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2010 DIGILAW 4288 (MAD)

V. S. A. Cocos v. V. V. Industries

2010-09-23

S.RAJESWARAN

body2010
Judgment : S. RAJESWARAN, J. 1. Application No.1839 of 2010 was filed by the plaintiff in C.S.No.354 of 2010 for obtaining leave to sue the defendant before this Court in a suit for infringement of trademark, passing off and copyright. This Court on 31.03.2010 granted the leave and thereafter the suit was numbered. Thereafter an application in A.No.4411 of 2010 has been filed by the respondent/defendant to revoke the leave granted by this Court on 31.03.2010 in A.No.1839 of 2010 2. The case of the plaintiff in lC.S.No.1839 of 2010 was that applicant/plaintiff is a registered proprietor of trademark OM SAKTHI label under No.1473867 in class 30 has a statutorily vested right. While so, the respondent has made a substantial reproduction of the said label by making minor modifications. Since the trademark of the applicant is registered at the Trademarks Registry at Chennai within the jurisdiction of this Court and on the ground of situs of the plaintiffs property which is situated within the jurisdiction of this Court, the suit was filed before this Court and leave was sought for. 3. The case of the respondent/defendant in Application No.4411 of 2010 is as follows: The Registration granted to plaintiffs mark by the Trademarks Registry at Chennai alone would not confer jurisdiction on this Court. Both the parties namely the plaintiff and the defendant are located and carrying on busines at Gobichettipalayam outside the jurisdiction of this Court. The plaintiff has alleged that the products bearing the mark OM SAKTHI label are being sold at Tirupur and other places but not in the City of Chennai. It is a settled law that mere registration at Tramdemarks Registry at Chennai cannot give rise to cause of action to invoke the jurisdiction of this Court. Further, no averment has been made by the plaintiff about the proof of advertisement/sale on commercial scale of defendants products bearing the offending mark/artistic work in the City of Chennai. There is no distributor, dealer, agent, stockist to sell defendants products in Chennai. Therefore when there is no commercail sale of defendants products with the offending mark/artistic work in Chennai, the jurisdiction of this Court outstayed. Therefore there is no jurisdiction within this Court and the leave obtained by the plaintiff has to be revoked. Hence the above application for the aforesaid prayer. 4. Therefore when there is no commercail sale of defendants products with the offending mark/artistic work in Chennai, the jurisdiction of this Court outstayed. Therefore there is no jurisdiction within this Court and the leave obtained by the plaintiff has to be revoked. Hence the above application for the aforesaid prayer. 4. have heard the learned counsel appearing for the applicant/defendant in Application No.4411 of 2010 and the learned counsel appearing for the respondent/plaintiff in this application. I have also gone through the document available on record. 5. only point that arises for consideration is whether the leave granted on 31.03.2010 in Application No.1839 of 2010 is to be revoked or not. 6. plaintiff filed the above suit for the following reliefs: (a) a permanent injunction restraining the defendants, by itself, its partners, men servants, agents, distributors, stockiest, representatives or any one claiming through them from in any manner infringing the plaintiffs registered trademark under No.1473867 in class 30 by using the trademark OM SAKTHI or any other mark deceptively similar to the plaintiffs trademarks OM SAKTHI label or in any other manner whatsoever. (b) a permanent injunction restraining the defendants, by itself, its partners, men servants, agents, distributors, stockiest, representatives or any one claiming through them from in any manner passing off and/or enabling others to pass off the defendants products as and for the plaintiffs products by manufacturing, selling or offering to sell, distributing, displaying, printing, stocking, using, advertising products bearing identical trademark OM SAKTHI label or any other mark deceptively similar to the plaintiffs trademarks OM SAKTHI label with identical colour scheme, get up and layout or in any other manner whatsoever; (c) a permanent injunction restraining the defendants, by itself, its partners, men servants, agents, distributors, stockiest, representatives or any one claiming through them from in any manner committing acts of copyright infringement by publishing OM SAKTHI which are a substantial reproduction of plaintiffs OM SAKTHI label in colour scheme, get up and layout or in any other manner whatsoever; (d) the defendants be ordered to surrender to plaintiffs for destruction of all products, labels, dyes, blocks, moulds, screen prints, packing materials and other materials bearing the trademark OM SAKTHI label or any mark deceptively similar to plaintiffs trademark and