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Austin Reed Limited v. Suntex Garments, Represented By Its Partner Ram Chander Tiwari,
Structured Summary of the Court Opinion
Factual and Procedural Background
The applicant is a company with its registered office in Thirsk, North Yorkshire, England, manufacturing and selling garments under the trademark "Austin Reed." The business includes three partners who are identified as defendants 2 to 4 and who carry on business in Calcutta. The respondents trade as "Suntex Garments."
The applicant began business in 1900 and claims a long-standing reputation; the "Austin Reed" trademark has been registered in India since 1950. In September 2001 the applicant learned that the respondents were selling garments using the applicant's trademark within and outside the territorial jurisdiction of the Court. The respondents had filed a trademark application in the name "Austin Reed" and a notice was issued on 24-09-2001. Correspondence was exchanged between the parties; the respondents did not set up a defence on adoption of the mark but indicated willingness to settle.
The applicant filed suit seeking to restrain respondents from using the trademark. The plaint alleged that respondents asserted exclusive rights to use the mark all over India including Chennai and that products with the impugned mark were being sold commercially in Chennai. The applicant sought and was granted leave to sue in this Court.
The respondents applied to revoke leave to sue, arguing there was no justification for filing the suit on the Original Side of the High Court at Madras because the applicant is based in England, respondents in Calcutta, and the allegation of sale in Chennai is unfounded.
Legal Issues Presented
- Whether any part of the cause of action arose within the territorial jurisdiction of this High Court (Chennai), thereby justifying the grant of leave to sue here.
- Whether there was a commercial-scale sale by the respondents in Chennai (or elsewhere within this Court's jurisdiction) of goods bearing the impugned trademark sufficient to give rise to cause of action in Chennai.
- Whether publication of an advertisement in a magazine circulated in Chennai (specifically "Inside Fashion") would give rise to a cause of action in Chennai.
- Whether leave to sue previously granted should be revoked, taking into account the "natural forum" and the balance of convenience between the parties.
Arguments of the Parties
Applicant's Arguments
- The applicant has used and registered the "Austin Reed" trademark in India since 1950 and has an established international reputation dating back to 1900.
- The respondents, by asserting use of the mark all over India, necessarily include Chennai within that assertion and thus this Court has jurisdiction.
- An invoice/bill dated 19-12-2003 issued by Lords Paris Tailors at Chennai described the goods sold as one "Austin" shirt, which the applicant relied upon as evidence of sale in Chennai.
- An advertisement placed in a magazine (allegedly circulated in Chennai) was relied upon as further evidence supporting jurisdiction in Chennai.
- The applicant relied on earlier decisions (including unreported Division Bench orders and the Ramu Hosieries decision) for the proposition that nationwide assertions of use or wide-circulation advertisements may ground jurisdiction in Chennai.
Respondent's Arguments
- The respondents contended there was no bona fide basis for alleging that part of the cause of action arose within this Court's jurisdiction; the allegation of sale in Chennai was unfounded.
- The applicant is based in England and the respondents are in Calcutta; the suit should properly be tried in Calcutta (the natural forum).
- There was no evidence that the respondents dispatched goods to Chennai on a commercial basis or made sales there to distributors, wholesalers or retailers; hence Madras High Court lacks jurisdiction.
