Shabbir Medical Hall v. Mohammed Naseer

M. Chockalingam, J.

1. These two Intra-Court Appeals have arisen from the common order of the learned Single Judge of this Court made in O.A No. 460 of 2008 and A. No. 2025 of 2009.

2. The Court heard the learned Senior Counsel for the appellant and also for the respondent and looked into all the materials available and in particular, the order under challenge.

3. Pending the Suit in C.S No. 422 of 2008 filed pursuant to the leave granted, the plaintiff also filed an Application seeking interim injunction. While the matter stood thus, the defendant on appearance, made an Application in A. No. 1633 of 2009 for rejection of the Plaint and also an Application in A. No. 2025/2009 for revocation of the leave already granted by the Court in A. No. 1707 of 2008. On enquiry, the learned Single Judge has made an order revoking the leave already granted and consequent upon the same, the other Application for rejection of Plaint was closed, and the Application for interim injunction was dismissed. Aggrieved over the same, the plaintiff has brought forth these two appeals before this Court.

4. As could be seen from the materials available, the plaintiff has filed the suit for the following reliefs:

(a) A permanent injunction restraining the defendant from Manufacturing, Selling, Advertising and Offering for sale Tea using same or similar get up, and colour scheme used by the Defendants shown in Document No. 2 and trade mark Family Tea or any other visually similar mark or in any media and use the same in invoices, letter heads and visiting cards or by using any other trade mark which is in any way visually or deceptively or phonetically similar to the plaintiff's registered Trade Mark “Ispahani Tea” as shown in Document No. 1 or in relation to any Tea and use the same pouches, packets or use the mark in invoices, letter heads and visiting cards or any other trade literature or by using any other Trade Mark which is in any way visually, or phonetically similar to the plaintiff's registered Trade Mark No. 331910 in class 30 or in any manner infringe the Plaintiff's registered Trade Mark.

(b) A direction to the defendant to surrender to the plaintiffs all the packing material, cartons, advertisement materials and hoardings, letter-heads, visiting cards, office stationery and all other materials containing/bearing deceptively similar the color scheme and get up as shown in Document No. 2 or other deceptively similar trade mark used in the pouches and packets in respect of Tea.

(c) A direction to the defendant to render an account of profits made by them by the use of the impugned Trade Mark and get up as shown in Document No. 2 on the goods referred and a decree in the Suit for the profits found to have been made by the defendant after the defendant has rendered accounts.

(d) For costs.

5. The plaintiff has alleged that they are partnership firm carrying on business in manufacturing and marketing tea since 1965 having its trade mark “Ispahani” with respect to their goods. The same Trade Mark has its unique colour scheme, get up and lay out for the wrapper. The said Trade Mark has been used by the plaintiff continuously and extensively without any interruption since its adoption. With a view to acquire statutory protection, the plaintiff applied for registration of the Trade Mark on 26.12.1977, with respect to tea. Though the said Trade Mark was originally registered in the name of its founder partner, in the year 1983, pursuant to the change in the composition of the firm, an Application was filed before the Registrar of Trade Mark to record the new partners. The same was also reflected in the journal with effect from 1983. When the firm underwent another change of composition in the year 1999, necessary forms were filed before the Trade Mark Registrar to record the new partners as its subsequent proprietors. Thus, the Partners of the Firm are now registered Proprietors of the Trade Mark along with the present colour scheme, get up and layout. They filed an Application for another registration of the Trade Mark. The same was also published in the Trade Mark Journal. They also filed an Application and got registration of the copyright, and thus the plaintiff is a registered Proprietor of the Copyright of the colour scheme, get up and layout et.

6. It is further alleged that the plaintiff has been spending huge money to promote the product and also there was lot of turnover. The respondent who was actually engaged in the service of the applicant in 1980 after putting in service of 18 years, left the service. During the year 1998, he started a trading company by name Minor Tea Company and commenced manufacturing and marketing tea under the Trade Mark-Family Tea with the deceptively similar colour scheme, get up and layout. Consequent upon the same, the plaintiff filed a Complaint to the police task force in the month of July 2001, and a case was registered in Crime No. 35 of 2001. The matter was taken up for trial by the II Metropolitan Magistrate's Court, Hyderabad, and the respondent was convicted. But, when the said judgment was appealed against in C.A No. 246 of 2003, on the file of the Sessions Court, he was acquitted. Thereafter, the plaintiff filed a Criminal Revision Case before Andra Pradesh High Court, and the same is pending. After the order of acquittal, the respondent had filed a Suit for damages in O.S No. 273 of 2005, and the same is pending. Even thereafter, the respondent had adopted the identical colour scheme, get up and layout with respect to the Trade Mark Family Tea. The respondent issued a legal notice to the plaintiff alleging that the plaintiff was engaged in infringing the respondent's copyrights. In the said notice, the defendant has made a false claim as the registered Proprietor of the Trade Mark with colour scheme, get up and layout. It was suitably replied. The appellant has no objection for the use of the word Family Tea, but has objection only to the colour scheme, get up and layout used by the respondent which is a slavish imitation of the plaintiff's Trade Mark. Thus, there was an infringement of the Trade Mark in title, and also as a prior user and a registered Trade Mark owner, the plaintiff has exclusive right to the distinctive colour scheme and get up. The respondent is well aware of the goodwill and reputation attached to the plaintiff's Trade Mark and got knowledge of the nature and scope of the plaintiff's business and its manufacturing activities. The conduct of the respondent would amount to falsification of the Trade Mark which was an offence punishable under the Trade Marks Act. Under such circumstances, there arose a necessity for filing the Suit for the said reliefs.

