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Surendra Kumar Maingi v. Dodha House .

Allahabad High Court

May 5, 1997

Judgment

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Structured Summary of the Legal Opinion

Factual and Procedural Background

The plaintiff, Dodha House, a partnership firm (one partner Subhash Chandra Vig), operating confectionery under the trade name "Dodha House" and claiming registered trademark rights and registered copyright in artwork/labels/wrappers for "Royal Dodha Sweets", filed O.S. No. 22 of 1990 against defendant Surendra Kumar Maingi (Proprietor of V.R.K Todha Sweet House) and another for permanent injunction. The plaintiff alleged that defendant No.1 marketed sweets under the name "Maingi's Todha" with labels/wrappers and get-up similar to the plaintiff's, infringing plaintiff's registered trademark, registered copyright and amounting to passing off.

The plaintiff also sought interim relief under Order 39 Rules 1 & 2 read with Section 151 C.P.C. The trial court (1st Additional District Judge, Ghaziabad) accepted the plaintiff's version and on 17-1-1992 granted an injunction restraining the defendants, their dealers, stockists and distributors from infringing the plaintiff's copyright in the artwork/label/wrapper and from passing off goods as those of the plaintiff under the trademark "Maingi's Todha". Defendant No.1 appealed under Order 43 Rule 1(r) C.P.C.

Legal Issues Presented

Whether the defendants' label/wrapper and trade name ("Maingi's Todha") are deceptively similar to the plaintiff's mark/label/wrapper such that customers would be deceived or confused, amounting to infringement or passing off.
Whether the court at Ghaziabad had territorial jurisdiction to try the suit in respect of the plaintiff's claims under Section 105 of the Trade and Merchandise Marks Act (i.e., a suit for infringement of a registered trade mark or for passing off) given the parties' respective places of business.
Whether the word "Dhodha" (or "Dodha") is a generic name for a variety of sweet (and thus not proprietary to the plaintiff) or a special product proprietarily associated with the plaintiff — and whether that question can be resolved at the interim stage.
Whether the balance of convenience and equities favoured continuation of the interlocutory injunction previously granted by the trial court.

Arguments of the Parties

Appellant (defendant No.1) — Main Arguments

The wrappers of the plaintiff and defendant are entirely different; there is no infringement of the Trade and Merchandise Marks Act or the Copyright Act and no likelihood of customer deception.
The defendant's trade mark is "Maingi's Todha Sweet" (not "Maingi's Todha"), and the defendant had been using that mark for about 20 years; the defendant's mark is different from plaintiff's "V.R.K Dodha Sweet House, Kot Ka Pura".
The word "Todha" (or "Dhodha") is a description/name of a variety of sweet and cannot be the property of an individual; hence no exclusive rights attach to it.
The defendant did not market the product in Ghaziabad; therefore, the Ghaziabad court lacks territorial jurisdiction to try the suit under Section 105 of the Trade and Merchandise Marks Act.
The balance of convenience favours the defendant because the injunction has prevented the defendant from carrying on business since 1992; if the injunction is continued and suit ultimately dismissed, the defendant would suffer irreparable loss.

Respondent (plaintiff) — Main Arguments

The plaintiff adopted the trade mark/name "Dodha House" since 1912 and has continuously used it; the trade name was registered under the Trade and Merchandise Marks Act on 15-1-1972. The plaintiff also owns copyright in its artwork/label/wrapper for "Royal Dodha Sweets".
The defendant's trade name "Maingi's Todha" and its label/wrapper are similar in composition, colour scheme and get-up and constitute a deliberate imitation likely to cause deception and confusion among customers, amounting to passing off and infringement.
Many customers may not be familiar with English and may be misled by similar appearance; hence an injunction was necessary.
As the plaintiff carries on business at Ghaziabad (in addition to Kot Ka Pura), a suit for infringement of copyright (under Section 62 of the Copyright Act) would be maintainable at Ghaziabad.
For infringement of a registered trademark, even a small chance of success may justify interim relief (relying on authorities about injunction standards in trademark cases).