- The respondents relied on multiple precedents to support the principles that: (a) leave to sue should be revoked where no part of the cause of action arose in the forum; (b) the balance of convenience and natural forum must be considered; (c) mere absence of geographical limitation in a trademark application does not itself create a cause of action in a particular forum.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| O.S.A. No. 53/95 (unreported Division Bench of this Court) | On its facts, held that a defendant's claim of distinctiveness via sales "all over India" included Madras and therefore leave to sue in Madras should not be revoked. | The Court noted this unreported decision was relied upon by the applicant but distinguished it because decisions depend on specific pleaded facts; the present plaint lacked the necessary averments to support the same conclusion. |
| O.S.A. No. 82 of 1995 (unreported Division Bench of this Court) | Similar factual circumstances where leave was confirmed. | The Court observed the unreported judgment was fact-specific and not applicable here for lack of comparable facts and averments in the plaint. |
| Ramu Hosieries rep. by its Sole Proprietor v. Ramu Hosieries rep. by its Partner Pandela Ramu, 1998 III L.W. 784 | Held that an advertisement in Eenadu with wide circulation in Chennai could amount to infringement in Chennai when the trademark was registered at Chennai (situs of the property). | The Court held this authority was distinguishable: in the present case the trademark was not registered at Chennai and the applicant had not shown the magazine in question had wide circulation in Chennai, so the precedent did not apply. |
| Parameswara v. V. Mahedevi, AIR 1923 Madras 272 | Covers consideration of the balance of convenience and that where the major portion of the cause of action arises elsewhere, leave to sue should be refused in Madras. | The Court cited the principle and applied the balance of convenience analysis to conclude that Madras was not the appropriate forum when most relevant facts and conveniences pointed to Calcutta. |
| Tuticorin Alkali Chemicals & Fertilisers Ltd. v. Cochin Silicate and Glass Industries, 1992 (1) L.W. 308 | Where considering balance of convenience, the Court must examine the plaint and the facts stated therein. | The Court reviewed the plaint and found the facts did not disclose a cause of action arising in Chennai; accordingly this authority supported examining pleaded facts in deciding revocation. |
| Gold Seal Engineering Product Pvt. Ltd. v. Hindusthan Manufacturers, AIR 1992 Bombay 144 | Held that where defendants were carrying on business in Calcutta and there was no proof of dispatch or commercial supply to Bombay, the Bombay High Court had no jurisdiction to entertain the claim. | The Court used this reasoning analogously to require proof of dispatch or commercial-scale sale to the forum before asserting jurisdiction in Chennai; such proof was absent here. |
| Parasham v. Chitandas, AIR (39) 1952 Calcutta 82 | Indicated leave should be revoked if sought early, if the matter does not involve difficult questions of law/fact, if defendant shows no part of cause of action arose in the forum; the Court should consider natural forum and balance of convenience and guard against mala fide suits. | The Court applied these criteria to find revocation appropriate: no part of the cause of action was shown to arise in Chennai, and Calcutta was the natural forum. |
| Bihar State Agro-Industries Development Corporation Ltd. v. Ram Chand Khosla, AIR 1982 Calcutta 537 | When deciding revocation of leave, the Court must consider respective advantages and disadvantages to the parties in the circumstances. | The Court factored the relative convenience and hardship (logistics, witnesses, documents) and found that convenience favoured litigating in Calcutta. |
| Himachal Pradesh Horticulture Produce Marketing & Processing Corporation Ltd. v. Mohan Meaking Breweries Ltd., AIR 1981 Punjab & Haryana 117 | In passing off/trademark injunction suits, cause of action arises in a jurisdiction only if the defendant is proved to have directly made sales under the impugned mark within that jurisdiction to distributors/wholesalers/retailers on a commercial scale. | The Court applied this standard and concluded there was no evidence that respondents made commercial-scale sales under the impugned mark in Chennai; thus no cause of action arose here. |
Court's Reasoning and Analysis
The Court undertook a sequential and fact-focused analysis:
- Examination of documentary evidence: the sole document relied upon by the applicant as evidencing sale in Chennai was a bill dated 19-12-2003 from "Lords Paris Tailors" at Chennai describing sale of one "Austin" shirt. The Court noted the applicant's trade name is "Austin Reed" and not "Austin" shirt; even assuming the invoice referred to "Austin Reed", the invoice did not connect the sale to the respondents nor did it demonstrate sale by the respondents in Chennai to a distributor, wholesaler or retailer on a commercial basis.
- Consideration of the alleged magazine publication: the Court asked whether publication in "Inside Fashion" entitled the applicant to sue in Chennai. The Court found no evidence had been produced to show that the magazine had wide circulation in Chennai. Absent proof of wide circulation, the Court concluded the magazine publication did not establish a cause of action in Chennai.
