Ramu Hosieries, Rep.... v. Ramu Hosieries, Rep...., Madras High Court, Judgment, Law, casemine.com

Factual and Procedural Background

The appellant filed a civil suit along with an application under Clause 12 of the Letters Patent seeking leave to sue before this Court, alleging infringement of their registered Trade-Mark "Ramu" for hosiery, registered at the Madras Trade Mark Registry. The appellant contended that a respondent publication, Eenadu Daily, circulated in Madras, used the impugned Trade-Mark in advertisements, causing infringement. The respondent filed a memo stating that their business name had changed and denied any infringement or cause of action. The trial court refused leave to sue, and the appellant appealed against this order seeking authoritative determination by the Division Bench.

Legal Issues Presented

Whether publication in Eenadu Daily, emanating from Hyderabad and widely circulated in Madras, amounts to infringement of the appellant's Trade-Mark?

Whether the cause of action arose wholly or in part within the jurisdiction of this Court on account of the Trade-Mark registered at the Madras Registry?

Arguments of the Parties

Appellant's Arguments

The appellant is the registered proprietor of the Trade-Mark "Ramu" for hosiery, extensively used since 1972 and registered at Madras.

Advertisement by the respondent in Eenadu Daily circulated in Madras uses the Trade-Mark "Ramu," causing infringement and affecting the appellant's rights.

Despite issuance of a "Caution Notice" and a "Cease and Desist Notice," the respondent continued using the Trade-Mark, necessitating the suit.

Publication of the advertisement in Madras is sufficient to establish infringement and confer jurisdiction on this Court.

The cause of action partly arose in Madras because the Trade-Mark is registered there, and advertisement circulated there induces confusion.

Respondent's Arguments

The respondent filed a memo stating that their business name had subsequently changed.

They denied any infringement and asserted that there was no cause of action.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
Kheshtrapal Sharma v. Pancham Singh Varma, A.I.R 1915 All 262	Trade-Mark infringement can occur by means of advertisement causing confusion or deception.	Supported the view that advertisement in Eenadu Daily circulated in Madras amounts to infringement.
Amba Lal Sarabhai Enterprises Limited v. Sara Pharmaceuticals and others, 1982 P.T.C 214	Publication of advertisement offering sale of goods is sufficient to confer jurisdiction on the court where advertisement is published.	Confirmed that cause of action arises where advertisement is published, supporting jurisdiction in Madras.
Amar Soap Factory v. Public Gram Udyog Samiti, 1985 PTC 85	Cause of action can arise partly in the place of advertisement publication, conferring territorial jurisdiction.	Reiterated that Delhi courts had jurisdiction due to advertisement; analogously, Madras Court has jurisdiction here.
State of Madras v. C.P Agencies, A.I.R 1960 S.C 1309	Definition of "cause of action" as every fact necessary to be proved to support plaintiff's right to judgment.	Applied to hold that registration of Trade-Mark in Madras is part of cause of action arising there.
R. Viswanathan v. Ruken Ul-Mulk Syed Abdul Wajid, AIR 1963 SC 1 at p. 40	Situs of movable property (shares) is where registered office is located; analogy applied to Trade-Mark situs.	Supported that situs of Trade-Mark property is at place of registration (Madras) for jurisdictional purposes.
S.B.S Jayam & Co. v. Krishnamoorthi, 1977 M.L.J 286	For a Trade-Mark registered at Madras, the situs of the property is at Madras, even if registered elsewhere.	Held that infringement can be recognized in Madras due to situs of Trade-Mark property, supporting jurisdiction.

Precedent

Rule or Principle Cited For

Application by the Court

Kheshtrapal Sharma v. Pancham Singh Varma, A.I.R 1915 All 262

Trade-Mark infringement can occur by means of advertisement causing confusion or deception.

Supported the view that advertisement in Eenadu Daily circulated in Madras amounts to infringement.

Amba Lal Sarabhai Enterprises Limited v. Sara Pharmaceuticals and others, 1982 P.T.C 214

Publication of advertisement offering sale of goods is sufficient to confer jurisdiction on the court where advertisement is published.

Confirmed that cause of action arises where advertisement is published, supporting jurisdiction in Madras.

Amar Soap Factory v. Public Gram Udyog Samiti, 1985 PTC 85

Cause of action can arise partly in the place of advertisement publication, conferring territorial jurisdiction.