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
K.R. Chinna Krishna Chettiar v. Sri Ambal & Co., (1969) 2 SCC 131 : AIR 1970 SC 146	Resemblance between marks must be considered with reference to both ear and eye; ocular comparison is not always decisive; similarity of sound can be decisive even without visual resemblance.	The plaintiff relied on this authority to argue that phonetic similarity (Dodha/Todha) could mislead. The court acknowledged the principle but concluded that, on the specific visual and phonetic differences found, there was no likelihood of deception in this case.
Ruston and Hornby Ltd. v. Zamindara Engineering Co., (1969) 2 SCC 727 : AIR 1970 SC 1649	Authority on customers being likely to be misled by similarity between marks (supporting broader approach to deceptive resemblance).	Relied upon by the plaintiff; the court considered it but found that distinguishing features between the wrappers meant customers were not likely to be misled.
H.P. Marketing & Processing Corpn. v. M.M. Breweries, AIR 1981 P&H 117	In a passing-off/infringement suit, cause of action arises in a jurisdiction only if defendant is proved to have made direct sales under the impugned mark within that jurisdiction to distributors/wholesalers/retailers on a commercial scale.	Cited by the appellant to support the submission that mere presence of similar goods is insufficient; the court accepted that Section 105 limits jurisdiction and treated this authority as supporting the point that Ghaziabad lacked territorial jurisdiction for the trade-mark cause of action.
C.B. Dembla Trading v. Bharat Sewing Machine Co., AIR 1982 Delhi 230	Authority referenced on jurisdictional aspects of trademark/passing-off suits (as cited in para 5 of that decision).	Cited by appellant in support of the jurisdiction argument. The court noted the reliance upon it in its consideration of territorial jurisdiction under Section 105.
Authorities (AIR 1942 Allahabad 387; AIR 1954 Mad. Bharat 156; AIR 1955 Mad. 595; 1983 AWC 986)	Support for the proposition that unless the court has jurisdiction to try all causes of action, different causes of action cannot be joined together in one suit.	Cited by appellant to argue that the trademark cause of action could not be joined where territorial jurisdiction did not lie; court treated these authorities as supporting the submission on joinder and jurisdiction.
Glaxo Operations UK Ltd. v. Samrat Pharmaceuticals, AIR 1984 Delhi 265 (1992 Pat & T.M. Cases 94)	Authority relied upon by plaintiff to argue jurisdictional or injunction-related propositions in trademark contexts.	Relied on by plaintiff; the court observed that the cited plaintiff authorities did not deal with cases where Section 105 of the Trade Marks Act ousts territorial jurisdiction in the manner present here, and thus were not directly applicable.
The Tata Oil Mills Co. Ltd. v. Reward Soap Works, AIR 1983 Delhi 286	Authority relied upon by plaintiff on jurisdiction/injunction issues in trademark disputes.	Relied on by plaintiff; the court found it not to cover the specific territorial-jurisdiction issue under Section 105 and thus not determinative here.
Century Trader v. Roshan Lal, AIR 1978 Delhi 250	Authority supporting the principle that in cases of registered trademark infringement, an injunction may be granted even if there is only a small chance of success.	Relied on by plaintiff to argue for the continuance of injunction. The court held that such a principle applies where the equity is confined to whether deception/confusion is likely, but not where the court lacks territorial jurisdiction to entertain the suit.
AIR 1990 Kerala 119	Authority cited (with Century Trader) on injunction principles in trademark cases.	Relied on by plaintiff for the proposition about injunction standards; the court limited its application where a jurisdictional defect exists.

Court's Reasoning and Analysis

The court conducted a multi-part analysis addressing (a) similarity of wrappers/likelihood of deception, (b) whether "Dhodha"/"Dodha" is proprietary or generic, (c) territorial jurisdiction under statutory provisions, and (d) the balance of convenience.

