Dhodha House Vs. S.K. Maingi  INSC 695 (15 December 2005)
Singh & S.B. Sinha
W I T H
CIVIL APPEAL NO. 16 of 1999 S.B. SINHA, J :
jurisdiction of a civil court to determine a lis as regard infringement of the
provision of the Copyright Act, 1957 (for short "the 1957 Act") and
the Trade and Merchandise Marks Act, 1958 (for short "the 1958 Act")
is in question in these appeals.
notice the fact of the matters separately.
Appeal No. 6248 of 1997 :
Appellant herein filed a suit against the Respondent to protect his copyright,
trademarks and common law rights as regard his art work/ label/ trade mark and
wrapper contained in Annexure A to the memo of appeal which the Respondent had
allegedly infringed by using the impugned trade mark/ art work/ label/ wrapper
contained in Annexure B thereto.
to the Appellant, the said art work/ label/ trade mark/ wrapper infringes the
Appellant's trade mark registration 'Dhodha House' under Registration No.
277714-B in class 30 under the 1958 Act, as also copyright registered under the
1957 Act being registration No. A-5117 and A-5330 of 1970. The Appellant also
claims it to be a prior user of the said trade mark and name and enjoys
goodwill as well as reputation in respect thereof since 1960.
It is not
in dispute that the Appellant carries on business of sweet meats in the
district of Ghaziabad whereas the Respondent carries on the similar business in
the name and style of M/s. V.R.K. Todha Sweet House at Kotkapura in the
district of Faridkot. The Appellant herein filed a suit before the District
Judge, Ghaziabad wherein it also prayed for an order of injunction. The learned
1st Addl. District Judge, Ghaziabad by an order dated 17.1.1992 passed an order
of injunction against the Respondent in the following terms:
5-C is allowed to the extent that the OP/defendants, their servants, dealers,
stockists, distributors, assigns, representatives and agents, are restrained
during the pendency of the suit, from infringing the plaintiffs copyright
existing in the art work/ label and wrapper, duly registered at Nos. A- 5117/70
and A-5330/70 under the Indian Copyright Act, 1957 by using these in the art work involved in
defendant's labels, and wrappers entitled Manni's Todha Sweet or any other
labels and wrappers, confusingly similar to the aforementioned art work, label
and wrapper of the plaintiff. They are further restrained from passing off
their goods and business as and for the business and goods of the plaintiff
under the impugned trade mark Todha with prefix Maingi's or its labels and
wrapper which are identical with deceptively similar to the trade mark Dhodha
with prefix Royal and its labels and wrappers being used by the plaintiff in
his distinctive get- up, make-up, colour scheme, combination and manner of
writing." The Respondent preferred an appeal thereagainst before the High
Court of Judicature at Allahabad which was marked as First Appeal From Order
No. 401 of 1992.
order dated 5.5.1997, the High Court inter alia held that the Civil Court had
no territorial jurisdiction to try the suit. The High Court was further of the
opinion that 'Dodha' is a name of a variety of sweet and it is not a special
product which is manufactured by the plaintiff alone.
Appellant is, thus, before us.
Appeal No. 16 of 1999 :
defendant is the Appellant herein. Both the plaintiff and Appellants carry on
business in diesel engines at Rajkot in the State of Gujarat. A suit on the
original side of the Delhi High Court was filed inter alia for perpetual
injunction restraining infringement of trade mark, copyright, trading style,
passing off and for rendition of accounts. It has been averred in the plaint
that the plaintiff has registered a trade mark 'Field Marshal'. Its label
'Field Marshal' is said to be registered also under the Copyright Act, 1957 and it
had been printing/ publishing the said purported artistic work titled 'Field
Marshal' in all its trade literatures, pamphlets, stickers, calendars, diaries,
etc. as also on the goods manufactured.
to the plaintiff, the First Defendant herein has been registered under the
Companies Act and it proposed to start a business in the trading style of
'Field Marshal' for the business of the goods of same kind and description
wherefor caution notice had been issued by it. It also sent letter to the
Registrar of Companies objecting to the incorporation of the said company
containing the word 'Field Marshal' or identical or deceptively similar
thereto. It is alleged that goods manufactured by the Appellants with the
plaintiff's trademarks are being sold in Delhi.
alleged cause of action for filing the said suit has been averred in paragraph
30 which reads as under:
the goods of the parties bearing the impugned trademarks are also sold in the
Union Territory of Delhi. The Trade Marks Journals No. 823 dt. 16.9.83 and No.