artistic work OM SAKTHI label. (e) a preliminary decree be passed in favour of the plaintiffs directing the defendants to render account of profits made by use of trademark and copyright in the artistic work OM SAKTHI label and a final decree be passed in favour of the plaintiffs for the amount of profits thus found to have been made by the defendants after the latter have rendered accounts; (f) the defendants be ordered and decreed to pay to the plaintiffs a sum of Rs.10,05,000/-as damages for acts of infringement of trademarks, passing off and infringement of copyright committed by the defendants by manufactur and sale of products bearing the trademark and artistic OM SAKTHI labels; 7. case of the plaintiff as stated in the plaint is that they are in the business of manufacturing desiccated coconut powder since the year 2001. They are selling the powder throughout the country. They adopted the trademark OM SAKTHI and started using the same since 15.05.2001. They applied for the registration of the said trademark on 05.12.2001. The Trademarks Registry at Chennai advised them to use the mark extensively and thereafter seek registration as the trademark is descriptive. After using the trademark OM SAKTHI (label) as aforesaid on 26.07.2006 and the same was allotted with a No.1473867. The said trademark application was opposed by the defendant and that was given the No.MAS-723232. 8. After a full fleged enquiry before the Trademarks Registry, Chennai, Application No.MAS-723232 was dismissed and the plaintiff was granted registration certificate on 23.03.2010 with effect from the date of application. 9. By virtue of the registration, the plaintiff is entitled to prevent all others including the defendant from using the trademark OM SAKTHI in respect of desiccated coconut powder. But the defendant is using the identical trademark with an identical label and thus they are infringing the right of the plaintiff. They suffer substantial loss in their sales in view of the defendants illegal activity. Therefore, the above suit has been filed for the aforesaid reliefs. 10. It is specifically stated in the plaint that as the situs of the plaintiffs property in the trademark OM SAKTHI (label) is located at Chennai, within the jurisdiction of this Court, this Court has jurisdiction to try this suit. 11. However, they filed Application No.1839 of 2010 seeking leave to sue the defendant. 10. It is specifically stated in the plaint that as the situs of the plaintiffs property in the trademark OM SAKTHI (label) is located at Chennai, within the jurisdiction of this Court, this Court has jurisdiction to try this suit. 11. However, they filed Application No.1839 of 2010 seeking leave to sue the defendant. In the affidavit filed in support of the Application No.1839 of 2010, a partner of the plaintiff firm stated as follows: 6.I state that the trademark of the applicant is registered at the Trademarks Registry at Chennai within the jurisdiction of this Honble Court and thus the situs of the plaintiffs property is situate within the jurisdiction of this Honble Court. The respondent filed an opposition being MAS-723232 against the plaintiffs registration of trademark under No.1473867 and the same was decided by the Trademarks Registry at Chennai. Thus a substantial part of the cause of action has arisen at Chennai within the jurisdiction of this Honble Court. However, since the respondents are residing outside the jurisdiction of this Honble Court, the applicant is seeking leave to sue the respondent before this Honble Court. No prejudice would be caused to the respondent if leave is granted. 7. I am advised that by virtue of the applicants registration of trademark at the Trademarks Registry at Chennai, the plaintiff is entitled to file a suit for infringement of trademark before this Honble Court. I state that along with the said infringement, the relief of infringement of copyright and passing off is also sought for by the plaintiffs as the defendant is using an identical trademark and artistic work OM SAKTHI labels. The causes of action arise from the same bundle of facts viz., use of the trademark and artistic work OM SAKTHI label for desiccated coconut powder by the defendant. Hence, it is just and necessary that this Honble Court may be pleased to combine the causes of action before this Honble Court. 12. The defendant after entering appearance filed the application in A.No.4411 of 2010 to revoke the leave granted on 31.03.2010. According to the defendant registration of mark granted at Trademarks Registry, Chennai alone would not confer jurisdiction to this Court. Both the parties are carrying on business at Gopichettipalayam as the plaintiffs products are not sold in the city of Chennai. The defendant after entering appearance filed the application in A.No.4411 of 2010 to revoke the leave granted on 31.03.2010. According to the defendant registration of mark granted at Trademarks Registry, Chennai alone would not confer jurisdiction to this Court. Both the parties are carrying on business at Gopichettipalayam as the plaintiffs products are not sold in the city of Chennai. Mere registration at Trademarks Registry, Chennai cannot give rise to a cause of action to invoke the jurisdiction of this Court. Hence they prayed for revoking the leave. 