1. Visual and Phonetic Comparison (Similarity / Likelihood of Confusion):

The court compared specific visual elements of plaintiff's and defendant's wrappers: plaintiff's "ROYAL DHODHA Sweet" with a crown over 'R', "Estd. 1912", a round eagle seal in red-dot circle on the back, a blue-printed closed packet; defendant's "MAINGI'S VRK TODHA SWEET HOUSE KOTKAPURA" with "MAINGI'S" in big red block letters, a back-side blue closed packet, and a circular mark with "VRK" in red inside and "TODHA Sweet House, Kotkapura" in white on black outer circle.
Although there were some superficial similarities (e.g., a circular element and printed packet), the court found important differences: colour schemes, presence/absence of "Estd. 1912" and crown/seal, different inner circle colours and different central devices (eagle vs. "VRK" circle), and distinct prominent use of "MAINGI'S" in bold red on defendant's wrapper.
The court acknowledged the plaintiff's reliance on authorities that similarity must be judged by eye and ear (K.R. Chinna Krishna) and that phonetic affinity can be important. However, the court concluded that despite some phonetic proximity (Dodha/Todha), the spelling differences, prominent typographic and pictorial distinctions, and other distinguishing features meant the overall get-up did not give rise to likely deception of an ordinarily prudent purchaser.
The court rejected the plaintiff's argument that many customers not familiar with English would be misled by visual similarity, observing by example that many market items with similar packaging are distinguished by their names even if printed in English; thus lack of English literacy alone did not establish a likelihood of deception.

2. Whether "Dhodha" is Generic or Proprietary:

The court noted conflicting contentions: plaintiff said "Dhodha" is a special item made only by the plaintiff; defendant said "Dhodha" is the name of a variety of sweet and not proprietary. The court held that this is a factual question requiring oral evidence and could not be decided at the interlocutory stage.
Documentary wrappers produced by the defendant showing other manufacturers using "Dodha" prima facie supported the defendant's contention that "Dodha" may be a generic variety-name, but the court did not make a final finding at the interim stage.

3. Territorial Jurisdiction (Section 105 Trade Marks Act / Section 62 Copyright Act / Section 20 CPC):

The court analysed Section 105 of the Trade and Merchandise Marks Act, which requires that a suit for infringement of a registered trademark or for passing off a registered trademark be instituted in the district court having jurisdiction to try the suit. Under Section 20 CPC, jurisdiction is where the defendant resides or carries on business.
The plaint alleged the plaintiff's registered head office at Kot Ka Pura (Faridkot) and that defendant carried on business at Kot Ka Pura; the court concluded that, on the allegations, the suit insofar as it is founded on the Trade and Merchandise Marks Act causes of action was maintainable only at Faridkot and not at Ghaziabad.
The court considered Section 62 of the Copyright Act, which allows a suit for copyright infringement to be instituted where the plaintiff voluntarily resides or carries on business; the court accepted that Section 62 might permit a copyright suit at Ghaziabad where the plaintiff carries on business, but held that this could not overcome the clear bar in Section 105 with respect to registered trade mark causes of action.
Authorities cited by the appellant (e.g., H.P. Marketing & Processing Corp.) were held by the court to support the jurisdictional proposition that the cause of action for trademark infringement/passing off arises in a district only where the defendant has made commercial sales under the impugned mark in that district. The court concluded that the Ghaziabad court had no territorial jurisdiction to try the trademark/passing-off causes of action in this suit.

4. Balance of Convenience and Interplay with Jurisdiction:

The court considered the appellant's submission that continued injunction caused business deprivation and the plaintiff's submission that trademark cases warrant injunctive protection even on a small chance of success.
The court held that the equitable principle favouring injunctive relief in trademark cases applies where the equity is confined to the question whether infringement is likely to deceive or cause confusion. However, where the court is prima facie satisfied that it lacks territorial jurisdiction to entertain the suit (a matter going to the root of the suit), the balance of convenience principle favouring injunctive protection cannot be invoked to circumvent the jurisdictional bar.
On the facts, the court found the balance of convenience lay in favour of the defendant given the jurisdictional defect; accordingly, the interlocutory injunction could not be sustained.

Holding and Implications

Holding:

The appeal is allowed and the impugned injunction order dated 17-1-1992 passed by the 1st Additional District Judge, Ghaziabad is set aside.

