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Officine Lovata S.P.A v. Ajay Kumar Aggarwal & Anr.
Factual and Procedural Background
This opinion arises from two related applications before the Madras High Court. On 23.6.2004 this Court granted leave under Clause 12 of the Letters Patent to the plaintiff to file a suit on the original side alleging infringement of its registered trade mark and seeking consequential reliefs. The defendants thereafter moved to have that leave revoked. The plaintiff relies on causes of action that include (a) its liaison office in Chennai and the statutory provisions permitting a suit where a plaintiff actually or voluntarily resides or carries on business (section 134(2) of the Trade Marks Act, 1999 and section 62(2) of the Copyright Act, 1957), and (b) the registration of the trade mark with the Trade Marks Registry with Chennai as the appropriate office of jurisdiction. The defendants contend (inter alia) that they are situated outside the territorial jurisdiction of this Court, that the plaintiff's Chennai office is only a liaison office and does not amount to carrying on business (and may breach the Foreign Exchange Management Act), and that the Trade Marks Registry and the register are situated at Mumbai so that the suit should be filed there. The defendants also submitted that the plaintiff, a foreign company, has not complied with sections 592–597 of the Companies Act and therefore is disabled from suing under Section 599 of the Companies Act. The learned judge heard counsel for both sides, analysed statutory provisions and case law, and delivered the opinion confirming the earlier grant of leave.
Legal Issues Presented
- Whether the leave previously granted to the plaintiff to file the suit in this Court should be revoked.
- Whether the plaintiff may institute the trademark infringement suit in the Madras courts on the basis that the situs of the registered trade mark is in Chennai (i.e., whether the appropriate office and the register entries render Chennai the situs giving cause of action).
- Whether section 134(2) of the Trade Marks Act, 1999 (which permits suits where the plaintiff actually or voluntarily resides or carries on business) affects or displaces the plaintiff’s right to sue where the situs of the trade mark is situated.
- Whether the plaintiff’s Chennai liaison office amounts to actually or voluntarily residing in or carrying on business within the jurisdiction of this Court.
- Whether non-compliance by the foreign plaintiff with sections 592–597 of the Companies Act disables it from bringing the present suit under Section 599 of the Companies Act.
Arguments of the Parties
Plaintiff's Arguments
- The plaintiff has a liaison office in Chennai and carries on business within the Court’s jurisdiction.
- Under section 134(2) of the Trade Marks Act, 1999 and section 62(2) of the Copyright Act, 1957, a suit may be instituted where the plaintiff actually or voluntarily resides or carries on business; therefore the plaintiff is entitled to file the suit in Chennai.
- The plaintiff's trade mark is registered at the Trade Marks Registry with Chennai as the appropriate office of jurisdiction, so the situs of the plaintiff's property in the trade mark is situated in Chennai and part of the cause of action arose there.
Defendants' Arguments
- The defendants are situated outside the territorial jurisdiction of this Court and the goods are not sold within this jurisdiction.
- The plaintiff’s Chennai liaison office acts only as a communication channel between the head office in Italy and parties in India and therefore does not constitute actually or voluntarily residing or carrying on business (nor personally working for gain) in Chennai; such activities may contravene the Foreign Exchange Management Act.
- The Trade Marks Registry is situated at Mumbai and the register is available only there; therefore the registered trade mark is deemed to be situated only at Mumbai and the suit should be filed there.
- The plaintiff, being a foreign company, has not complied with sections 592–597 of the Companies Act and therefore is disabled from bringing any action under Section 599 of the Companies Act.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| S.B.S Jayam & Co. v. Krishnamoorthi, 1977-1 M.L.J. 286 | Held that a registered trade mark is proprietary and its situs for the purposes of jurisdiction can be at a branch office (Madras) even if the head office is at Bombay; the situs gives a cause of action where the plaintiff’s property in the mark is situated. | The Court relied on this precedent to support the proposition that the situs of a registered trade mark in a branch office (here, Chennai) can confer jurisdiction to sue in that court. |
| Amrutanjan Limited v. Ashwin Fine Chemicals & Pharmaceuticals, AIR 1991 Madras 277 | Held that where registration is at the Madras office, the situs of the property in the registered trade mark is deemed to be at Madras. | The Court cited this case to reinforce that registration at a particular branch office establishes the situs at that office for jurisdictional purposes; analogously, registration/address details associated with Chennai render Chennai the situs. |
| Ramu Hosiery, 1999 P.T.C. (19) 183 | Held that having regard to registration of the trade mark with the Registrar of Trade Marks at Madras, a part of the cause of action arises at Madras. | The Court used this authority to show that registration at a branch office is sufficient to establish that a part of the cause of action arose at that place, supporting the plaintiff’s choice of forum. |
Court's Reasoning and Analysis
The Court proceeded through statutory construction, rules, and precedent to determine whether leave should be revoked and whether Chennai was a proper forum.