13. After hearing the arguments of both the learned counsel and after going through the records, judges summons and the judgments relied upon by both the parties, I am of the considered view that there are no merits in the Application NO.4411 of 2010 filed by the applicant/defendant in the suit and the leave granted by this Court on 31.03.2010 in Application No.1839 of 2010 cannot be revoked. 14. This issue was already settled by this Court and though a number of judgments were cited by both the parties, it would be sufficient to follow the following judgments alone. 15. In 2010 (3) CTC 864 (Shabbir Medical Hall, a Partnership Firm, carrying on business at 15-06-109, Afzalgunj, Hyderabad-500 012, A.P. Represented by its Partner, I.Salman Taiyebi vs. Mohammed Naseer), a Division Bench of this Court held as follows: 10. As could be seen above, it was a Suit for permanent injunction against the respondent alleging that the Trade Mark and copyrights in question were exclusively owned by the appellant. Admittedly, the appellant/plaintiff sought for the leave only on the ground that the Trade Mark was registered with the Registrar of Trade Marks at Madras, and the cause of action has partly arisen in Madras, and hence this Court has got jurisdiction to entertain the Suit. In support of his contentions, the learned Senior Counsel relied on the following decisions: (i)S.BN.S.Jayam & Co. Vs. In support of his contentions, the learned Senior Counsel relied on the following decisions: (i)S.BN.S.Jayam & Co. Vs. Krishnamoorthy, Proprietor, Gopy Chemical Industries, 1977 (1) MLJ 286 ; (ii)Harold Charles Pinto vs. Hilda Meneres, 1977 TLNJ 241; (iii)This Courts decision in Amrutanjan Ltd., vs. Mehta Unani Pharmacy in A.No.4924 of 1979 in C.S.No.658 of 1979; (iv)This Courts decision in Amrtanjan Ltd., vs. Ashwin Fine Chemicals and Pharmaceuticals, in C.S.No.74 of 1982; (v)Parle Products P. Ltd., vs. J.P. & Co., Mysore, AIR 1972 SC 1359 ; (vi)Midas Hygiene Industries P. Ltd., and another vs. Suddin Bhatia and others, 2004 (2) CTC 77 (SC) : 2004 (1) CTM R 86; (vii)Ramu Hosierises, rep. By M.Murugeshan vs. Ramu Kosieries rep. By Pandela Ramu and another, 1982 (2) CTC 230 : 1999 PTC (19) 183 (DB); (viii) Officine Lovata S.P.A. vs. Ajay Kumar Aggarwal and another, 2005 (30) PTC 465 (Mad); (ix)Prakash Roadline Ltd., vs. Prakash Parcel Services (P)Lt.d, 1992 IFLR (17) 251; (x)Duroflex Pvt. Ltd., vs. R.P.Home Private Limtied, 2008 (1) CTC 601 . 11. From the reading of all the above decisions, it would be quite clear that the following principles are enunciated: (i)The alleged infringement is not only at the place where the defendant markets its goods, but also where the plaintiffs property itself is situated. (ii) The plaintiff has to establish a cause of action by showing that he has a proprietary right in the Trade Mark and the same has been infringed by the other party. He can establish the same by showing that the Trade Mark was registered with the Registrar of Trade Marks. If so, it can be taken that the cause of action has partly arisen at the place where it is registered. (iii)Leave can be granted to sue only in case where cause of action has arisen in part within the local limits of the ordinary original jurisdiction. (iv)The right of interest in a Trade Mark can only be a movable property and where the infringement has taken place partly in one jurisdiction by way of advertisement and partly in another jurisdiction by marketing the product, then the registered owner of the Trade Mark can maintain the suit at the place where the cause of action has arisen partly or wholly which includes place of jurisdiction, advertisement or marketing. 13. 13. After considering the contentions put forth and also the settled principles of law in this regard, this Court is of the considered opinion that the appellant has not shown any part of cause of action which has arisen within the local limits of this Court. Paragraph 30 of the plaint reads as follows: "30. The cause of action for the above suit for infringement and passing off arose from October 2007; when the Defendant resumed the sale of infringing goods after the order of acquittal and the Defendants goods were available in the market bearing the deceptively similar wrapper Family Tea. The cause of action continues to arise with every sale of the Defendants impugned goods. Therefore, the Suit is filed within the period of limitation. This Honble Court has got jurisdiction to entertain and try the Suit on account of infringement of registered Trade Mark since the Plaintiffs mark is registered at the Trade Mark Registry at Chennai and the appropriate office of the Trade Mark Registry is situate at Chennai within the jurisdiction of this Honble Court." 