876 dt. 1.12.85 and Journal No. 933 dt. 16.4.1988 were published in India by
the Trade Marks Registry in respect of applications of the defendants for
registration of the impugned trademarks, including the Union Territory of
Delhi. Therefore, this Hon'ble Court has jurisdiction to entertain and try the
present suit. Moreover, the jurisdiction of this Hon'ble Court is also
attracted in view of Section 62(2) of the Copyright Act."
The value of the suit for the purposes of court fee and jurisdiction was fixed
at Rs. 200/- each in relation to reliefs (i), (ii), (iii), (iv) and (v).
application for injunction was filed by the First Respondent and by an order
dated 28th September, 1995, the said application was rejected inter alia on the
ground that the plaintiff has failed to prima facie show that the Delhi High
Court had the territorial as also the pecuniary jurisdiction in relation
thereto. The Plaintiff-Respondent No. 1 preferred an intra-court appeal before
the Division Bench of the said Court which was marked as FAO (OS) 270 of 1995.
By reason of the impugned judgment dated 10th March, 1998, the said appeal was
the Division Bench of the High Court, three contentions as regard the
jurisdiction of the Delhi High Court were raised; firstly, under Section 62 of
the Copyright Act, 1957, secondly, in view of the fact
that the defendants had sought for registration of trade mark at Delhi, and
thirdly, the defendants are selling goods under the impugned trade mark at
Delhi and, thus, plaintiff's right thereover had been violated at Delhi.
Division Bench negatived the contention raised on behalf of the Appellants
herein that as both the parties are resident of and working for gain at Rajkot
and no sale having been effected by them within the territorial jurisdiction of
the court, the Delhi High Court had no territorial jurisdiction to entertain
first contention, the Division Bench was of the opinion that a composite suit
based on infringement of trade mark, copyright, passing off and for rendition
of accounts of profits as also injunction having been filed, the Delhi High
Court had the territorial jurisdiction to entertain the suit.
second contention, the Division Bench relying on or on the Jawahar Engineering
Pvt. Ltd. [AIR 1984 Delhi 166] came to the opinion that a plaintiff can even
seek a restraint order against the threat that is still to materialize once it
comes to learn that the defendants had applied for registration of trade marks
at Delhi wherefor they can pray for injunction to prevent any sale of the
infringing product in Delhi.
did not go into the third question.
judgments before us, thus, have taken contrary views.
action, as is well-settled, is a bundle of facts which are necessary to be
proved in a given case. Cause of action, it is trite, if arises within the
jurisdiction of the court concerned empowers the court to entertain the matter.
Determination of territorial jurisdiction of a civil court is governed by the
provisions of the Code of Civil Procedure (for short, 'the Code'). Section 16
of the Code provides for institution of the suits where subject-matter of the
suit is situate. Section 17 of the Code refers to the suits for immovable
property within jurisdiction of different courts. Section 18 refers to place of
institution of a suit where local limits of jurisdiction of courts are
uncertain; whereas Section 19 of the Code contemplates suits for compensation
for wrongs to person or movables, Section 20 of the Code, wherewith we are
concerned in this case, provides that the suits which do not come within the
purview of Sections 16 to 19 of the Code are to be instituted where the
defendants reside or cause of action arises in the following terms :
Other suits to be instituted where defendants reside or cause of action
arises.--Subject to the limitations aforesaid, every suit shall be instituted
in a Court within the local limits of whose jurisdiction (a) the defendant, or
each of the defendants where there are more than one, at the time of the
commencement of the suit, actually and voluntarily resides, or carries on
business, or personally works for gain; or (b) any of the defendants, where
there are more than one, at the time of the commencement of the suit, actually
and voluntarily resides, or carries on business, or personally works for gain,
provided that in such case either the leave of the Court is given, or the
defendants who do not reside, or carry or business, or personally work for
gain, as aforesaid, acquiesce in such institution ; or (c) the cause of action,
wholly or in part, arises.
corporation shall be deemed to carry on business at its sole or principal
office in [India] or, in respect of any cause of action arising at any place
where it has also a subordinate office, at such place." The jurisdiction
of the District Court to determine a lis under the 1957 Act as also the 1958
Act must, thus, be instituted where the whole or a part of cause of action
arises. Sub-section (2) of Section 62 of the 1957 Act provides for an
additional forum therefor in the following terms :
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
personally works for gain." Admittedly, no such additional forum had been
created in terms of the provisions of the 1958 Act.
