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2007 DIGILAW 725 (BOM)

International Association Of Lions Clubs v. Association Of Lions India

2007-06-08

S.R.SATHE

body2007
JUDGMENT : S.R. Sathe, J. This is a Petition for leave under Cause-14 of the Letters Patent. 2. The International Association of Lions Club also known as Lions Club International having head quarter at United States of America and area office at Nariman Point, Mumbai have filed this suit against the Defendants for permanent injunction. According to Petitioners, they are having registered trade marks such as "Lion", "Lion Club", "Lioness" "Leo" and all emblems and copy right. The Defendants Nos. 1 to 4, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 21 are organizations/associations of persons incorporated or registered under the Society registration Act or laws relating to public trust. It is the case of Petitioner that the Defendant Nos. 1 to 28 wrongfully and with dishonest intention used the words "Lion", "Lions" in the name of their Organization/Association for e.g. the Defendant's named their organizations/associations by name such as "Association of Lions India", "Lions in India", "Bhartiya Lions", "Lions India Calcutta Ballygunge, "Lions India Kolkata East", Lions India Kolkata Indrani", "Lions India Kolkata West", "National Lions Club of Pune, Mukundnagar", "National Lions Club Pune Ganeshkhind etc. and thereby committed acts of infringement of registered trade marks of the Plaintiffs such as "Lion", "Lions Club", "Lioness", "Leo" and emblems and acts of passing off and/or acts enabling passing off and infringement of copy right. The Defendant Nos. 2, 3, 7, 9, 11, 13, 15, 18 and 21 are using the word "Lion" by reason of their affiliation with Defendant No. 1. 3. The Plaintiffs, therefore, filed the present suit to claim following reliefs. (a) relief against acts of infringement committed by the Defendants of registered trade marks of the Plaintiffs filed with the Registrar of Trade Marks in Mumbai. (b) relief against acts of passing off, acts likely to pass off and/or acts enabling passing off by using the word 'Lion' as part of the name of the Defendants Nos. 1, 2, 3, 5, 7, 9, 13, 15, 18 and 21; (c) relief against infringement of copyright, committed by the Defendants by adopting the name, designation, emblem and other insignia of the Association which are deceptively similar to that of the Plaintiffs. 1, 2, 3, 5, 7, 9, 13, 15, 18 and 21; (c) relief against infringement of copyright, committed by the Defendants by adopting the name, designation, emblem and other insignia of the Association which are deceptively similar to that of the Plaintiffs. (d) relief against infringement of copyright, committed by the Defendants in substantially copying the literary work the Plaintiffs have in their Constitution and By-laws entitled "Purposes" (e) relief against acts of deceiving the public by having articles published in websites depicting the Defendants activities. (f) relief against defamatory reports published in the Newspapers, Circulars, Websites', etc. portraying the Plaintiffs' organization with disrepute. 4. Thus, according to Plaintiffs, having regard to the provision of Section 134 of Trade Marks Act, 1999 this Court has ordinary original civil jurisdiction to entertain and try the present suit. Besides this, as Defendants committed infringement of the copyright of Plaintiffs, in view of Section 62 of Copyright Act, 1957, this Court has ordinary original civil jurisdiction to try and entertain the present suit. According to Plaintiff, this Court is also having jurisdiction to entertain and try the present suit on the causes of action based on common law of passing off. However, as Defendant Nos. 8, 10, 12, 14, 16, 18, 19, 21 to 27 are residing beyond ordinary original civil jurisdiction of this Court and three different causes of action have arisen, Plaintiffs have filed the present petition under Clause-14 of Letters Patent to combine the above mentioned three causes of action in this one suit. 5. The learned Advocate for the Plaintiff submitted that notice of this application is served on the Defendants and accordingly affidavit of service was also filed by the Plaintiffs. 6. In pursuance of the notice only Defendant No. 1, 2, 4 and 5 appeared and Bachubhai Gala alias T.J. Gala filed affidavit in reply on behalf of Defendant Nos. 1, 2, 4 and 5 and opposed the application. Firstly, they contended that as Defendant Nos. 3 and 6 to 28 have not received notice from the Court to show cause required to be issued as per Clause-14 of Letters Patent, the present Petition can not be heard. 