- Assessment of precedents and their applicability: the Court reviewed the authorities cited by both sides and repeatedly emphasized that many decisions cited were fact-specific. The Court distinguished Ramu Hosieries because that case involved a trademark registered at Chennai and an advertisement in Eenadu (shown to have wide Chennai circulation), circumstances not present here.
- Analysis of the plaint and the situs of proceedings: the plaint did not disclose any part of the cause of action arising in Chennai. The rectification/trademark proceedings involving the respondent had been instituted in Calcutta. The mere fact that a trademark application lacks geographic limitation does not, by itself, create a cause of action in Chennai.
- Forum conveniens and natural forum analysis: the Court weighed convenience factors. The applicant is based in England and would in any event have to come to India; the respondents and the majority of relevant documents and witnesses were in Calcutta. The Court concluded it would be unnatural and oppressive to require respondents to litigate in Chennai; the "natural forum" and "forum of convenience" was Calcutta.
- Conclusion from combined analysis: because there was no evidence of commercial-scale sales in Chennai by the respondents, no proof of magazine circulation in Chennai, no registration of the mark at Chennai, and because balance of convenience and natural forum favoured Calcutta, the Court determined leave to sue in Madras should be revoked.
Holding and Implications
HOLDING: The Court revoked the leave previously granted to sue in Madras. Specifically, the opinion records:
- Leave granted in Application No. 1043 of 2003 is revoked.
- Application No. 1923 of 2003 to revoke the leave is ordered as prayed for.
- Application Nos. 249 and Appeal No. 1924 of 2003 are closed.
Implications:
- Direct effect on the parties: The applicant can no longer proceed with the suit in the Madras High Court on the basis of the leave that was earlier granted; the appropriate forum for trial is Calcutta in the view of the Court's analysis of cause of action and convenience.
- No expansion of legal doctrine: The Court's decision is fact-specific and rests on established principles (requirement of proof of commercial-scale sales within the forum, examination of pleadings, balance of convenience and natural forum). The opinion distinguishes prior authorities on their facts rather than laying down any new general principle. The Court did not purport to set any new precedent beyond applying existing tests to the facts before it.
This summary is based exclusively on the content of the provided opinion. No information beyond that text has been added.
1. The applicant is a Company having its registered office in Station Road, THIRSK, North Yorkshire, Y 07, 1 QH, England consisting of three partners namely, defendants 2 to 4, who are carrying on business in Calcutta. The applicant manufactures and sells garments under the trademark "Austin Reed". The respondents run a business under the name and style of "Suntex Garments".
2. The applicant commenced its business in 1900 and soon established a reputation for excellence and high quality. The applicant is an international player and has a trans-country reputation. In India, the applicant's trademark "Austin Reed" was duly registered since 1950. In September 2001, the applicant came to know that the defendants were selling their garments using the applicant's trademark within and outside the territorial jurisdiction of this Court. Further enquiries revealed that the respondents had filed a trademark application in the name "Austin Reed" and a notice was issued on 24-09-2001. There was exchange of correspondence. In none of the letters sent by the respondents did they put up any defence regarding the adoption of the trademark. Instead, they indicated that they were interested in settling the matter.
3. According to the applicant, the suit is therefore, filed for restraining the respondents from using the trademark "Austin Reed" illegally and without justification. The cause of action paragraph relating to the cause of action arising within the jurisdiction of this High Court reads thus:
They also assort their exclusive right to use the trademark all over India including the city of Chennai. It is a threat of using the mark in Chennai. The products with the impugned mark are also being sold commercially in the city of Chennai with the spurious mark.
So, according to them, cause of action arose within the jurisdiction of this Court. Hence, leave was sought for and leave was granted.
4. The respondent, who has filed an application for revocation of leave to sue would submit that there is no justification for filing the suit in the Original Side of this High Court. The applicant carries on business in England. The respondent carries on business in Calcutta. The allegation of sale in Chennai is unfounded and therefore, the leave to sue should be revoked.