Implications and Consequences:

Direct effect on the parties: The interim injunction previously restraining the defendants and their channels from using the defendant wrapper/mark and from infringing the plaintiff's copyright/trademark or passing off is vacated by this appellate order.
Jurisdictional consequence: The appellate court concluded that the Ghaziabad court had no territorial jurisdiction to try the plaintiff's cause of action under Section 105 of the Trade and Merchandise Marks Act (i.e., the trademark/passing off claim), limiting the forum in which that cause of action can be maintained.
Procedural direction: The trial court is directed to decide the suit on the basis of evidence adduced before it and without being influenced by observations made in this order; the appellate order does not decide the suit on merits, and the factual issues (including whether "Dodha" is generic) remain open for trial.
Precedential or broader legal impact: The opinion does not announce a new legal principle beyond applying established doctrines on trademark similarity, jurisdiction under Section 105 of the Trade Marks Act, and the limits of injunction-equity when jurisdictional defects exist. The decision's primary consequence is the vacating of the interim order and the clarification that territorial jurisdiction under Section 105 cannot be bypassed by relying on a concurrent claim in copyright where Section 105 applies.

Result: Appeal allowed.

Show all summary ...

1. This appeal under Order 43 Rule 1(r) C.P.C has been preferred by defendant No. 1 against the order dated 17-1-1992 of 1st Addl. District Judge, Ghaziabad by which the application 5-C filed by the plaintiff was allowed and the defendants, their dealers, stockists and distributors were restrained from infringing the plaintiff's copyright existing in art work, label and wrapper by using these as wrappers for Maingi's Todha. They were further restrained from passing-off their goods as goods of plaintiff under trade mark Maingi's Todha.

2. Dodha, House, Kot Ka pura, through its partner Subhash Chandra Vig filed O.S No. 22 of 1990 against Surendra Kumar Maingi, Proprietor of V.R.K Todha Sweet House, Kot Ka Pura and Pallu Ram for permanent injunction restraining them from infringing plaintiff's copyright existing in the art work, label and wrapper duly registered underthe Indian Copyright Act by using these in the art work involved in defendant's label and wrappers titled Maingi's Todha Sweet, from infringing the trade name Dodha House of the plaintiff by using the word Todha as pan of defendant trade name and also from passing off their goods as goods of the plaintiff under the trade mark Todha.

3. The case set up by the plaintiff in the plaint is as follows. The plaintiff is a firm which was registerd under the Indian Partnership Act and Subhash Chandra Vig is one of its partners. The plaintiff is engaged in the business of manufacturing confectionary sweet-meats under the trade mark Dodha and has been carrying on his business under the trade name Dodha House, which trade mark was adopted in the Year 1912 and is being used continuously since then. The plaintiff's registered office is at Kot Ka Pura in District Faridkot and the branches are in Ludhiana, Delhi and Ghaziabad. The plaintiff's trade name Dodha House was duly registered on 15-1-1972 under the Trade and Merchandise Marks Act, 1958. The plaintiff is also owner of Royal Dodha Sweets and art work/label and wrapper of the same were registered under the copy right Act. Thus the plaintiff has acquired exclusive right to use the trade name Dodha House and also the aforesaid art work/labels/wrappers. The plaintiff has extensive business. The details of sales from 1947 on wards have been given in para 9 of the plaint which rose to Rs. 14,14,145/- in 1989-1990. The defendant No. 1 adopted trade name Todha with the word Maingi's as its prefix and is selling the aforesaid goods duly packed in Maingi's Todha label/wrapper in Kot Ka Pura since second week of September, 1990. The trade mark/trade name/label/wrapper and art work chosen by the defendant No. 1 is similar to that of the plaintiff in its composition colour, scheme and get-up etc. and it is a deliberate imitation. This is bound to cause deception and confusion in normal course of business activities of the parties. The defendants are passing off their goods and business as that of the plaintiff. The suit was accordingly filed for the reliefs mentioned above. The plaintiff also filed an application under Order 39 Rule 1 and 2 read with Section 151 C.P.C praying that during the pendency of the suit the defendants be restrained from infringing the plaintiff's copyright existing in the art work/label and wrapper, from infringing the trade name Dodha House and from passing off their goods and business as goods of the plaintiff.

