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Pragathi Rubber Mills & Ors. v. Paragon Rubber Industries
Structured Summary of the Opinion (K.T. Sankaran, J.)
Factual and Procedural Background
This revision arises out of O.S. No. 2 of 2001 before the District Judge, Kottayam. The plaintiff (respondent in this revision) sued under the Copyright Act, 1957 and the Trade and Merchandise Marks Act, 1958, also alleging passing off. An interim injunction was granted in favour of the plaintiff and that order was challenged by the defendants in C.M.A. No. 52 of 2003; the High Court disposed of that appeal directing the trial court to proceed to dispose of the suit. The defendants subsequently filed I.A. No. 322 of 2004 seeking a preliminary ruling on territorial jurisdiction, contending that the District Court, Kottayam lacked territorial jurisdiction. The trial court dismissed that application (order dated 22.3.2004), which was challenged in C.R.P. No. 363 of 2004; this Court allowed the revision and directed the trial court to decide the territorial jurisdiction issue afresh. On 6 October 2004 the trial court held that it had territorial jurisdiction to try the suit. The defendants challenge that order in the present civil revision petition.
Legal Issues Presented
- Whether the District Court, Kottayam has territorial jurisdiction to try the suit in respect of the plaintiff's claims under the Copyright Act, 1957 by virtue of Section 62(2) of the Copyright Act.
- Whether the District Court, Kottayam has territorial jurisdiction to try the plaintiff's claims under the Trade and Merchandise Marks Act, 1958 (to be determined with reference to Section 20 of the Code of Civil Procedure, 1908), and whether such reliefs are maintainable before that court.
- Whether a court can entertain a composite suit joining causes of action under the Copyright Act and the Trade and Merchandise Marks Act so as to confer territorial jurisdiction for causes of action for which the court otherwise lacks jurisdiction.
- Whether the defendants have waived the right to raise a plea of lack of territorial jurisdiction by not raising it earlier (for example at the interlocutory or appeal stage).
Arguments of the Parties
Defendants' Arguments (as represented in the opinion)
- The order of the trial court holding territorial jurisdiction (6.10.2004) is liable to be set aside based on Supreme Court decisions such as Dhodha House v. S.K. Maingi and Dabur India Ltd. v. K.R. Industries, which limit the circumstances in which Section 62(2) of the Copyright Act can confer territorial jurisdiction for other causes of action.
- Additional authorities were cited (Kurivalli Lingayya Setty v. Sitharam Agarwala; Laxmikumar Srinivas Das v. Krishnaram Baldev Bank, Lashkar; M/s. Intas Pharmaceuticals Ltd. v. Allergan Inc.; Dharampal Premchand Ltd. v. Golden Tobacco Products) in support of the contention that the trial court's finding on jurisdiction was incorrect. The opinion records these citations but does not elaborate detailed arguments from them beyond citation.
Plaintiff's (Respondent's) Arguments (as represented in the opinion)
- The plaintiff submitted that the defendants have waived the contention of lack of territorial jurisdiction because they did not raise it earlier when the temporary injunction and the appeal therefrom were considered; the plea was raised only later by filing I.A. No. 322 of 2004 as a preliminary issue.
- The plaintiff relied on authorities (Hira Lal Patni v. Sri Kali Nath; Bahrein Petroleum Co. Ltd. v. P.J. Pappu) to support the proposition that the question of territorial jurisdiction had been waived.
- The plaintiff pointed to the High Court direction in C.M.A. No. 52 of 2003 to dispose of the suit expeditiously and argued that the defendants’ late challenge constituted waiver. The opinion records the plaintiff’s contention but also records the court’s contrary view on waiver.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Dhodha House v. S.K. Maingi, (2006) 9 SCC 41 : AIR 2006 SC 730 | Explains scope of Section 62(2) of the Copyright Act (additional forum) and limits on conferring jurisdiction for other causes of action; the conditions in S.62(2) must be satisfied, and a court's jurisdiction under S.62(2) cannot be presumed. | The court relied on Dhodha House to conclude that S.62(2) provides an additional forum only if its conditions are satisfied and that jurisdiction under S.62(2) does not automatically confer jurisdiction in respect of causes of action for which the court otherwise lacks territorial jurisdiction. |
| Dabur India Limited v. K.R. Industries, (2008) 10 SCC 595 : AIR 2008 SC 3123 | Affirms that S.62(2) of the Copyright Act confers wider jurisdiction than Section 20 CPC; explains limits of a composite suit and that a court cannot try a cause of action for which it has no jurisdiction. | The court used Dabur to reinforce that S.62(2) gives a broader forum for copyright claims but does not permit a court to entertain causes of action (e.g., under the Trade and Merchandise Marks Act) for which it lacks territorial jurisdiction; composite-suit doctrine cannot be used to confer jurisdiction where none exists. |
| Kurivalli Lingayya Setty v. Sitharam Agarwala, AIR 1955 Madras 595 | The opinion records the citation but does not set out any specific rule from the case. | The decision was cited by defendants' counsel; the opinion does not elaborate the particular principle relied upon from this case. |
| Laxmikumar Srinivas Das v. Krishnaram Baldev Bank, Lashkar, AIR 1954 Madhya Bharat 156 | The opinion records the citation but does not set out any specific rule from the case. | Cited by defendants' counsel; the opinion does not describe how this authority was applied or the precise principle invoked. |