5. The learned Counsel for the applicant, who have been granted leave to sue, would submit that the applicants have been in the business for hundred years. The registration in India has been used from 1950. The defendant, by asserting user of the trademark all over India had committed infringement all over India would include the city of Chennai and therefore, this Court has got jurisdiction. An advertisement has been made in a magazine, which has circulation in Chennai and there has been sale in Chennai for which an invoice has been produced. So all these factors would give this Court the jurisdiction to try the suit.
6. The following decisions have been relied on by the learned Counsel for the applicant:
(1) An unreported judgment of a Division Bench of this Court in O.S.A. No. 53/95 in which on facts it was held that the defendants claim of distinctiveness under trademark application through sales all over India necessarily included the city of Madras and therefore, the Division Bench held that the leave to sue shall not be revoked.
(2) In similar circumstances, in O.S.A. No. 82 of 1995 the same Division Bench confirmed the grant of leave.
(3) Another judgment of the Division Bench of this Court reported in Ramu Hosieries, rep. by its Sole Proprietor v. Ramu Hosieries, rep by its Partner Pandela Ramu 1998 III L.W. 784 was also relied on.
7. On the other hand, Mr. B.T. Seshadri, learned I counsel appearing for the respondents would submit that there are no bona fides in the applicant's assertion that part of the cause of action arose within the jurisdiction of this Court and relied on the following judgments:
(1) Parameswara v. V. Mahedevi AIR 1923 Madras 272 (2) Tuticorin Alkali Chemicals and Fertilisers Ltd. v. Cochin Silicate and Glass Industries 1992 (1) L.W. 308.
(3) Gold Seal Engineering Product Pvt. Ltd. v. Hindusthan Manufacturers AIR 1992 Bombay 144 where a Single Judge held that the suit relating to infringement of trademark and passing off was filed in Bombay though the defendants were carrying on business in Calcutta there is no proof that the defendants despatched the goods sold in Bombay or that the supply was on commercial basis. The learned Judge therefore, held that the Bombay High Court has no jurisdiction to entertain the claim.
(4) In Parasham v. Chitandas AIR (39) 1952 Calcutta 82 which was also on the question of revocation of leave, the learned Judge held that leave shall be revoked if revocation is sought for at an early stage, if the decision does not depend on difficult questions of law or fact, if the defendant clearly shows that no part of cause of action arose within the jurisdiction of the Court. If only a part of the cause of action arose within the jurisdiction then if is a question of discretion for the Court to give or refuse leave. The Court shall also take into consideration the balance of convenience and may refuse leave or revoke leave, even if there is no evidence of bad faith or abuse of process. If the Court is satisfied that the suit has been filed 'mala fide' for the purpose of harassing or oppressing the defendants which might result in injustice, the Court should readily refuse the leave or if leave has already been granted revoke the leave. In this case, it has also been held that for deciding whether to revoke leave, the Court shall see which is the "Natural Forum".
(5) In Bihar State Agro-Industries Development Corporation Ltd. v. Ram Chand Khosla AIR 1982 Calcutta 537 the Division Bench of the Calcutta High Court held that the respective advantages and disadvantages of the parties in the facts and circumstances of the case must be considered while deciding the issue of revocation of leave.
(6) Tuticorin Alkali Chemicals and Fertilizers Ltd. v. Cochin Silicate and Glass Industries 1992 I LW 308 a Division Bench of this Court held that in considering the balance of convenience the Court is required to see the plaint and the fact stated therein.
(7) In AIR 1923 Madras 272 (cited supra), the Division Bench held that the real question to be considered is the balance of convenience and that where major portion of the cause of action arise at Madras, leave to sue in Madras is only refused.
(8) In Himachal Pradesh Horticulture Produce Marketing and Processing Corporation Ltd. v. Mohan Meaking Breweries Limited, Solan (Himachal Pradesh) AIR 1981 Punjab and Haryana 117, 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 it is the defendant who 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, wholesaler or retailer and that such a sale is on a commercial scale. In the instant case there was no evidence to show any transaction of sale of goods under the impugned trade mark, made by the defendant at the place where the suit for passing off and injunction was instituted and so the court at that place had no jurisdiction to entertain the suit.