objects and reasons for engrafting the said provision show that the same was
done to enable the authors to file a suit for violation of the 1957 Act at the
place where they reside. Submission made at the Bar, however, is that there may
be cases which give a composite cause of action for initiating action both
under the 1957 Act as also under the 1958 Act.
in this behalf, has been placed on a definition of "mark" as
contained in Section 2(j) of the 1958 Act, to urge that artistic work within
the meaning of the 1957 Act is also a 'mark' within the meaning thereof and,
thus, different causes of action arising under both the Acts can be combined.
furthermore, has been made to Section 105 of the 1958 Act to show that
reclassification in respect of existing registration is permissible.
not concerned in this case with the maintainability of a composite suit both
under the 1957 Act and the 1958 Act. Indisputably, if such a situation arises,
the same would be permissible; but the same may not be relevant for the purpose
of determining the question of a forum where such suit can be instituted. Sub-section
(2) of Section 62 of the 1957 Act provides for a non-obstante clause conferring
jurisdiction upon the district court within the local limits of whose
jurisdiction, at the time of the institution of the suit or other proceeding,
the persons instituting the suit or other proceedings, have been residing. In
terms of sub-section (1) of Section 62, suit can be instituted and the
proceedings can be initiated in respect of mattes arising under the said
chapter for infringement of the copyright in any work or the infringement of
any other right conferred thereunder. It does not confer jurisdiction upon a
district court where the plaintiff resides,.
cause of action arises under the 1958 Act.
Rule 3 of the Code provides that the plaintiff may unite in the same suit
several causes of action against the same defendant, or the same defendants
jointly. The said order contemplates uniting of several causes of action in the
same suit. By necessary implication, a cause of action for infringement of
Copyright and a cause of action for infringement of Trade Mark or a cause of
action of passing off would be different. Even if one cause of action has no
nexus with another, indisputably Order II Rule 3 may apply. However, by reason
of application of Order II Rule 3 of the Code ipso facto would not confer
jurisdiction upon a court which had none so as to enable it to consider
infringement of trade mark under the 1957 Act as also the 1958 Act.
trite law that a judgment and order passed by the court having no territorial
jurisdiction would be nullity.
Singh and Others vs. Chaman Paswan and Others [AIR 1954 SC 340], this Court
is a fundamental principle well-established that a decree passed by a court
without jurisdiction is a nullity, and that its invalidity could be set up
whenever and wherever it is sought to be enforced or relied upon, even at the
stage of execution and even in collateral proceedings. A defect of
jurisdiction, whether it is pecuniary or territorial, or whether it is in
respect of the subject-matter of the action, strikes at the very authority of
the court to pass any decree, and such a defect cannot be cured even by consent
of parties A judgment or order passed by a court lacking territorial
jurisdiction, thus, would be coram non judice. Thus, if a district court, where
the plaintiff resides but where no cause of action arose otherwise, adjudicates
a matter relating to infringement of trade mark under the 1958 Act, its
judgment would be a nullity.
Bansal, the learned counsel appearing for the Appellants, however, placed
strong reliance on a decision of the Delhi High Court in M/s Jawahar
Engineering Company and Others, Ghaziabad v. M/s Jawahar Engineers Pvt. Ltd.,
Sri Rampur, Dist. Ahmednagar, Maharashtra [1983 PTC 207], wherein the question
involved for determination was as to whether the plaint filed therein should be
returned in terms of Order VII Rule 10 of the Code. In that case, the plaintiff
had a registered trade mark 'Javahar' in respect of diesel oil engines whereas
the defendant had applied for registration of the trade mark 'Jawahar' in
respect of diesel oil engines for the States of Uttar Pradesh, Punjab, Haryana,
Bihar, Rajasthan and the Union Territories of Delhi and Chandigarh.
it was held that as diesel engines were not sold in Delhi, no cause of action
arose within the jurisdiction of Delhi High Court; nor the advertisement
published in a journal "Parwez" published from Ludhiana would confer
such jurisdiction. But it was opined that having regard to the fact that an
advertisement had appeared in the Trade Marks Journal as regard application for
registration of the trade mark of the defendant therein, the Delhi High Court
would have jurisdiction in the matter.