4. The defendants filed written statement and their case is as follows. The trade mark of defendant No. 1 is Maingi's Todha Sweet and not Maingi's Todha. The defendant No. 1 started his business under the aforesaid trade mark about 20 years back and his trade mark was very different from the plaintiff's trade mark “V.R.K Dodha Sweet House, Kot Ka Pura”. The word Todha is a description of sweet meat which cannot be property of an individual. The defendants' product is not in the market at Ghaziabad. It is denied that the trade mark/trade name/label/wrapper of the defendant is same as that of the plaintiff and there is any imitation of any kind. It is not likely to cause any deception or confusion in the normal course of business activity. There is no infringement of the plaintiff's trade mark or of the alleged art work, label or wrapper under the Copyright Act. The plaintiffs business is in no way affected by the sale of product made by the defendant. It is further pleaded that no part of cause of action had accrued at Ghaziabad and the Court at Ghaziabad had no jurisdiction to try the suit. The defendants also filed objection to the injunction application filed by the plaintiff on the same grounds which are set up in the written statement.

5. The parties filed affidavits in support of their respective cases and also some documents. The learned Addl. District Judge accepted the version of the plaintiff and passed an injunction order in his favour on 17-1-1992 in the terms mentioned earlier.

6. Sri Yatindra Singh, learned counsel for the defendant-appellant has urged that the wrappers of the plaintiff and defendant No. 1 in which sweet is sold are entirely different and as such there is neither any infringement of the provisions of the Trade and Merchandise Marks Act or of the Copyright Act nor there is any chance of deception upon the customers and therefore the trial court erred in passing the impugned injunction order. The learned counsel has referred to the wrappers of the product of the plaintiff and defendant on which the following is written:

PLAINTIFF'S PRODUCT

ROYAL DHODHA Sweet Estd. 1912

Manufactured by

Dodha House (Regd.) Gold Medalist.

Regd. T.M No. 277714

On one side of the wrapper following is written:

Super Bazar, Place New Delhi Ph. 2518759 Railway Road, Ghaziabad, U.P DHODHA HOUSE Ph: 85-3636 Railway Road, Kot Ka Pura, pb. Ph: 132, 237, 444 Ghumar Mandi, Civil Lines, Ludhiana Ph: 26979

There is a round seal towards the left side of the words “Estd. 1912”. A crown is shown in black colour over letter ‘R’ in the word Royal. The word Royal has been printed in red colour and in big letters. On the back side of the wrapper a closed packet of Royal DHODHA Sweets has been printed in blus colour and on the right side there is a picture of eagle inside a circle which is made with bold red dots.

DEFENDANTS' PRODUCT

MAINGI'S

Prop: Surendra Kumar Maingi

VRK TODHA SWEET HOUSE KOTKAPURA.

7. On the back side a closed packet of Maingi's Todha Sweet is shown in blue colour and towards the right side there is a circle in which the words VRK are written in red colour and the outer side of the circle is in black colour where the words TODHA Sweet House, Kotkapura are written in white colour. It may be pointed out that the word ‘Royal’ is written with red colour in bold letters over the word DODHA Sweet in the plaintiffs product while the words MAINGI'S is written in bi g block letters and in red colour in the defendan ts product. There is neither any seal nor the words “Estd. 1912” are mentioned in the defendants product. On the back side of the wrapper the closed packet no doubt looks similar from a distance but there is a mark difference in the middle with an eagle in the plaintiffs product and a round circul with a writing “VRK Todha Sweet House” in the defendants product.

