendants may use the term MALOXINE but in a colour combination different from
the colour combination approved by plaintiff No. 1 in 1991, subject to the
condition that they will boldly mention the name of defendant No. 2 along with
address on all the packaging and promotional material.
The defendants are hereby restrained from using the deceptively similar colour
combination on their cartons, packages and promotional material.
Defendants shall file an undertaking to the following effects:
they shall keep proper accounts, file quarterly statements of manufacture, sale
and stock of the goods in their factory in court every quarter, and
in case the plaintiff succeeds, they shall pay without demur 10% of the sale
proceeds by way of estimated loss of profit to the plaintiff, as damages within
three months from the date of decision by this court." Both the
respondents and the appellants preferred appeals from this decision.
respondents did not question the territorial jurisdiction of the High Court in
its Memorandum of Appeal. Nevertheless, the Division Bench not only allowed the
respondents' appeal but also directed the appellants' plaint to be returned to
the appellants for presentation before the appropriate Court solely on the
ground that the Delhi High Court had no territorial jurisdiction to entertain
the suit. Consequently the appellants' appeal was also dismissed. These orders
are now impugned before us.
find that there was neither an application for rejection of the plaint nor for
return of the plaint under Order VII Rules 11 and 10 of the Code of Civil
Procedure, 1908, filed by the respondents and the order of the Division Bench
directing return of the plaint was wholly outside the scope of the pending
appeals. In fact, the issue relating to territorial jurisdiction of the High
Court to entertain the appellants' suit was not even raised in the Memorandum
when an objection to jurisdiction is raised by way of demurrer and not at the
trial, the objection must proceed on the basis that the facts as pleaded by the
initiator of the impugned proceedings are true. The submission in order to
succeed must show that granted those facts the Court does not have jurisdiction
as a matter of law. In rejecting a plaint on the ground of jurisdiction, the
Division Bench should have taken the allegations contained in the plaint to be
correct. However, the Division Bench examined the written statement filed by
the respondents in which it was claimed that the goods were not at all sold
within the territorial jurisdiction of the Delhi High Court and also that the
respondent No. 2 did not carry on business within the jurisdiction of the Delhi
recorded the appellants' objections to these factual statements by the
respondents, surprisingly the Division Bench said:
the goods are being traded outside India and not being traded in India and as such there is no question of infringement of trademark within
the territorial limits of any Court in India what to of Delhi".
from the ex-facie contradiction of this statement in the judgment itself, the
Division Bench erred in going beyond the statements contained in the plaint.
Division Bench has also erred in its construction of Section 62 of the
Copyright Act, 1957. Section 62 reads:
Jurisdiction of court over matters arising under this Chapter.
Every suit or other civil proceeding arising under this Chapter in respect of
the infringement of copyright in any work or the infringement of any other
right conferred by this Act shall be instituted in the district court having
For the purpose of sub-section (1), a "district court having
jurisdiction" shall notwithstanding anything contained in the Code of
Civil Procedure, 1908 (5 of 1908), or any other law for the time being in
force, include a district court within the local limits of whose jurisdiction,
at the time of the institution of the suit or other proceeding, the person
instituting the suit or other proceeding or, where there are more than one such
persons, any of them actually and voluntarily resides or carries on business or
personal works for gain." We would like to emphasise the word
"include". This shows that the jurisdiction for the purposes of
Section 62 is wider than that of the Court as prescribed under the Code of
Civil Procedure, 1908. The relevant extract of the report of the Joint
Committee published in the Gazette of India dated 23-11-1956 which preceded and laid the foundation for Section 62(2)
the opinion of the Committee many authors are deterred from instituting
infringement proceedings because the court in which such proceedings are to be
instituted is situated at a considerable distance from the place of their
ordinary residence. The Committee feels that this impediment should be removed
and the new sub-clause (2) accordingly provides that infringement proceedings
may be instituted in the district court within the local limits of whose
jurisdiction the person instituting the proceedings ordinarily resides, carries
on business etc." It is, therefore, clear that the object and reason for
the introduction of sub-section (2) of Section 62 was not to restrict the
owners of the copyright to exercise their rights but to remove any impediment
from their doing so. Section 62(2) cannot be read as limiting the jurisdiction
of the District Court only to cases where the person instituting the suit or
other proceeding, or where there are more than one such persons, any of them
actually and voluntarily resides or carries on business or presently works for
gain. It prescribes an additional ground for attracting the jurisdiction of a
Court over and above the 'normal' grounds as laid down in Section 20 of the
if the jurisdiction of the Court were restricted in the manner construed by the
Division Bench, it is evident not only from the cause title but also from the
body of the plaint that the appellant No. 2 carries on business within the
jurisdiction of the Delhi High Court. The appellant No. 2 is certainly "a
person instituting the suit". The Division Bench went beyond the express
words of the statute and negatived the jurisdiction of the Court because it
found that the appellant No. 2 had not claimed ownership of the copyright of
the trademark infringement of which was claimed in the suit. The appellant No.
2 may not be entitled to the relief claimed in the suit but that is no reason
for holding that it was not a person who had instituted the suit within the
meaning of Section 62(2) of the Act.
the appellants' plaint said that the 'cease and desist' notice was sent to the
appellant No. 2 at its office in New Delhi and in that notice it was alleged
that the appellant No. 2 had infringed the copyright of the respondent No. 2 to
the trademark 'Maloxine'. Now a cease and desist notice means that the
recipient is alleged to have infringed the rights of the sender of the notice
to the copyright and as a result of such alleged infringement the recipient is
liable to institution of civil and/or criminal proceedings. It is a threat. The
plaint says that this threat was received within the jurisdiction of the High
Court a fact which was sufficient to invoke the jurisdiction of that Court.
respondents' reliance on the decision of this Court in Oil and Natural Gas
Commission V. Utpal Kumar Basu and Ors. 1994 (1) Supp SCR 252 and Union of
India and Others V. Advani Exports Ltd. and Another 2002 (1) SCC 567 is
inapposite. Those decisions held that the service of a mere notice may not be
sufficient to found jurisdiction unless such notice formed an integral part of
the cause of action. But a 'cease and desist' notice in a copyright action
cannot, particularly in view of Section 60 of the Act, be termed to be a 'mere'
notice. Such a threat may give rise to the right to institute a suit to counter
such threat and to ask for relief on the ground that the alleged infringement
to which the threat related was not in fact an infringement of any legal right
of the person making such threat.
have seen, the Division Bench disposed of the appeals solely on the issue of
jurisdiction. Its conclusion on the issue is insupportable. The impugned
decision is accordingly set aside and the matter is remanded back to the
Division Bench for disposal of the appeals filed by the respondents and
appellants on merits. Pending the decision of the Division Bench, the order
passed by the learned Single Judge which we have quoted earlier will continue.
appeals are accordingly allowed with costs.