Patent Appeal was preferred thereagainst, wherein the Division Bench of the
High Court held :
20 of the Code of Civil Procedure shows that a suit like the present can be
filed wherever the cause of action wholly or partly arises. The plaintiff has
prayed for an injunction regarding a threatened breach of a registered trade
mark. The learned single Judge held that the Delhi Court does not have
jurisdiction on the ground of any sale having been made in Delhi, but does have
jurisdiction on account of the advertisement having appeared in the Trade Marks
Journal. The real point which gives the Court jurisdiction is not the place
where the advertisement has appeared, but the fact that the trade mark is
sought for sale in Delhi amongst other places. Furthermore, when an injunction
is sought, it is not necessary that the threat should have become a reality
before the injunction and it can even be sought for a threat that is still to
materialize." The said decision has no application in the instant case for
more than one reason. For the purpose of registration of a trade mark, an
application must be filed in the branch office of the Registrar of Trade Marks.
It is not in dispute that under Section 5(3) of the 1958 Act, the Central
Government has issued a notification in the official gazette defining the
territorial limits within which an office of the Trade Marks Registry may
exercise its functions. The office of the Trade Marks Registry at New Delhi
exercises jurisdiction over the States of Haryana, Himachal Pradesh, Jammu
& Kashmir, Punjab, Rajasthan and Uttar Pradesh and the Union Territory of
Chandigarh and National Capital Territory of Delhi. Whereas in M/s. Dhodha
House v. S.K. Maingi, no such application has been filed, admittedly in M/s
Patel Field Marshal Industries & Ors. v. M/s P.M. Diesels Ltd, the Delhi
office has no jurisdiction as parties are residents of Rajkot and an
application was filed by the Appellant for registration of its trade mark at
Bombay. If an objection is to be filed, the same has to be filed at Bombay.
advertisement by itself in a journal or a paper would not confer jurisdiction
upon a court, as would be evident from the following observations of this Court
in Oil and Natural Gas Commission v. Utpal Kumar Basu and Others [(1994) 4 SCC
broadly speaking, NICCO claims that a part of the cause of action arose within
the jurisdiction of the Calcutta High Court because it became aware of the
advertisement in Calcutta, it submitted its bid or tender from Calcutta and
made representations demanding justice from Calcutta on learning about the
rejection of its offer. The advertisement itself mentioned that the tenders
should be submitted to EIL at New Delhi; that those would be scrutinised at New
Delhi and that a final decision whether or not to award the contract to the
tenderer would be taken at New Delhi. Of course, the execution of the contract
work was to be carried out at Hazira in Gujarat. Therefore, merely because it
read the advertisement at Calcutta and submitted the offer from Calcutta and
made representations from Calcutta would not, in our opinion, constitute facts
forming an integral part of the cause of action. So also the mere fact that it
sent fax messages from Calcutta and received a reply thereto at Calcutta would
not constitute an integral part of the cause of action" A cause of action
will arise only when a registered trade mark is used and not when an
application is filed for registration of the trade mark. In a given case, an
application for grant of registration certificate may or may not be allowed.
The person in whose favour, a registration certificate has already been granted
indisputably will have an opportunity to oppose the same by filing an
application before the Registrar, who has the requisite jurisdiction to
determine the said question. In other words, a suit may lie where an
infringement of trade mark or copyright takes place but a cause of action for
filing the suit would not arise within the jurisdiction of the court only
because an advertisement has been issued in the Trade Marks Journal or any
other journal, notifying the factum of filing of such an application.
reliance has also been placed on a recent decision of this Court in Exphar SA
and Another v. Eupharma Laboratories Ltd. and Another [(2004) 3 SCC 688],
wherein it was held :
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.
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 Code." In
that case an allegation of violation of copyright was made, wherefor the
jurisdiction of the court was sought to be attracted stating :
the copyright of the plaintiffs (appellants) in the "Maloxine" carton
was being infringed by the respondents; (b) the 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." No infringement of the trade
mark as such was, thus, in question in that case.
event, the questions which have been raised herein had not been raised in
Exphar SA (supra).
well-settled that a decision is an authority what it decides and not what can
logically be deduced therefrom. [See Bharat Forge Co. Ltd. v. Utam Manohar
Nakate (2005) 2 SCC 489; M.P. Gopalakrishnan Nair and Anr. V. State of Kerala
and Ors. (JT 2005 (4) SC 436) & Haryana State Coop. Land Development Bank
v. Neelam (2005) 5 SCC 91].