Reiterated that Delhi courts had jurisdiction due to advertisement; analogously, Madras Court has jurisdiction here.

State of Madras v. C.P Agencies, A.I.R 1960 S.C 1309

Definition of "cause of action" as every fact necessary to be proved to support plaintiff's right to judgment.

Applied to hold that registration of Trade-Mark in Madras is part of cause of action arising there.

R. Viswanathan v. Ruken Ul-Mulk Syed Abdul Wajid, AIR 1963 SC 1 at p. 40

Situs of movable property (shares) is where registered office is located; analogy applied to Trade-Mark situs.

Supported that situs of Trade-Mark property is at place of registration (Madras) for jurisdictional purposes.

S.B.S Jayam & Co. v. Krishnamoorthi, 1977 M.L.J 286

For a Trade-Mark registered at Madras, the situs of the property is at Madras, even if registered elsewhere.

Held that infringement can be recognized in Madras due to situs of Trade-Mark property, supporting jurisdiction.

Court's Reasoning and Analysis

The Court analyzed whether advertisement in Eenadu Daily, circulated in Madras, constituted infringement of the appellant's Trade-Mark. Relying on authoritative definitions and precedents, the Court emphasized that infringement includes unauthorized use likely to cause confusion or mislead purchasers, and advertisement is a recognized form of such infringement. The Court rejected the trial Judge's view that advertisement alone does not create cause of action within jurisdiction.

Regarding jurisdiction, the Court referred to established legal principles defining "cause of action" as the sum of facts necessary for the plaintiff to prove entitlement to relief. The Court held that the registration of the Trade-Mark in Madras is a material fact forming part of the cause of action. The situs of the Trade-Mark property is at Madras, and therefore, cause of action arises at least in part within this jurisdiction. The Court further reasoned that where infringement occurs partly by advertisement and partly by marketing, the plaintiff can sue in any jurisdiction where part of the cause of action arose, including where the Trade-Mark is registered or advertised.

The Court concluded that the learned Judge's finding that infringement jurisdiction depends solely on actual marketing was unsustainable, affirming that advertisement in Madras suffices to create cause of action and confer jurisdiction.

Holding and Implications

The appeal is allowed and the impugned order refusing leave to sue is set aside.

The Court held that advertisement of the respondent in Eenadu Daily circulated in Madras constitutes infringement of the appellant's Trade-Mark and that cause of action arose at least in part within the jurisdiction of this Court. Consequently, the appellant is entitled to sue in this Court. The Court noted the respondent's statement that they had changed their business name, which might negate cause of action, but resolved the legal questions authoritatively as requested. The parties were directed to bear their own costs. No new precedent beyond the authoritative clarification on jurisdiction and infringement by advertisement is established.

Ramu Hosieries, Rep. By Its Sole Proprietor Mr. M. Murugeshan v. Ramu Hosieries, Rep. By Its Partner Pandela Ramu 2. K. Pavan Kumar, Partner, Ramu Hosieries.

JUDGMENT: C. Shivappa, J.

The appellant herein has filed C.S No. of 1996 - S.R No. 6107 to 6110 along with Application No. 1215 of 1996 under Clause 12 of Letters Patent for leave to sue before this Court on account of substantial part oof cause of action having arisen within the jurisdiction of this Court, since the appropriate office of Trade Mark Registry with respect to the appellant's registered Trade-Mark is in Madras and secondly, Eenadu carrying respondent's use of the impugned Trade-Mark in the course of its advertisement is circulated in the city of Madras. The order refusing leave to sue is impugned in this appeal.

2. A memo has been filed by the respondent stating that the name of their business has been changed subsequently and there is no infringement as alleged and as such, there is no cause of action. The learned senior counsel Mr. U.N.R Rao, appearing for the appellant submitted that the similar question often arises for consideration and the learned Judge has observed that it is desirable to settle the issue authoritatively by a decision of the Division Bench of this Court and, hence, insisted for determination of the questions involved in this appeal.

3. The questions for consideration are (i) whether the publication in Eenadu Daily emanating from Hyderabad and widely circulated in the city of Madras amounts to infringement of the appellant's Trade-Mark? and (ii) whether the cause of action arose wholly or in part within the jurisdiction of this Court on account of the Trade-Mark registered at the Madras Registry?