7. At the time of filing of the Suit, an Injunction Application was taken out by the plaintiff. The defendant on appearance took out two Applications one to reject the Plaint and the other to revoke the leave already granted to the plaintiff. The learned Single Judge on enquiry allowed the Application for revocation and dismissed the Application for interim injunction. Under the circumstances, these Appeals have arisen.

8. Advancing arguments on behalf of the appellant, the learned Senior Counsel Mr. R. Muthukumaraswamy would submit that the plaintiff is the registered Proprietor of the Trade Mark-Ispahani Tea which is registered at the Trade Mark Registry at Chennai; that as per the judicial pronouncements, the Courts at Madras will have jurisdiction to entertain and try the Suit with respect to infringement of registered Trade Mark; that it is pertinent to note that since the appellant's Trade Mark was registered at Chennai the situs of the marks is at Chennai, and thus the cause of action in such a case can be taken to arise partly at Madras where the Trade Mark was registered; that the learned Single Judge should have taken into consideration the bad faith in the adoption of the Family Tea wrapper since the defendant was a former employee of the plaintiff having served the plaintiff for 18 years; that it is pertinent to note that the provisions of Section 62(2) of the Act and Section 134(2) of the Trade Marks Act would not apply to the present facts of the case; that leave was originally granted to the appellant since a part of cause of action had arisen within the jurisdiction of this Court; that the prima facie case, balance of convenience and irreparable loss were in favour of the appellant, and hence the order of the learned Single Judge has got to be set aside.

9. The Court heard the learned Senior Counsel for the respondent Mr. V. Prakash who made his sincere attempt of sustaining the order of the learned Single Judge. The Court paid its anxious consideration on the submissions made.

10. As could be seen above, it was a Suit for permanent injunction against the respondent alleging that the Trade Mark and copyrights in question were exclusively owned by the appellant. Admittedly, the appellant/plaintiff sought for the leave only on the ground that the Trade Mark was registered with the Registrar of Trade Marks at Madras, and the cause of action has partly arisen in Madras, and hence this Court has got jurisdiction to entertain the Suit. In support of his contentions, the learned Senior Counsel relied on the following decisions:

(i) S.B.S Jayam & Co. v. Krishnamoorthy, Proprietor, Gopi Chemical Industries, 1977 (1) MLJ 286;

(ii) Harold Charles Pinto v. Hilda Meneres, 1977 TLNJ 214;

(iii) This Court's decision in Amrutanjan Ltd. v. Mehta Unani Pharmacy in A. No. 4924 of 1979 in C.S No. 658 of 1979;

(iv) This Court's decision in Amrutanjan Ltd. v. Ashwin Fine Chemicals & Pharmaceuticals, in C.S No. 74 of 1982;

(v) Parle Products P. Ltd. v. J.P & Co., Mysore, AIR 1972 SC 1359;

(vi) Midas Hygiene Industries P. Ltd. and another v. Suddin Bhatia and others, 2004 (2) CTC 77 (SC): 2004 (1) CTMR 86;

(vii) Ramu Hosieries, rep. by. M. Murugeshan v. Ramu Hosieries rep. by Pandela Ramu and another, 1998 (2) CTC 230: 1999 PTC (19) 183 (DB);

(viii) Officine Lovata S.P.A… v. Ajay Kumar Aggarwal & Anr.…, 2005 (30) PTC 465 (Mad.);

(ix) Prakash Roadline Ltd…Plaintiffs; v. Prakash Parcel Service (P) Ltd…Defendant., 1992 IFLR (17) 251;

(x) Duroflex Pvt. Ltd. v. R.P. Home Private Ltd., 2008 (1) CTC 601.

11. From the reading of all the above decisions, it would be quite clear that the following principles are enunciated:

(i) The alleged infringement is not only at the place where the defendant markets its goods, but also where the plaintiff's property itself is situated.

(ii) The plaintiff has to establish a cause of action by showing that he has a proprietary right in the Trade Mark and the same has been infringed by the other party. He can establish the same by showing that the Trade Mark was registered with the Registrar of Trade Marks. If so, it can be taken that the cause of action has partly arisen at the place where it is registered.

(iii) Leave can be granted to sue only in case where cause of action has arisen in part within the local limits of the ordinary original jurisdiction.

(iv) The right of interest in a Trade Mark can only be a movable property and where the infringement has taken place partly in one jurisdiction by way of advertisement and partly in another jurisdiction by marketing the product, then the registered owner of the Trade Mark can maintain the suit at the place where the cause of action has arisen partly or wholly which includes place of jurisdiction, advertisement or marketing.