- Statutory framework: The Court noted that the Trade Marks Act, 1958 (section 105) had been repealed and replaced by the Trade Marks Act, 1999; section 105 of the old Act corresponds to section 134(1) of the new Act, and section 134(2) of the new Act is a new provision that expands forum options. Under section 134(2) a “District Court having jurisdiction” includes a District Court within whose local limits the person instituting the suit actually or voluntarily resides or carries on business or personally works for gain.
- Rule and register: The Court examined sections 5 and 6 of the 1999 Act (establishing the Trade Marks Registry and the Register of Trade Marks kept at the head office) and Rule 4(a)(ii) of the Trade Marks Rules, 2002. Rule 4(a)(ii) provides that where there is no entry in the register as to the principal place of business in India of the registered proprietor, the “appropriate office” is the branch office where the address for service in India (as entered in the register) is situated.
- Application to facts: It was not disputed that the plaintiff’s address for service, as given in the registration application, lies within the jurisdiction of the trade marks branch office at Chennai; therefore Chennai is the appropriate office under Rule 4 and, read with sections 5 and 6, the situs of the trade mark in this case is at Chennai.
- Precedent and interpretation: The Court relied on prior Division Bench decisions (S.B.S. Jayam, Amrutanjan, Ramu Hosiery) that held the situs of a registered trade mark at a branch office confers jurisdiction and gives rise to a cause of action where the plaintiff’s property in the mark is situated. The Court reasoned that the new statutory provision (section 134(2)) provides an additional option to plaintiffs to sue where they carry on business but does not oust or diminish the existing right to sue where the situs of the mark is located (i.e., the protections under the old section 105 remain materially relevant under section 134(1)).
- Companies Act challenge: The defendants relied on sections 592–597 and Section 599 of the Companies Act to argue that a foreign company’s failure to comply with registration requirements would disable it from suing. The Court analysed Chapter XI provisions and Section 599: while Section 599 deprives a foreign company of certain procedural rights in relation to suits arising out of contracts or transactions until compliance, the Court interpreted Section 599 as operating in the context of suits concerning contracts, dealings or transactions. Because the present suit is for alleged infringement of a trade mark (not a suit claiming relief on a contract, dealing or transaction), the Court held that Section 599 does not prevent the plaintiff from bringing the present infringement action.
- Scope left open: The Court expressly left open the factual question whether the plaintiff is actually carrying on business in Chennai (the contention that the liaison office is only a communication channel and not a business presence), reserving that point for later determination.
- Conclusion on leave: On the basis of the statutory and precedential analysis, the Court concluded that leave had been properly granted and there was no ground to revoke it.
Holding and Implications
Holding: The Court concluded that the earlier grant of leave to the plaintiff to file the suit in this Court was correctly made and there is no case to revoke it. Accordingly, Appeal No. 3352/2004 is dismissed and the leave already granted in Appeal No. 2306/2004 is confirmed.
Implications:
- The direct effect is that the plaintiff may proceed with its trade mark infringement suit in the Madras courts — the Court found the situs of the registered trade mark to be at the Chennai branch office for the purposes of jurisdiction, and section 599 of the Companies Act does not bar the plaintiff from bringing this infringement action despite any alleged failure to comply with the Chapter XI formalities.
- The Court recognised that section 134(2) of the Trade Marks Act, 1999 provides an additional forum option (suits where the plaintiff carries on business) but held that this new provision does not displace the established right to sue where the situs of the registered trade mark is situated; the opinion relied on earlier case law consistent with that principle.
- The Court did not reach a determination on the factual question whether the plaintiff’s Chennai liaison office constitutes carrying on business within the jurisdiction; that issue remains open for later decision.
- The opinion applies existing precedent and statutory interpretation to the facts and does not purport to establish a novel legal principle beyond the application described; its practical effect is the confirmation of the plaintiff’s forum and permission to proceed in Madras.
R. Balasubramanian, J.:— In the former application, this Court granted leave on 23.6.2004 under Clause 12 of the Letters Patent to the plaintiff to file the suit before this Court. In the latter application, the defendants are before this Court to have the relief already granted revoked. Heard the learned counsel on either side.
2. The plaintiff is before this on it's original side complaining infringement of the plaintiff's registered trade mark and for consequential reliefs. To bring the suit before this Court, the plaintiff relies upon the following causes of action:
“The plaintiff has it's liaison office in India at Chennai and as they are carrying on business at Chennai within the jurisdiction of this Court, under section 134(2) of the Trade Marks Act, 1999 and under section 62(2) of the Copy Right Act, 1957, a suit can be instituted where the plaintiff actually or voluntarily resides or carries on business; the plaintiff is located at and carries on business at Chennai within the jurisdiction of this Court and therefore entitled to file the suit before this Court, the plaintiff's trade mark is registered at the Trade Marks Registry at Chennai with Chennai as the appropriate office of jurisdiction; thus, the situs of the plaintiff's property in the trade mark is situated in Chennai and the infringement of the trade mark having arisen within the jurisdiction of this Court, the material part of cause of action has arisen at Chennai.”