4. In order to determine these questions, few facts are necessary and they are set out hereunder: — The appellant is the registered proprietor of a number of registered Trade-Marks including the Trade-Mark “Ramu” for hosiery, bearing No. 332829 in Class 25 with effect from 27.07.1978 The appellant has been using the Trade-Mark “Ramu” on their hosieries continuously and extensively from 1972. By virtue of registration and its extensive use since 1972, the appellant has built up commercial good-will on the Trade-Mark “Ramu” for hosieries. The defendant in “Eenadu” Daily emanating from Hyderabad and widely circulated in the city of Madras on 10.8.1995 advertised themselves as Ramu Hosieries as a Trade-Mark and Trade-Name, adversely affecting the Trade-Mark rights of the appellant. The appellant issued a “Caution Notice” in the issue dated 30.9.1995 By a registered letter dated 4.12.1995 of the appellant's counsel, the respondent was issued a “Cease and Desist Notice” and there was no reply thereto. Despite the above, the respondent continued to use the Trade-Name and Trade-Mark “Ramu” for Hosieries. Hence decided to file the suit.

5. It is undisputed that a “Caution Notice” through the Press and “Cease and Desist Notice to the defendant were given. It is also not in dispute that the Trade Mark was registered in the Registry at Madras.

6. Advertisement is a step in the process of infringement to solicit customers in the name of the impugned Trade-Mark. In other words, the advertisement is calculated to induce people to believe that such a property is meant for marketing.

7. Infringement of Trade-Mark in Black's Law Dictionary is indicated to mean “that it is an unauthorised use or colourable imiitation of the mark already appropriated by another on goods of a similar class. It exists if words or designs used by the defendant are identical with or so similar to the plaintiff's that they are likely to cause confusion or deceive or mislead others and one who affixes the Trade-Mark of another to similar articles in such a way that his use of it is liable to cause confusion in the trade, or is calculated to mislead purchasers and induce them to buy infringer's articles as goods of the other thus depriving the latter of the full benefit of his property”. With this meaning in view if it is viewed, there is every possibility of unauthorised use likely to cause confusion in the trade and calculated to mislead purchasers. Thus, advertisement is an infringement of the Trade-Mark. In Kheshtrapal Sharma v. Pancham Singh Varma (A.I.R 1915 All 262), a Division Bench of Allahabad High Court has observed “on the other hand several English cases have been cited which show that it has been held for some years past that a Trade-Mark may be infringed by means of an advertisement. We think it is sufficient to refer to decisions in Jay v. Ladler (1888) 40 Ch.D.649 = 60 L.T 27 = 37 W.R 505), Bourne v. Swan and Edgar Limited ((1903) 1 Ch. 211 = 72 L.J Ch.168 = 51 W.R 213 = 87 L.T 589 = 19 T.L.R 59 = 20 R.P.C 105) and to the injunction which was issued by the House of Lords in the case of Reddaway v. Banham ((1896) A.C 199 = 65 L.J.Q.B 381 = 74 L.T 289 = 44 W.R 638)”. In Amba Lal Sarabhai Enterprises Limited v. Sara Pharmaceuticals and others (1982 P.T.C 214), the Delhi High Court has taken the view that prima facie publication of an advertisement in Delhi offering for sale of goods was sufficient to confer jurisdiction on the Delhi Courts. In Amar Soap Factory v. Public Gram Udyog Samiti (1985 PTC 85), the Delhi High Court reiterated the same view and held that cause of action in part can be said to have arisen in favour of the plaintiff in Delhi by the publication of the advertisement of the defendant's mark in the Trade Marks Journal and accordingly the Delhi Courts have territorial jurisdiction to entertain and decide the suit”. We hold that the Trade-Mark may be infringed by means of an advertisement since the publication of an advertisement in papers, hand-bills is calculated to induce people to believe that they will get certain type of goods, thus it amounts to infringement of the appellant's Trade-Mark. We do not subscribe to the view of the trial Judge that advertisement by the defendant in Eenadu circulated in Madras does not provide a cause of action.