12. Contrary to the above contentions, it is contended by the respondent's side that no part of cause of action has arisen within the jurisdiction of this Court and hence, leave granted was rightly revoked. In order to substantiate their contention, the learned Senior Counsel for the respondent relied on the decisions of this Court reported in Parle Products Pvt. Ltd. v. Surya Food & Agro Ltd., 2007 (35) PTC 542 (Mad.) and Austin Reed Limited v. Suntex Graments and others, 2007 (35) PTC 774.

13. After considering the contentions put forth and also the settled principles of law in this regard, this Court is of the considered opinion that the appellant has not shown any part of cause of action which has arisen within the local limits of this Court. Paragraph 30 of the Plaint reads as follows:

“30. The cause of action for the above Suit for infringement and passing off arose from October 2007, when the Defendant resumed the sale of infringing goods after the order of acquittal and the Defendant's goods were available in the market bearing the deceptively similar wrapper Family Tea. The cause of action continues to arise with every sale of the Defendant's impugned goods. Therefore, the Suit is filed within the period of limitation. This Hon'ble Court has got jurisdiction to entertain and try the Suit on account of infringement of registered Trade Mark since the Plaintiff's mark is registered at the Trade Mark Registry at Chennai and the appropriate office of the Trade Mark Registry is situate at Chennai within the jurisdiction of this Hon'ble Court.”

14. Nowhere in the entire body of the Plaint, it is stated that either the plaintiff or the defendant are marketing their goods within the jurisdiction of this Court. What are all found in paragraph 30 as stated above as to the cause of action, is that the plaintiff's trade mark was registered at the Trade Mark Registrar at Chennai, and the appropriate office of the Trade Mark Registry is situated at Chennai. At this juncture, it is pertinent to point out that the sole ground on which the plaintiff is alleging that a part of cause of action has arisen at Chennai is that the Trade Mark Registry is located at Chennai. No doubt the location of the Trade Mark Registry cannot be a cause of action. Admittedly, the Trade Mark certificate was issued to the plaintiff by Mumbai Trade Mark Registry and not by Madras Registry.

15. As rightly pointed out by the learned Senior Counsel for the respondent, the plaintiff has not filed any material to establish that the Trade Mark Registrar at Chennai has got any connection to the matter in the Suit. It is an admitted position, as could be seen from the available materials, that both the plaintiff and the defendant are residents of Hyderabad and carrying on their business there. It is not urged that either of them had got any trading activity there. The contention put forth by the respondent's side that the license was issued with the specific condition to trade within Hyderabad area only is not disputed. Thus there is nothing to indicate that any part of cause of action has arisen within the local limits of this Court.

16. Apart from the above, the act of infringement complained of is from the year 1998. The case registered in Crime No. 35 of 2001 though ended in conviction before the Trial Court, on Appeal, the judgment of the Trial Court was set aside in the year 2004. The respondent has also filed a Suit for damages pending on the file of the Court of Civil Jurisdiction. Apart from that, the respondent has issued a legal notice in the month of February 2008 alleging that the plaintiff has infringed the copyright of the respondent. After issuing a reply therefor in the month of March 2008, the plaintiff has brought forth the instant Suit alleging that part of cause of action has arisen within the jurisdiction of this Court. This Court had an occasion to consider a similarly placed factual matrix in the following decisions:

(i) It has been held in a case reported in Parle Products Pvt. Ltd. v. Surya Food & Agro Ltd., 2007 (35) PTC 542 (Mad.), as follows:

“16. If there is nothing to show that sales have taken place within the jurisdiction of this Court, then leave cannot be granted. There is no other circumstance, which justifies the filing of the Suit, within the jurisdiction of this Court because both the respondent and the applicant carry on business elsewhere. Therefore, not only on the ground of forum convenience, but also because the applicant prima facie has failed to establish to the satisfaction of this Court that sales had in fact taken place within the jurisdiction of this Court, leave must be revoked.”

(ii) In a decision reported in Austin Reed Limited v. Suntex Graments and others, 2007 (35) PTC 774, it has been held thus:

“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 Trade Marks at Calcutta, in which no geographical limitation is given, cannot give rise to a cause of action in Chennai. The Rectification Application also has been made only in Calcutta by the respondents on the ground of non-use of Trade Mark 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 Trade Marks Act are also at Calcutta. The Registration of Trade Mark 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.”

17. The above decisions are fully applicable to the present factual position of the case. Thus, the averments made in the Plaint do not make out any part of the cause of action and thus the plaintiff has not shown any part of the cause of action which has arisen within the local limits of this Court. Therefore, the learned Single Judge was perfectly correct in revoking the leave originally granted in favour of the appellant, and consequently, the Application for interim injunction has been dismissed. This Court is unable to see any merit in both the Appeals.

18. In the result, both these Original Side Appeals fail, and the same are dismissed confirming the order of the learned Single Judge. The parties are directed to bear their costs. Consequently, connected MPs are also dismissed.