Premier Distilleries Pvt. Ltd. v. Shashi Distilleries [2001 PTC 907 (Mad)], a
Division Bench of the Madras High Court in a matter involving a passing off
action, was of the view :
cause of action in a suit for passing off, on the other hand and as already
observed, has nothing at all to do with the location of the Registrar's office
or the factum of applying or not applying for registration. It is wholly
unnecessary for the plaintiff to prove that he had applied for registration.
The fact that the plaintiff had not applied for registration will not improve
the case of the defendant either. Filing of an application for registration of
a trade mark, therefore, does not constitute a part of cause of action where
the suit is one for passing off." It was further observed :
argument advanced that registration if granted would date back to the date of
application and that the plaintiff would have the right to seek amendment of
the plaint to seek relief on the ground of infringement as well, is wholly
irrelevant so far as the cause of action for bringing a suit for passing off is
concerned. While it may be convenient to the plaintiff to institute a suit in a
court where he may later on be able to bring a suit for infringement of the
trade mark, that convenience of the plaintiff is in no way relevant for
deciding as to whether a cause of action for filing a suit for passing off can
be said to have arisen in a place where, the deceit alleged to have been
practised by the defendant had in fact, not been practised within the
jurisdiction of the court in which the suit is brought." The views
expressed therein have our concurrence.
Gold Seal Engineering Product Pvt. Ltd. & Ors. v.
Manufacturers and Ors. AIR 1992 (Bombay) 144] The Allahabad High Court in the
impugned judgment held :
the present case a bare perusal of the plaint would show that the suit is based
upon alleged infringement of registered trade mark or relating to any right in
a registered trade mark or for passing off by the defendant of any trade mark
which is identical with or deceptively similar to the plaintiff's trade mark.
Such a suit cannot be entertained by the Court at Ghaziabad in view of Section
105 of the Trade and Merchandise Marks Act.
fact that the Court may have jurisdiction to entertain the suit with respect to
a cause of action under the Copyright Act under Section 62 of the Act can be of
no avail. I am therefore of the opinion that the Court at Ghaziabad has no
territorial jurisdiction to try the suit." In the event, the averments in
the plaint disclose a cause of action under the Copyright Act,
indisputably, the same would survive but if the cause of action disclosed is
confined only to infringement of Trade and Merchandise Act, or of passing off
an action, the suit would not be maintainable.
High Court in its judgment placed strong reliance upon a judgment of the same
court in Tata Oil Mills Co. Ltd. v. Reward Soap Works [AIR 1983 Delhi 286],
wherein it was held that a composite suit based on infringement of trade mark,
copyright, passing off and for rendition of accounts of profits, seeking to
restrain the defendants from infringing its trade mark and wrapper claiming the
same to be identical with or deceptively similar to the wrapper of the
plaintiff mark, is maintainable, holding :
comparative scope of a copyright and trade mark registration are different,
even though where a design on a wrapper is registered under the Copyright
Act, there is, to an extent, an
overlapping between the two remedies. Some controversy is no doubt possible if
the mere jurisdiction of the Court to entertain an action for infringement of
copyright would also give the court the necessary jurisdiction to deal with the
corresponding infringement of trade mark, where both constitute part of a
composite suit. In view of the undoubted jurisdiction of this court in relation
to the infringement of copyright , court would be justified in granting
injunction of both the trade mark and the copyright at this stage of the
proceedings, particularly, where there is a specific averment in the plaint,
whatever it may be worth, that the plaintiff has been selling the goods, inter
alia, within territorial jurisdiction of this Court." It was held that although
in Dodha House (supra) Tata Oil Mills (supra) was noticed but had not been
distinguished on cogent grounds, the former was not followed.
High Court, as noticed hereinbefore, however, did not advert to the third
contention raised therein saying that the question as to whether the defendants
had been selling its product on a commercial scale at Delhi was a question of
fact and, thus, was required to be properly determined in case evidence is led
by the parties.
question which arises for consideration is as to whether causes of action in
terms of both the 1957 Act and the 1958 Act although may be different, would a
suit be maintainable in a court only because it has the jurisdiction to
entertain the same in terms of Section 62(2) of the 1957 Act? A cause of action
in a given case both under the 1957 Act as also under the 1958 Act may be
overlapping to some extent. The territorial jurisdiction conferred upon the
court in terms of the provisions of the Code of Civil Procedure indisputably
shall apply to a suit or proceeding under the 1957 Act as also the 1958 Act.