14. Nowhere in the entire body of the Plaint, it is statd that either the plaintiff or the defendant are marketing their goods within the jurisdiction of this Court. What are all found in paragraph 30 as stated above as to the cause of action, is that the plaintiffs trade mark was registered at the Trade mark Registrar at Chennai, and the appropriate office of the trade Mark Registry is situated at Chennai. At this juncture, it is pertinent to point out that the sole ground on which the plaintiff is alleging that a part of cause of action has arisen at Chennai is that the Trade Mark Registry is located at Chennai. No doubt the location of the Trade Mark Registry cannot be a cause of action. Admittedly, the Trade Mark Certificate was issued to the plaintiff by Mumbai Trade Mark Registry and not by Madras Registry. 15. As rightly pointed out by the learned Senior Counsel for the respondent, the plaintiff has not filed any material to establish that the Trade Mark Registrar at Chennai has got any connection to the matter in the suit. It is an admitted position, as could be seen from the available materials, that both the plaintiff and the defendant are residents of Hyderabad and carrying on their business there. It is an admitted position, as could be seen from the available materials, that both the plaintiff and the defendant are residents of Hyderabad and carrying on their business there. It is not urged that either of them had got any trading activity there. The contention put forth by the respondents side that the license was issued with the specific condition to trade within Hyderabad area only is not disputed. Thus there is nothing to indicate that any part of cause of action has arisen within the local limits of this Court." 16. In the above decision, the Division Bench held that if it is established that the trademark was registered with the Registry of Trademarks, then it can be taken that the cause of action has partly arisen at the place where it is registered. 17. Having said so, the Division Bench in that case found that the trademark certificate was issued to the plaintiff at Bombay Trademark Registry and not by Madras Trademarks Registry. The plaintiff in that case has not filed any material to establish that Trademarks Registry at Chennai has got any connection to the matter in the sauit. Therefore the Division Bench affirmed the order of the learned Single Judge in revoking the leave originally granted in favour of the plaintiff in that case. 18. Admittedly in the present case the trademark was registered at the Trademarks Registry at Chennai and a certificate was issued by Deputy Registrar of Trademarks, Head of Office, Chennai – 32 on 23.03.2010. 19. In 1997 (1) MLJ 286 (S.B.S.Jayam & Co. represented by its Managing Partner S.B.S.Selvaraj, carrying on business at No.25, East Nappalyam Street, Madurai vs. Krishnamoorthi, Proprietor, Gopi Chemical Industries India, Main Road, Nakrekal Post, Nalgonda District), the learned Single Judge of this Court held as follows: "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 an, if traversed, to be proved is part of cause of action ndt ehs ame has arisen in Madras. But I am of the view that even on the second aspect put forward by the learned counsel for the plaintiff, he has to succeed. I have already indicated that the situs of the property (plaintiffs trade mark) is Madras. But I am of the view that even on the second aspect put forward by the learned counsel for the plaintiff, he has to succeed. I have already indicated that the situs of the property (plaintiffs trade mark) is Madras. To fortify that conclusion, I may also refer to R.Viswanthan vs. Ruken-ul-Mulk Syed Abdul Wajhid, where the Supreme Court has held that the situs of certain shres (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, I fail to see how it can be aid 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 plaintiffs property itself is situated." Admittedly this judgment was given in the context of Trade and Merchandise Marks Act, 1958. 20. In 2005 (2) CTMR 271 (Madras) (DB) (Ajay Kumar Aggarwal Trading As M/s.S.A.Engineers and ANR vs. Officine Lovato S.P.A.), a Division Bench of this Court held as follows: "11. In the present case, the learned Single Judge has come to the conclusion that the situs of the trade mark being a part of the cause of action, it can be said that the part of the cause of action arose within the jurisdiction of this Court. In the present case, the learned Single Judge has come to the conclusion that the situs of the trade mark being a part of the cause of action, it can be said that the part of the cause of action arose within the jurisdiction of this Court. It has been conclusded that though the trade mark has been registeed and reflected in the head office of the trade Marks Registry at Mumbai, yet, the Trade Marks Registrys branch at Chennai, it can be said, keeping in view that provisions contained in Section 18 of the Trade Marks Act, 1999, that the siuts of