| M/s. Intas Pharmaceuticals Ltd. v. Allergan Inc., AIR 2007 Delhi 108 | The opinion records the citation but does not set out any specific rule from the case. | Cited by defendants' counsel; no detailed application from the opinion text. |
| Dharampal Premchand Ltd. v. Golden Tobacco Products, AIR 2007 Delhi 266 | The opinion records the citation but does not set out any specific rule from the case. | Cited by defendants' counsel; the opinion does not elaborate the rule or its use. |
| Hira Lal Patni v. Sri Kali Nath, AIR 1962 SC 199 | Cited for the proposition that a party may be held to have waived certain objections (as relied upon by the plaintiff). | The plaintiff relied on this authority to argue waiver; the court considered the waiver argument but ultimately rejected the plaintiff's plea of waiver on the facts of this case. |
| Bahrein Petroleum Co. Ltd. v. P.J. Pappu, AIR 1966 SC 634 | Cited by the plaintiff in support of the waiver contention. | The plaintiff relied on this authority to support the contention of waiver; the court nonetheless rejected the waiver contention, finding that the defendants had preserved the point in their written statement. |
Court's Reasoning and Analysis
The court proceeded by applying the statutory provisions and the Supreme Court authorities cited in the record:
- Statutory distinction: The court first noted that Sub-section (2) of Section 62 of the Copyright Act, 1957 explicitly defines "District Court having jurisdiction" for purposes of the Copyright Act to include, notwithstanding the Code of Civil Procedure, a District Court within whose limits the plaintiff actually and voluntarily resides or carries on business or personally works for gain at the time of institution of the suit. There is no similar provision in the Trade and Merchandise Marks Act, 1958, so territorial jurisdiction for those claims must be examined under Section 20 CPC.
- Application of precedent: Relying on Dhodha House and Dabur, the court emphasized that Section 62(2) creates an additional forum for copyright plaintiffs but that the conditions of S.62(2) must be satisfied; courts must not readily presume jurisdiction beyond what the statute confers. The decisions also limit the scope of a "composite suit" and hold that a court cannot acquire jurisdiction for a cause of action for which it otherwise lacks jurisdiction merely because another cause of action (e.g., copyright infringement) is within its jurisdiction.
- Temporal scope of statutes: The court observed that the Trade Marks Act, 1999 contains a provision similar to Section 62(2), but that Act came into force on 15.9.2003. Because the suit in question was filed in 2001, the 1999 Act could not be applied to confer jurisdiction for the Trade and Merchandise Marks Act claims in this case.
- Result on territorial jurisdiction: Applying the statutory text and Supreme Court precedents, the court concluded that the District Court, Kottayam does have jurisdiction in respect of the reliefs under the Copyright Act (and incidental matters) by virtue of Section 62(2). However, the court held that reliefs sought under the Trade and Merchandise Marks Act, 1958 would not be maintainable before the District Court, Kottayam because that court lacks territorial jurisdiction for those claims under Section 20 CPC.
- Amendment and remedial course: In light of the authorities, the court considered the correct practical course to be allowing the plaintiff an opportunity to amend the plaint so that the suit is framed in a manner maintainable before the District Court, Kottayam (i.e., limiting or adjusting claims so that the court has jurisdiction over the matters pleaded). The court directed that if an application to amend is filed, the trial court should consider it on merits after affording both parties an opportunity to be heard.
- Waiver contention: The court rejected the plaintiff's contention that the defendants had waived the territorial jurisdiction point. Although the defendants did not press the issue during the interlocutory injunction stage, the court noted that lack of detailed specific reasons in the written statement does not amount to waiver, and the record shows the question of jurisdiction was raised in the written statement and later by application; therefore the plea of waiver was not accepted.
- Conclusion: Because the trial court's order holding that the suit in its entirety was maintainable before the District Court, Kottayam was incorrect (insofar as it treated Trade and Merchandise Marks Act reliefs as maintainable there), that order was set aside. The court's disposition grants the plaintiff liberty to amend the plaint and directs the trial court to entertain any amendment application on its merits with hearing.
Holding and Implications
Core Ruling: The Civil Revision Petition is allowed. The order of the trial court dated 6.10.2004 (holding that the District Court, Kottayam had territorial jurisdiction to try the suit as framed) is set aside to the extent that it treated all reliefs (including those under the Trade and Merchandise Marks Act, 1958) as maintainable before that court.
Implications:
- Direct effect on the parties: The court held that the District Court, Kottayam does have territorial jurisdiction only in respect of the plaintiff's reliefs under the Copyright Act, 1957 (and incidental matters) by virtue of Section 62(2). The Reliefs under the Trade and Merchandise Marks Act, 1958 are not maintainable before the District Court, Kottayam as it lacks territorial jurisdiction for those claims.