Sub-section (2) of Section 62 of the 1957 Act provides for an additional forum.
Such additional forum was provided so as to enable the author to file a suit
who may not otherwise be in a position to file a suit at different places where
his copyright was violated.
Parliament while enacting the Trade and Merchandise Marks Act in the
year 1958 was aware of the provisions of the 1957 Act. It still did not choose
to make a similar provision therein. Such an omission may be held to be a
conscious action on the part of the Parliament. The intention of the Parliament
in not providing for an additional forum in relation to the violation of the
1958 Act is, therefore, clear and explicit. The Parliament while enacting the Trade
Marks Act, 1999 provided for such an additional forum by enacting sub-section
(2) of Section 134 of the Trade Marks Act.
shall not, it is well well-settled, readily presume the existence of jurisdiction
of a court which was not conferred by the statute. For the purpose of
attracting the jurisdiction of a court in terms of sub-section (2) of Section
62 of the 1957 Act, the conditions precedent specified therein must be
fulfilled, the requisites wherefor are that the plaintiff must actually and
voluntarily reside to carry on business or personally work for gain.
House (supra), admittedly the plaintiff-Appellant neither resided at Ghaziabad
nor carried on any business at the place of residence of the respondent. In
Patel Field Marshal (supra), the registered office of the plaintiff-firm was at
Rajkot. Ordinarily, the residence of a company would Das (1994) 4 SCC 225].
expression 'carries on business' and the expression 'personally works for gain'
connotes two different meanings. For the purpose of carrying on business only
presence of a man at a place is not necessary.
business may be carried at a place through an agent or a manager or through a
servant. The owner may not event visit that place. The phrase 'carries on
business" at a certain place would, therefore, mean having an interest in
a business at that place, a voice in what is done, a share in the gain or loss
and some control thereover. The expression is much wider than what the
expression in normal parlance connotes, because of the ambit of a civil action
within the meaning of section 9 of the Code. But it is necessary that the
following three conditions should be satisfied, namely :- "(1) The agent
must be a special agent who attends exclusively to the business of the
principal and carries it on in the name of the principal and not a general
agent who does business for any one that pays him. Thus, a trader in the
mufassil who habitually sends grain to Madras for sale by a firm of commission
agents who have an independent business of selling goods for others on
commission, cannot be said to "carry on business" in Madras. So a
firm in England, carrying on business in the name of A.B. & Co., which
employs upon the usual terms a Bombay firm carrying on business in the name of
C.D. & Co., to act as the English firm's commission agents in Bombay, does
not "carry on business" in Bombay so as to render itself liable to be
sued in Bombay.
person acting as agent must be an agent in the strict sense of the term. The
manager of a joint Hindu family is not an "agent" within the meaning
of this condition.
constitute "carrying on business" at a certain place, the essential
part of the business must take place in that place. Therefore, a retail dealer
who sells goods in the mufassil cannot be said to "carry on business"
in Bombay merely because he has an agent in Bombay to import and purchase his
stock for him. He cannot be said to carry on business in Bombay unless his
agent made sales there on his behalf. A Calcutta firm that employs an agent at
Amritsar who has no power to receive money or to enter into contracts, but only
collects orders which are forwarded to and dealt with in Calcutta, cannot be
said to do business in Amritsar. But a Bombay firm that has a branch office at
Amritsar, where orders are received subject to confirmation by the head office
at Bombay, and where money is paid and disbursed, is carrying on business at
Amritsar and is liable to be sued at Amritsar. Similarly a Life Assurance
Company which carries on business in Bombay and employs an agent at Madras who
acts merely as a Post Office forwarding proposals and sending moneys cannot be
said to do business in Madras. Where a contract of insurance was made at place
A and the insurance amount was also payable there, a suit filed at place B
where the insurance Co. had a branch office was held not maintainable.
plaintiff instituted a suit at Kozhikode alleging that its account with the
defendant Bank at its Calcutta branch had been wrongly debited and it was
claimed that that court had jurisdiction as the defendant had a branch there,
it was held that the existence of a branch was not part of the cause of action
and that the Kozhikode Court therefore had no jurisdiction. But when a company
through incorporated outside India gets itself registered in India and does
business in a place in India through its agent authorized to accept insurance
proposals, and to pay claims, and to do other business incidental to the work
of agency, the company carries on business at the place of business in
India." [See Mulla on the Code of Civil Procedure (Act V of 1908) -
Fifteenth Edition - Volume I, Pages 246-247.] A corporation in view of
Explanation appended to Section 20 of the Code would be deemed to be carrying
on business inter alia at a place where it has a subordinate office. Only
because, its goods are being sold at a place would thus evidently not mean that
it carries a business at that place.