1, 2, 4 and 5 and opposed the application. Firstly, they contended that as Defendant Nos. 3 and 6 to 28 have not received notice from the Court to show cause required to be issued as per Clause-14 of Letters Patent, the present Petition can not be heard. Secondly, the said Defendants contended that issues raised in the present suit by the Plaintiffs are already decided by the District Court at Jabalpur in Civil Suit No. 383-A/1994 filed by one Jagjit Singh Khanna, founder president of Defendant No. 1 against the Plaintiffs and the said suit is decreed on 21/04/2001 in favour of Jagjit Singh and the said decree has acquired finality and as such the present suit is not maintainable. Thirdly, the said Defendants contended that if leave under Clause-14 is granted great hardship and inconvenience will be caused to the Defendant No. 1 which is society registered at Jabalpur. The other Defendants are also residing at Jabalpur, Calcutta, Pune. So, considering the hardship that will be caused to them leave under Clause-14 should not be granted. Lastly, Defendants contended that Plaintiff has not made out any case for grant of permission under Clause-14 of Letters Patent. Hence, on all these grounds they prayed for dismissal of the application. 7. Shri Tehemtan N. Daruwalla, learned advocate for the Petitioners submitted that 3 different causes of action have arisen to file suit against the Defendants and as such permission under Clause-14 of Letters Patent has to be granted. In order to support his proposition he has placed reliance on a case Marico Industries Limited v. Sarfaraj Trading Co. 2002 (25) PTC 93 (BOM) (DB) as well as decision of single Judge of this Court in Leave Petition No. 184 of 2006. 8. As against this, Mr. B.B. Saraf learned Advocate for Defendants Nos. 1, 2, 4, 5 submitted that in the instant case, this Court has not issued any show cause notice to the Defendants and the same is not served on the Defendants and as such there is no compliance of the requirement of Clause-14 and hence, the matter can not be heard and permission can not be granted. Secondly, he canvassed before me that in the instant case from the averments in the plaint it appears that all the alleged causes of action have arisen at Mumbai. Secondly, he canvassed before me that in the instant case from the averments in the plaint it appears that all the alleged causes of action have arisen at Mumbai. So, there is in fact no need to seek any leave under Clause-14. He submitted that Plaintiffs must specifically make out a case for grant of leave under Clause-14. Plaintiffs can not merely say that they are seeking leave under Clause-14 by way of abundant precaution. He, therefore, submitted that as in the instant case all the causes of action have arisen at Mumbai leave under Clause-14 should not be granted. Thirdly, he argued before me that great inconvenience will be caused to the Defendant if leave is granted as prayed because most of the Defendants are residing far away from Mumbai. According to him, balance of convenience is not in favour of Plaintiffs. In order to substantiate this proposition he has placed reliance on a case Rekhab Chand Jain Vs. Paras Das Bhartiya, AIR 1970 Cal 394 and Karam Chand Thapar and Bros. (Coal Sales) Vs. Inder Mohan Kapoor, AIR 1972 Cal 82 . Lastly, he submitted that as Jabalpur District Court has already passed a decree against the present Plaintiff in which the issue that are now being raised by the Plaintiff have already been answered the present suit is in fact not maintainable. Hence, on all these grounds, he submitted that application be rejected. 9. As this is an application seeking leave under Clause-14 of the Letters Patent it would be worthwhile to see what the said clause says. It runs as follows: 14. Joinder of several causes of action:- and we do further ordain that where Plaintiff has several causes of action against a Defendant, such causes of action not being for land or other immovable property, and the said High Court shall have original jurisdiction in respect of one of such causes of action, it shall be lawful for the said High Court to call on the Defendant to show cause why the several causes of action should not be joined together in one suit, and to make such order for trial of the same as to the High Court shall seem fit. 10. It is true that in the instant case there is no service of show cause notice through Court on the Defendants. 10. It is true that in the instant case there is no service of show cause notice through Court on the Defendants. However, it is clear from the material on record that notice of this application was served by the Plaintiffs on all the Defendants and accordingly, the Plaintiffs have filed 3 affidavits of service. Correctness of the same is not disputed. So, though technically a notice issued by the Court is not served on the Defendants, the Plaintiffs have in fact given notice of this petition and served this Petition to all the Defendants. So, there is in fact substantial compliance of the requirement of Clause-14. The object of issuing show cause notice by the Court is in fact served when Plaintiffs served the copy of this Petition on the Defendants and informed them about the proceedings. So, I am not inclined to hold that leave under Clause-14 can not be granted because the Defendants are not served through Court but, they are served by the Plaintiffs privately. 