8. I am in agreement with the submission of the learned counsel for the appellant that the similarity in the wrappers of the defendants with that of plaintiff is not such which may cause deception to customers. Learned counsel for the plaintiff-respondent has drawn the attention of the court to certain similarities in the two wrappers and has urged on its basis that a confusion is bound to arise in the mind of a customer. It is true that a circle has been shown with red colour towards the left side where the following is written— “Forget to eat but not Todha sweet.” Similar language is written in the plaintiff's wrapper but the colour of the inner circle in the two wrappers is entirely different. In the plaintiff's wrapper it is of blue colour while in the defendants' wrapper it is of red colour. It may also be noticed that the plaintiffs' product is Dodha and the defendant product is Todha. Phonetically they may sound some what similar but there is difference in their spelling. In the defendants' wrapper these words have been written in very bold print in black colour which are more than one inch long. Learned counsel for the plaintiff has placed reliance on K.R Chinna Krishna Chettiar v. Sri Ambal & Co., (1969) 2 SCC 131 : AIR 1970 SC 146 wherein it has been held that the resemblance between the two marks must be considered with reference to the ear as well as the eye and ocular comparison is not always the decisive test. Even if there is no visual resemblance between the two marks, that does not matter when there is a close affinity of sound between the words which are distinctive features of the two marks. He has also placed reliance upon Ruston and Hornby Ltd. v. Zamindara Engineering Co., (1969) 2 SCC 727 : AIR 1970 SC 1649 and has urged that the customers are likely to be misled. In view of the features which distinguish wrappers of the plaintiff and defendants, which have been noticed earlier, I am of the opinion that the wrappers of the defendants' product do not resemble that of the plaintiff and there is no such similarity between the two which may cause confusion or deception with regard to the goods and it is not likely to mislead a person usually dealing with one to accept the other, if offered to him.

9. Learned counsel for the plaintiff has urged that many customers are not familiar with English language and they are likely to be misled as appearance of the two wrappers is similar. I am unable to accept the submission made by the learned counsel. Many items are sold in the market whose wrappers or covers look alike but they are distinguished by their names even though the same may be printed in English. Shaving blade is a most common item of use and it is sold in packets of exactly same size and dimension. They are distinguished only by their name which is printed in English. Similar is a case of tooth paste which is sold in tubes of standard size and in wrappers made of hard papers which are also exactly similar and often having the same colour. Some of the well known brands of biscuits like Britannia or Parle are sold in packets of same size and colour which look exactly identical and they are distinguished by their names which are written in English language. Therefore the fact that the customers may not be knowing English language is not enough to hold that they are likely to be misled and or that they would buy defendant's product under a mistaken belief that it is that of the plaintiff.

10. Learned counsel for the defendant-appellant has next submitted that Dodha is a name of particular variety of sweet and it cannot be property of an individual and therefore the defendant has infringed no law by marketing the sweet in the name and style of Maingi's Todha Sweet. Learned counsel for the plaintiff-respondent has however urged that ‘Dhodha’ is a special item which is made only by the plaintiff and it is not name of a sweet. In my opinion this question requires oral evidence and no finding can be recorded in favour of plaintiff at this stage. The defendant has no doubt filed wrappers which show that some others are also manufacturing and selling the same product Dodha. One wrapper is that of Ramsons's dodha Sweet, manufactured by Hafiz Abadian Dihatti, Ram Chand Madan Lal, Bus Stand, Nawan Shaliar and the other is Special Dodha manufactured by Har Har Mahadev Misthan Bhandar, Model Town, Yamuna Nagar 135001. This documentary evidence prima facie supports the defendant's contention that Dodha is a name of a variety of sweet and it is not a special product which is manufactured by the plaintiff alone.

11. Sri Yatindra Singh has next submitted that according to the para 3 of the plaint, registered head office of the plaintiff is at Kot Ka Pura in District Faridkot but the plaintiff also carries on business at Ghaziabad and Delhi. As per para 10 of the plaint, the defendant No. 1 carries on his business in Kot Ka pura and not at Ghaziabad. It is thus urged that the Court at Ghaziabad has no jurisdiction to try the suit. Section 105 of the Trade and Merchandise Marks Act lays down that a suit for infringment or relief to any right in registered trade mark or for passing off the same shall be instituted in District Court having jurisdiction to try the suit and in view of Section 20 C.P.C such a suit can be filed where the defendant resides or carries on business or personally works for gain. Therefore on the allegations made in the plaint the present suit for injunction for restraining the defendant from infringing the plaintiff's registered trade mark or for passing of his goods as that of the plaintiff was maintainable only at Faridkot and not at Ghaziabad. Section 62 of the Copyright Act no doubt provides that a suit in respect of infringement of copyright in any work or infringement of any other right conferred by the Act shall be instituted in the District Court within whose jurisdiction the person instituting the suit voluntarily resides or carries on business or personally works for gain. Since the plaintiff claims that he is carrying on business at Ghaziabad a suit for infringement of copy right Act would be maintainable there.