the trade mark involved in the present case is in Chennai. For the aforesaid purpose, the learned Single Judge has relied upon the decision of this Court reported in (1997) 1 MLJ 286-S.B.S.Jayam and Co. vs. Krishnamoorthy. In the said case, it has been observed: "...... A registered trade mark is a proprietary right and, therefore, it is property; though the head office is at Bombay, the branch office, including the one at Madras have independent territoral jurisdiction regarding the powere conferred under the Act, therefore, there can be no doubt that in respect of the trade mark registered at the Madras Office, the situs of the property in the mark is at Madras and, therefore, there can be a little doubt that the alleged infringement is not only at a place where the defendant markets his goods but also where the plaintiffs property itself is situated." 12. Apart form the aforesaid decision, which directly suppots the contention of the plaintiff, th learned Single Judge has also referred to the decisions reported in AIR 1991 Madras 277=1991(2) Arb. LR 384 (Mad.) - Amrutanjan Limited vs. Ashwin Fine Chemicals & Pharmaceuticals and 1999(19) PTC 183 =1998 (Suppl.) aRb. LR 399 (Mad.) (DB) – Ramu Hosieries, rep. By M.Murugeshan vs. Ramu Hosieries, rep. By Pandela ramu and another. From the latter two decisions, it is apparent that in the suit relating to violation of trade mark, the situs of the trade mark can be construed as the place where cause of action has arisen. 13. LR 399 (Mad.) (DB) – Ramu Hosieries, rep. By M.Murugeshan vs. Ramu Hosieries, rep. By Pandela ramu and another. From the latter two decisions, it is apparent that in the suit relating to violation of trade mark, the situs of the trade mark can be construed as the place where cause of action has arisen. 13. Learned counsel appearing for the appellants has sought to distinguish the aforesaid decisions on the footing that those decisions were rendered under the Trade and Merchandise Marks Act, 1958, and that the provisions contained in Section 3 of the said Act, relating to jurisdiction of the High Court, are not re-enacted under the new Act and, tehrefore, those decisions are of no consequence. In support of the aforesaid submission, the learned counsel has also placed reliance upon the commentary of "Law of Trade Mrks & Gerographical Indicatins" by K.C.Kailasam/Ramu Vderaman, wherein the authors have opined that the jurisdiction for filing a suit for infringement or passing off under Section 134 is not to be based on or linked with the operative jurisdiction of the head office or the branch offices. 14. We are unable to accept such submission made by the learned counsel for the appellants and, in our opinion, the ratio of the decision reported in (1977) 1 MLJ 286 (cited supra), is still applicable notwithstanding the slight change in the provisions contained in the Trade Marks Act, 1999. " 21. In the above judgment, the Division Bench has clearly held that the ratio of the decision reported in 1997 (1) MLJ 286 (cited supra) is still applicable not withstanding the slight changes in the provisions contained in the Trademarks Act, 1999. 22. From the above, it is clear that the Division Bench gave its approval to the decision of the learned Single Judge reported in 1997 (1) MLJ 286 (cited supra) wherein it is held that the situs of the properties gives a cause of action and infringement occurs where property is situated. 23. In the present case, the plaintiff has clearly stated that they are selling their product throughout the country. The plaintiff is also on record that they could not process their application submitted for registration on 05.12.2001. They further added that after having used the trademark for a period of five years, they again applied for trademark in the Trademarks Registry at Chennai. The plaintiff is also on record that they could not process their application submitted for registration on 05.12.2001. They further added that after having used the trademark for a period of five years, they again applied for trademark in the Trademarks Registry at Chennai. Their application was stoutly opposed by the defendant and both the applications were taken up and after enquiry, the Trademarks Registry at Chennai dismissed the objection application filed by the defendant and granted registration certificate on 23.03.2010 with effect from 26.07.2006. a copy of the certificate was also made available by the plaintiff. 24. In such circumstances, I have no hesitation to hold that the Division Bench in 2005 (2) CTMR 271 (Madras) (DB) (cited supra) applies squarely to the facts of the present case and therefore the plaintiff has proved that a part of the cause of action has arisen within the jurisdiction of this Court. Hence there is no substance in the application filed by the defendants in Application No.4411 of 2010 for revoking the leave granted by this Court on 31.03.2010 in Application No.1839 of 2010. 25. In the result, Application No.4411 of 2010 is dismissed. No cost.