11. We can not ignore the fact that Clause-14 of the Letters Patent was enacted to sub-serve the purpose of avoidance of multiplicity of proceedings. It is well settled that if the Plaintiffs are entitled to maintain suit in this Court in respect of grievance of breach of copyright, then there is no reason to refuse leave so as to drive the parties to file litigation in several Courts. It has been so held in unreported judgement of D.B. of this Court Goldseal Engineering Products Private Limited and Ors. v. Hindustan Manufacturer. Appeal No. 505 of 1992 decided on 10/06/1994 : 1992 (12) PTC 1 (Bom). It is also observed therein that practical view should be taken and parties should not be driven from Court to Court on technicalities. Keeping in mind the above principles and having regard to provision of Order 1 Rule 3 of CPC and Order 2 Rule 3 of Code of Civil Procedure. It is necessary to find out whether there is any impediment in granting leave under Clause 14 in the instant case. 12. In order to find out whether the requirement of Clause-14 are fulfilled in the instant case one has to see the averments in the plaint. It is necessary to find out whether there is any impediment in granting leave under Clause 14 in the instant case. 12. In order to find out whether the requirement of Clause-14 are fulfilled in the instant case one has to see the averments in the plaint. The Plaintiff has categorically stated that the Defendants have committed infringement of trade marks and copyright as well as passing off so there are in fact 3 different causes of action for which Plaintiff has filed the present suit against the Defendants. Though, Plaintiffs have stated that all these causes of action have also arisen at Mumbai, if we carefully read the plaint, it is clear that some of the causes of action have arisen outside the original civil jurisdiction of this Court. So, there is no substance in the argument advanced by the learned Advocate for the Defendant that in the instant case all the 3 causes of action have entirely arisen at Mumbai and as such, there is no need to grant leave under Clause-14. From the reading of the Clause-14 it appears that even if one of the causes of action has arisen within the ordinary civil jurisdiction of this Court then leave under Clause-14 can be granted. 13. Incidently, it must be noted that at one point of time in Notice of Motion the present Defendant Nos. 1, 2, 4 and 5 had in fact contended that the suit can not be tried unless leave under Clause-14 of Latters Patent is obtained by Plaintiffs. Thereby, indirectly they had also stated that facts of the suit are such that it is necessary for the Plaintiffs to seek permission under Clause-14 of the Letters Patent. But now when such application for leave is actually filed, the same is opposed by contending that there is no need to grant leave as prayed. 14. It is true that in the instant case some of the Defendants are residing at Jabalpur, Calcutta, Kanpur and Pune, however, merely because they are residing at such places and if permission is granted under Clause- 14 they will be required to attend this Court and some inconvenience will be caused to them but merely for this leave can not be refused, particularly when it appears that such leave is necessary to avoid multiplicity of proceedings. The question of balance of convenience and hardship on which emphasis is laid by the learned Advocate for the Defendants is mainly required to be considered when there is an application seeking leave under Clause-12 of Letters Patent. The two authorities relied upon by the learned Advocate for the Defendants, mentioned above, are also in respect of matters where there was question of granting permission under Clause-12 of the Letters Patent. Here, we are not concerned with the Clause-12 and as such above cited rulings are of no help to the present Defendants. 15. So far as, third contention of the Defendant is concerned that the District Court Jabalpur has decreed the suit filed by one Jagjit Singh against Plaintiffs and had acquired finality is concerned, it must be noted that plea in this behalf is taken by relying on the principle of res-judicata. As it is, no specific preliminary issue has been raised regarding resjudicata and so the said issue need not be decided at this stage. So, having regard to all these facts and circumstances, I am of the considered view that Plaintiff has made out a case for granting leave under Clause-14. 16. Hence, Petition is made absolute in terms of prayer Clause-(a) of the Petition. 17. At this stage, Shri Saraf Learned Advocate for Defendant Nos. 1, 2, 4 and 5 submitted that the above mentioned order be stayed. 18. The learned Advocate for the Petitioner strongly opposed for the same. Considering the nature of relief that has been granted I do not think that there is any necessity to stay the application. Even if the Petitioner proceeds with the suit no prejudice is in fact likely to be caused to the Defendants. Hence, I am not inclined to grant stay as prayed.