3. The defendant in their application to revoke the leave would contend as hereunder:
“The defendants are admittedly situated outside the territorial jurisdiction of this Court; the goods are not sold within the territorial jurisdiction of this Court; the plaintiffs liaison office is permitted to act as a communication channel between the head office in Italy and various parties in India; such activities would not amount to the plaintiff actually or voluntarily residing or carrying on business or personally working for gain at the said liaison office and such stand taken by the plaintiff is in violation of the provisions of the Foreign Exchange Management Act.”
4. In addition to the above, the defendants would state before the court during the submissions that the Trade Marks Registry is situated at Mumbai and the register of trade marks is available only there; therefore the registered trade mark is deemed to be situated only at Mumbai; as such the suit can be filed only there; that plaintiff is a foreign company; it has to comply with sections 592 to 597 of the Companies Act; since those provisions have not been complied with, under Section 599 of the Companies Act the plaintiff would be disabled from bringing any action in a court of law. Having regard to the arguments advanced before this Court as indicated above, let me now proceed to analyse the case. Under section 105 of the Trade Marks Act, 1958, a suit for infringement of a registered trade mark shall not be instituted in any court inferior to a District Court having jurisdiction to try the suit. The 1958 Act stands repealed by the Trade Marks Act, 1999. Therefore the new Act alone governs the situation. Section 105 in the old Act stands re-drafted as section 134(1) of the now Act. Sub-section (2) of section 134 is a new provision. Under that sub-section, for the purposes of clauses (a) and (b) of sub-section (1), a “District Court having jurisdiction” is stated to mean notwithstanding anything contained in the Code of Civil Procedure or any other law for the time being in force, to include a District Court within the local limits of whose jurisdiction, at the time of institution of the suit or other proceedings, person instituting the suit or proceeding or where there are more than one such persons, any of them, actually or voluntarily resides or carries on business or personally works for gain. Therefore under section 134(2) of the new Act, notwithstanding anything contained in the Code of Civil Procedure or any other law for the time being in force, the plaintiff can move the District Court within whose jurisdiction he actually and voluntarily resides or carries on business. In other words, under sub-section (2) of section 134 of the new Act, the plaintiff has option either to go before the court within whose jurisdiction he is carrying on business - that being the sole cause of action or before any other court, where the cause of action has arisen. Such an option was not avaliable under section 105 of the old Act. Arguments have been advanced by the learned counsel on either side - the plaintiff submitting that it is carrying on business within the jurisdiction of this Court while the defendants asserting the contra. Having regard to the other points advanced by the learned counsel for the defendants for revoking the leave, I leave this question to be taken up for a decision at the end.
5. The plaintiff mainly relies upon the situs of the trade mark as giving him a cause of action to move this Court. Under section 5 of the Trade Marks Act, 1999, hereinafter referred to as the “1999 Act”, there shall be a Trade Marks Registry. There is no dispute that the head office of the Trade Marks Registry, as specified by the Central Government, for the purpose of facilitating the registration of trade marks, is at Mumbai and there are various branch offices of the Trade Marks Registry. Under section 6 of the “1999 Act”, a record called the Register of Trade Marks shall be kept at the head office of the Trade Marks Registry, wherein all the details relating to the registered trade mark shall be entered. Under sub-section (6) of section 6 of the “1999 Act”, a copy of the register and such of the other documents mentioned in section 148 of the Act shall be kept in each branch office. Under Rule 4(a)(ii) of the Trade Marks Rules, 2002, hereinafter referred to as the Rules, the appropriate office of the Trade Marks Registry for the purpose of making an application for registration of a trade mark under section 18, or for other purposes mentioned in Rule 4, shall be where there is no entry in the register as to the principal place of business in India of the registered proprietor at the place mentioned in the address for service in India as entered in the register. In other words, the address for service of the registered proprietor, if there is no entry in the register as to it's principal place of business in India, then the branch office of the Trade Marks Registry within which such address for service is situated would be the appropriate office. It is not in dispute that the address for service of the plaintiff, when it moved for it's registration of trade mark, is within the jurisdiction of the trade marks branch office at Chennai and therefore it would be the appropriate office. Therefore, though the trade mark is registered and reflected in the register maintained in the head office of the Trade Marks Registry at Mumbai, yet the Trade Marks Registry's branch office at Chennai would be the appropriate office for the purpose of section 18 of the Trade Marks Act. As already stated, section 18 deals with an application for registration of a trade mark. Reading sections 5 and 6 of the “1999 Act” with Rule 4 of the Rules, there is no difficulty at all in concluding that the situs of the trade mark involved in this case is at Chennai.