12. It is urged that the trial court has completely ignored to consider the provisions of Section 105 of the Trade and Merchandise Marks Act and in view of the aforesaid provisions the court at Ghaziabad had no territorial jurisdiction to entertain the suit with respect to matters enumerated therein. In support of this proposition, learned counsel has placed reliance on H.P Marketing & Processing Corpn. v. M.M Breweries, AIR 1981 Punjab and Haryana 117 wherein it was held that in a suit for passing off or injunction on account of infringement of trade mark, the cause of action partly or wholly can arise in a given jurisdiction only if the defendant is proved to have directly made sale of goods under the impugned trade mark, within that jurisdiction, not to an individual consumer but to a distributor, whole-saler or retailer and that such a sale is on a commercial scale. Reliance is also placed on C.B Dembla Trading v. Bharat Sewing Machine Co., AIR 1982 Delhi 230 (para 5). It is also urged that unless the court has jurisdiction to try all the causes of action, such different causes of action cannot be joined together in one suit. In support of this proposition, reliance is placed on AIR 1942 Allahabad 387 : AIR 1954 Mad. Bharat 156 : AIR 1955 Mad. 595 and 1983 AWC 986. It is thus urged that the court at Ghaziabad has no jurisdiction to try the suit. In the suit as framed cause of action arising under the Trade and Merchandise Marks Act has also been joined for which the court has no territorial jurisdiction. Sri Sahini learned counsel for the plaintiff-respondents has submitted that the Court at Ghaziabad has jurisdiction to try the suit and in support of this proposition, he has placed reliance on Glaxo Operations UK Ltd. v. Samrat Pharmaceuticals, AIR 1984 Delhi 265 and 1992 patent and Trade Marks Cases 94. Reliance is also placed on The Tata Oil Mills Company Ltd.…Plaintiff; v. Reward Soap Works…Defendant. works AIR 1983 Delhi 286. I have considered the submissions made by the learned counsel for the parties. The authorities cited by the learned counsel for the plaintiff-respondents do not relate to such cases where the courts had no territorial jurisdiction to entertain the suit in view of section 105 of Trade and Merchandise Marks Act. In 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. The mere 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.

13. Learned counsel for the appellant has lastly urged that the balance of convenience does not lie in favour of the plaintiff. It is submitted that as the injunction order was granted in 1992, the defendant has not been able to carry on any business. Had there been no injunction, the defendants' business would have multiplied and in the event of the dismissal of the suit the loss suffered by the defendant cannot be ascertained. On the contrary if no injunction is granted and the suit is ultimately decreed the loss suffered by the plaintiff can be ascertained and he can be adequately compensated. Learned counsel for the respondents has urged that principle for grant of injunction in cases based upon infringement of registered trade mark are different and even if there is small chance of success of the suit, an injunction order should by passed. In support of this proposition, he has placed reliance on Century Trader v. Roshan Lal, AIR 1978 Delhi 250 and AIR 1990 Kerala 119. In my opinion, the principle urged by the learned counsel for the plaintiff can have application where the equity is confined to the question whether the infringement is such which is likely to deceive or cause confusion. In cases where it is prima facie shown that the court has no territorial jurisdiction to entertain the suit, this principle will have no application as question of jurisdiction goes to the root of the matter.

14. In the facts and circumstances of the present case, I am clearly of the opinion that the balance of convenience lies in favour of the defendant and not in favour of the plaintiff. Therefore the impugned injunction order passed in favour of the plaintiff cannot be sustained and has to be set aside.

15. In the result, the appeal succeeds and is hereby allowed. The impugned order dt. 17-1-1992 passed by the 1st Addl. District Judge, Ghaziabad is set aside.

16. It is made clear that the trial court will decide the suit on the basis of evidence adduced before it, without being influenced in any manner with any observations made in this order and in accordance with law.

17. Appeal allowed.