House (supra), the High Court has positively arrived at a finding that the
infringement complained of primarily is that of the 1958 Act and not under Copyright Act.
Field Marshal (supra) again the thrust was on the sale of products and/or
advertisement by the Appellant for registration of trade marks in the Trade
Marks Journal and other local papers. The Division Bench of the High Court, as
has been noticed hereinbefore, did not advert to the issue as to whether the
defendant had been selling its product in Delhi on commercial scale or not. It
is, therefore, not necessary for us also to dilate further on the said
question. We have furthermore noticed hereinbefore that the advertisement
appearing in a journal or newspapers by itself would not confer any
jurisdiction on the court, if it otherwise did not have any.
case, the Delhi High Court could not have invoked its jurisdiction in terms of
the 1957 Act. The primary ground upon which the jurisdiction of the original
side of the High Court was invoked was the violation of the 1958 Act, but in
relation thereto, the provisions of sub- section (2) of Section 62 of the 1957
Act could not be invoked.
was not a resident of Delhi. It has not been able to establish that it carries
on any business at Delhi. For our purpose, the question as to whether the
defendant had been selling its produce in Delhi or not is wholly irrelevant. It
is possible that the goods manufactured by the plaintiff are available in the
market of Delhi or they are sold in Delhi but that by itself would not mean
that the plaintiff carries on any business in Delhi.
It is not
in dispute before us that the application for registration of the trade mark
was to be filed either at Bombay or at Ahmadabad. The objections thereto by the
plaintiff were also required to be filed at the said places. The jurisdiction
of the Delhi court could not have been invoked only on the ground that advertisement
in respect thereof was published in the Trade Marks Journal. Section 62 of the
1957 Act, therefore, will have no application. The plaintiff has no branch
office at Delhi. Its manufacturing facilities are not available at Delhi. Both
its trade mark and copyright are also not registered at Delhi.
attention has been drawn to the provisions of Section 45 of the Trade
Marks Act; sub-section 2(m) whereof shows that the marks includes a device,
brand, brand, heading , label, ticket, name, signature, word, letter, numeral,
shape of goods, packaging or combination of colours or any combination thereof.
It may be so that in a given case if such label is registered, a violation
thereof may give rise to cause of action under the said Act; but only because in
a given case, the activities on the part of the defendant may give rise to a
cause of action both under the 1958 Act as also under the 1957 Act, the same
would not mean, irrespective of the nature of violation, the plaintiff would be
entitled to invoke the jurisdiction of the court in terms of sub-section (2) of
Section 62 of the 1957 Act.
purpose of invoking the jurisdiction of a court only because two causes of
action joined in terms of the provisions of the Code of Civil Procedure, the
same would not mean that thereby the jurisdiction can be conferred upon a court
which had jurisdiction to try only the suit in respect of one cause of action
and not the other. Recourse to the additional forum, however, in a given case,
may be taken if both the causes of action arise within the jurisdiction of the
court which otherwise had the necessary jurisdiction to decide all the issues.
case we have not examined the question as to whether if a cause of action
arises under the 1957 Act and the violation of the provisions of the Trade
Marks Act is only incidental, a composite suit will lie or not, as such a
question does not arise in this case.
Field Marsahal (supra), however, we may notice that a subsequent development
has taken place, namely, after the remand, a learned Single Judge of the Delhi
High Court is said to have granted an order of injunction in favour of the
plaintiff-respondent and the matter is pending before the Division Bench. As we
have not expressed our views on the merit of the matter, it is needless to
mention that the Division Bench shall proceed to determine the questions raised
before it on their own merits.
reasons aforementioned, Civil Appeal No. 6248 of 1997 filed by M/s Dhodha House
is dismissed and Civil Appeal No. 16 of 1999 preferred by M/s Patel Field
Marshal is allowed. The parties shall pay and bear their own costs.