6. A Division Bench of this Court in the case 1977-1-M.L.J 286 (S.B.S Jayam & Co. v. Krishnamoorthi) held as follows:
“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 territorial jurisdiction regarding the powers 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 plaintiff's property itself is situated.”
7. In A.I.R 1991 Madras 277 (Amrutanjan. Limited v. Ashwin Fine Chemicals & Pharmaceuticals) this Court held that “the registration of the trade mark being at Madras office, the situs of the property in the registered trade mark is deemed to be at Madras”. In the judgment reported in 1999 P.T.C (19) 183 in the matter of Ramu Hosieries, a Division Bench of this Court held that “having regard to the registration of the trade mark, which is alleged to have been interfered with, with the Registrar of Trade Marks at Madras, it can be said that a part of the cause of action has arisen at Madras”. The above referred to case laws make it abundantly clear that the situs of the trade mark would give a cause of action for the party complaining infringement of the said trade mark to go before the court within whose jurisdiction the said situs is situated.
8. In my opinion, the jurisdiction of the court as prescribed under section 105 of the old Act and under section 134 of the new Act do not affect the right of a party complaining infringement of a trade mark to go before the court within whose jurisdiction the situs of the trade mark is situated. Learned counsel appearing for the defendants brought to my notice a book on “Law of Trade Marks and Geographical Indications” by K.C Kailasam/Ramu Vedaraman wherein the authors have stated as follows:
“Thus in vies of the change in law and the general new legislative scheme, it would appear that the jurisdiction for filing a suit for infringement or passing of under section 134 is not to be based on or linked with the operative jurisdiction of the head office or branch offices.”
The change brought about under section 134(2) of the new Act is only giving an additional option to the party complaining of infringement of trademark to go before a court within those jurisdiction he carries on business and such a change do not affect the existing rights available under the old Act namely, under section 105 of the old Act, which is imparie materia with section 134(1) of the new Act. All the case laws referred to above are rendered in the context of section 105 of the old Act. Therefore I have no difficulty at all in holding that the situs of the trade mark (stated to be infringed), being situated in the appropriate office of the Trade Marks Registry at Chennai, would give a cause of action for the plaintiff to come before this Court.
9. Learned counsel for the defendants strenuously contended that the plaintiff, having failed to comply with sections 592 to 597 of the Companies Act, cannot bring a suit before this Court, since the plaintiff is disabled from doing so under Section 599 of the Companies Act.
10. Chapter XI of the Companies Act is made applicable to foreign companies. Under section 592, foreign companies having a place of business within India, within 30 days of the establishment of the place of business, deliver to the Registrar for registration certain documents and details. Under section 593, if any alteration is made or occurs in any of the records mentioned therein, then also the company shall, within the prescribed time, deliver to the Registrar the particulars of the alterations. Section 594 deals with accounts of a foreign company while section 595 casts an obligation on the foreign company to give the details mentioned in that section. Sections 596 and 597 speak about service on foreign company and the office where the documents have to be delivered. Section 598 deals with penalties. Section 599 of the Companies Act provides that if any foreign company fails to comply with the requirements of sections 592 to 598 of the Companies Act, then such failure would not affect the validity of any contract, dealing or transaction, entered into by the company or it's liability to be sued in respect thereof. In the same breadth, section 599 provides that in the event of such failure, the company shall not be entitled to bring any suit claiming any set off, make any counter or institute any legal proceedings in respect of any such contract, dealing or transaction until it has complied with the provisions of this part. The arguments of the learned counsel for the defendants is that, since the plaintiff is not shown to have complied with sections 592 to 598 of the Companies Act, the plaintiff is disabled from bringing the present suit. I am unable to appreciate this contention. In my opinion, such a bar on the right of the company would come into operation only when the company wants to bring a suit on a contract, dealing or transaction against the other person to the contract, dealing or transaction, until it has complied with the provisions of sections 592 to 598 of the Companies Act. In the same breadth, the company also would be disabled from pleading a set off or counter claim when it faces a suit initiated by a party to the contract, dealing or transaction. On the facts of this case, the plaintiff is not before this Court claiming any relief on a contract, dealing or transaction against the defendants. But on the other hand, the plaintiff is only complaining about the infringement of it's trade mark. Since I have decided against the defendants on the above two points, I am not inclined to decide the other point i.e, whether the plaintiff is carrying on business within the jurisdiction of this Court and the same is left open.
11. In the light of my above referred to discussion, I find that leave has been properly granted and no case is made out for revoking the same. As a result thereof, Appeal No. 3352/2004 is dismissed and leave already granted in Appeal No. 2306/2004 is confirmed.
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