8. In order to determine the question of jurisdiction, it is appropriate to see whether any part of the cause of action for the present suit has arisen in Madra. In State of Madras v. C.P Agencies (A.I.R 1960 S.C 1309), their Lordships of the Supreme Court have quoted with approval the definition of “cause of action” given in some of the English cases. In Read v. Brown ((1888) 22 Q.B.D 128), Lord Esher, M.R, defined ‘cause of action’ to mean:

“Every fact which it would be necessary for the plaintiff to prove, if traversed in order to support his right to the judgment of the Court. It does not comprise every piece of evidence which is necessary to prove each fact but every fact which is necessary to be proved”.

In the same case, Fry, L.J, agreeing with Lord Esher, M.R said:

“Everything which, if not proved, gives the defendant an immediate right to judgment must be part of the cause of action”.

It is indisputable that cause of action has no relation whatever to the defences that may be set up by the defendant, nor does it depend upon the character of the relief prayed for by the plaintiff. It refers entirely to the grounds set-forth in the plaint as the cause of action. It is not limited to the actual infringement of right sued on, but includes all the material facts on which it is founded. The words “cause of action” comprise every fact, though not every piece of evidence, which it would be necessary for the plaintiff to prove, if traversed, to support his right to the judgment of the Court. The words have been defined as meaning “simply a factual situation the existence of which entitles one person to obtain from the Court a remedy against another person”. In the instant case, after all what the appellant 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. The fact of registration which has necessarily to be alleged and, if traversed, to be proved one's part of the cause of action and the same has arisen in Madras. The situs of the property (plaintiffs Trade-Mark) is in Madras. In R. Viswanathan v. Ruken Ul-Mulk Syed Abdul Wajid ((1963) 3 SCR 22 = AIR 1963 SC 1 at p. 40), the Apex Court has held that the situs of certain shares (which are movables) is the place where the registered office of the company is situate, that being the place where the shares can be effectively dealt with. This Court in S.B.S Jayam & Co. v. Krishnamoorthi ((1977) M.L.J 286) has held thus:

“In respect of a Trade-Mark registered at the Madras Office, the situs of the property in the mark is at Madras. Even though the plaintiffs mark had been registered under the Trade Marks Act, 1940 at Bombay, by virtue of Section 136(2) of the Trade and Merchandise Marks Act of 1958, it should be deemed to have been registered only at Madras”….

“Even though the product with the alleged offending mark had not come to the Madras Market, there could be little doubt that the alleged infringement was not only at the place where the defendant marketed his goods but also where the plaintiffs property itself was situated”.

The principle enunciated in 1997 T.N.L.J 214 was taken note of and approved by a Division Bench of this Court in O.S.A Nos. 78 to 80 of 1976, dated 24.11.1976

9. Normally, the jurisdiction of the Civil Court in relation to movable property has to be determined with reference to cause of action. Right or Interest in a Trade-Mark can only be a movable property having regard to the definition in the General Clauses Act. Admittedly, the Trade-Mark has been put to use and exploited and registered at Madras. Therefore, the cause of action in such suit can be taken to arise where the property is situate for where it was marketed or exploited and registration assumes all significance, because in a suit for infringement of a Trade-Mark the plaintiff has to establish the cause of action by showing that he has a property right in a Trade-Mark and the same has been infringed by the other party. Where the infringement had taken place partly in one jurisdiction by way of advertisement and rest in another jurisdiction by marketing the product, then, the registered owner of the Trade-Mark can maintain the suit either at the place where the cause of action arose partly or wholly which includes the place of registration, advertisement or marketing. This can be by showing that his Trade-Mark has been registered with the Registrar of Trade Marks. Therefore, it cannot be said that no pan of the cause of action arose at Madras. Thus, the finding of the learned Judge, that unless the goods are actually marketed, it cannot be said that there has been an infringement of the Trade-Mark within the jurisdiction of this Court, is unsustainable. We answer both the questions in the affirmative.

10. In view of the memo filed by the respondent stating that the steps have been taken to change the name of their business, in which event, no cause of action survives in favour of the appellant. Since the learned Judge observed that it is desirable to have the issue settled which is brought up before this Court at frequent intervals by a decision of the Division Bench of this Court, we have decided the questions involved in this appeal. Since we have held that the view of the learned Judge is unsustainable, the impugned order is set aside and the appeal is allowed. Parties to bear their own costs. Consequently, the CMP. is closed.

RR/VCS

O.S A. No. 278 of 1996 and C.M.P No. 15711 of 1996

Ramu Hosieries, Rep.... v. Ramu Hosieries, Rep....