8. The respondent is using the same trademark as the applicant namely "Austin Reed". There can also be no dispute regarding the fact that the applicant has been using the same since the turn of the century. But the continuation of injunction will depend on whether this Court shall try the suit.
9. The applicant can file the suit in this Court if it is shown that there was sale on a commercial scale of shirts bearing the offending name "Austin Reed" by the respondent in India and particularly in Chennai. The document relied on by the applicant is a bill dated 19-12-2003 issued by Lords Paris Tailors at Chennai, describing the goods sold as one "Austin" shirt. The trade name of the applicant is "Austin Reed" shirt and not Austin shirt and even if we assume that this invoice refers to "Austin Reed" shirt, there is nothing to connect it with the respondents nor does it show that the respondents have sold the goods within the jurisdiction of the Court to a distributor, whole-saler or retailer on a commercial basis. Therefore, the bill dated 19-12-2003 cannot help the applicant to sue the respondents in Madras.
10. The next factor to be considered is whether the publication in the magazine known as "Inside Fashion" would entitle the applicant to file the suit here.
11. The learned Counsel for the applicant relied on 1998 III L.W. 784 (cited supra), where it was held that advertisement in "Eenadu" having a wide circulation in Chennai would amount to infringement of the trademark of the applicant which was registered in Chennai. But the decision has to be read as a whole. The Division Bench held that since the applicant's trademark was registered at Chennai it is the situs of the property and the advertisement in Eenadu which is widely circulated in Chennai, would itself amount to infringement of the trademark in Chennai since the trademark has been registered at Chennai. This decision will have no application to the present case.
12. The applicant has not shown that the magazine "Inside Fashion" has a wide circulation in Chennai. Neither party has registered the trademark at Chennai. So the decision cannot apply. The respondents have denied sales to any shop in Chennai and have also denied that any advertisement has been made in a magazine which is circulated in Chennai. It is also their case that merely because in the application for trademark no geographical, limitation is given, it would mount to user in Chennai. The submission must be accepted. In the two unreported judgments the learned Judges have also referred to the facts pleaded in the cases for arriving at the decision. The Division Bench has observed, "once the plaintiff comes forward with the necessary averment..." and "sufficient facts have not been set out..." to show balance of convenience.
13. The plaint does not reveal that any part of the cause of action arose at Chennai. To merely say that an application is made to the Registrar of Trademarks at Calcutta, in which no geographical limitation is given, cannot give rise to a cause of action in Chennai. The rectification application has been made only in Calcutta by the respondent on the ground of non-user of trademark by the applicant.
14. Next we come to 'Forum of convenience' and the "Natural Forum". The applicant is in England and would any way have to come to India to fight his case. The defendants are in Calcutta. It is very unnatural for the applicant to choose Chennai as the 'Forum of convenience'. It is nothing but a ploy to harass the respondents, since the pre-suit talks have failed. The "Natural Forum" as also the "Forum of Convenience" would be "Calcutta". Not even one of the letters, which have been referred to in the plaint and which were exchanged between the parties prior to the suit emanated from Chennai. The proceeding under the Trademark Act are also at Calcutta. The Registration of Trademark is not in Chennai. There is no proof of sale in Chennai. The defendants will unnecessarily be forced to bring all the records which are in Calcutta and bring their witnesses, who are also in Calcutta, to Chennai to defend the case. On the other hand, if the suit is laid in Calcutta the plaintiff, who would anyway have to come to India to prosecute the case, will go to Calcutta instead of Chennai. It makes no difference to the applicant.
15. The convenience factor is in favour of the respondent. But it is not only because of convenience that the respondent's case is accepted. It is primarily because the applicant has failed to show that any part of the cause or action arose at Chennai. Leave granted in Application No. 1043 of 2003 is revoked. Application No. 1923 of 2003 to revoke the leave, is ordered as prayed for Application Nos. 249 and Appeal No. 1924 of 2003 are closed.
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