- Remedial direction: The plaintiff is given liberty to amend the plaint so that the suit will be maintainable before the District Court, Kottayam consistent with the principles laid down by the Supreme Court authorities referred to in the opinion. If the plaintiff files an application to amend, the trial court must consider it on merits after giving both parties an opportunity to be heard.
- Precedential impact: The opinion relies on existing Supreme Court authorities (as cited) to apply established principles governing Section 62(2) of the Copyright Act and the limits on composite suits. The opinion does not purport to lay down a new legal principle beyond applying those authorities to the facts; its practical consequence is an order permitting amendment and correcting the trial court's earlier conclusion on maintainability.
This summary is prepared exclusively from the content of the provided opinion. No facts or conclusions beyond what is stated in the opinion have been added.
K.T Sankaran, J.:— The defendants in O.S No. 2 of 2001, on the file of the court of the District Judge, Kottayam, challenge the order dated 6.10.2004 in I.A No. 322 of 2004 in O.S No. 2 of 2001, by which the court below held that it has got territorial jurisdiction to try the suit.
2. The suit was filed by the respondent claiming reliefs under the Copyright Act, 1957 and the Trade and Merchandise Marks Act, 1958. The plaintiff also sought for reliefs alleging that there was passing off the goods of the plaintiff as the goods of the defendants.
3. It is stated that an interim injunction was granted in favour of the plaintiff. The defendants challenged that order in C.M.A No. 52 of 2003 before the High Court. The was disposed of directing the trial court to dispose of the suit. Thereafter, the defendants filed I.A No. 322 of 2004 to try the question of territorial jurisdiction as a preliminary issue. The defendants raised a contention that the District Court, Kottayam has no territorial jurisdiction to try the suit. The court below dismissed the application by the order dated 22.3.2004 That order was challenged in C.R.P No. 363 of 2004. This Court allowed the revision. The trial court was directed to decide the issue of territorial jurisdiction afresh.
4. Thereafter, the trial court passed the order dated 6th October, 2004 holding that it has territorial jurisdiction to try the suit. The said order is challenged by the defendants in this revision. The court below held that in view of Section 62 of the Copyright Act, 1957 the suit is maintainable before the District Court, Kottayam.
5. Sri. R.D Shenoy, the learned senior counsel appearing for the petitioners submitted that the order passed by the court below is liable to be set aside in view of the decisions of the Supreme Court in Dhodha House v. S.K Maingi., (2006) 9 SCC 41 : AIR 2006 Supreme Court 730 : JT 2006 (1) SC 123 and Dabur India Limited v. K.R Industries, AIR 2008 Supreme Court 3123 : (2008) 10 SCC 595. The learned senior counsel also referred to the decisions in Kurivalli Lingayya Setty v. Sitharam Agarwala, AIR 1955 Madras 595, Laxmikumar Srinivas Das v. Krishnaram Baldev Bank, Lashkar, AIR 1954 Madhya Bharat 156, M/S. Intas Pharmaceuticals Ltd.; v. Allergan Inc., AIR 2007 Delhi 108 and Dharampal Premchand Ltd. v. Golden Tobacco Products, AIR 2007 Delhi 266.
6. Sri Narendra Kumar, the learned counsel appearing for the respondent submitted that the plea of lack of territorial jurisdiction is not available now to the defendants as they shall be deemed to have waived that contention. It is pointed out that when the application for temporary injunction and the appeal there from were being considered, the defendants did not raise the contention that the court has no territorial jurisdiction. A direction was issued by the High Court in C.M.A No. 52 of 2003 to dispose of the suit expeditiously. Only at that juncture, I.A No. 322 of 2004 was filed praying for deciding the question of lack of territorial jurisdiction as a preliminary issue. The counsel relied on the decisions in Hira Lal Patni v. Sri Kali Nath, AIR 1962 Supreme Court 199 and Bahrein Petroleum Co. Ltd. v. P.J Pappu, AIR 1966 Supreme Court 634 in support of this contention.
7. Sub Section 2 of Section 62 of the Copyright Act, 1957 reads thus:
“(2) For the purpose of Sub Section (1), a “District Court having jurisdiction” shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or other proceeding or, where mere are more than one such persons, any of them actually and voluntarily resides or carries on business or personally works for gain.”
8. There is no similar provision in the Trade and Merchandise Marks Act, 1958. Therefore, the territorial jurisdiction in so far as it relates to the relief under the Trade and Merchandise Marks Act, 1958 has to be considered with reference to Section 20 of the Code of Civil Procedure. There is no case for the plaintiff that the District Court, Kottayam would have jurisdiction, if Section 20 of the Code of Civil Procedure is applied.
9. In Dhodha House v. S.K Maingi., (2006) 9 SCC 41 : AIR 2006 Supreme Court 730, the Supreme Court held thus:
“45. The short question which arises for consideration is as to whether causes of action in terms of both the 1957 Act and the 1958 Act although may be differentt would (enable?) a suit to be maintainable in a court only because it has the jurisdiction to entertainthe same interms of Section 62(2) of the 1957 Act?
46. A cause of action in a given case both under the 1957 Act as also under the 1958 Act may be overlapping to some extent. The territorial jurisdiction conferred upon the court in terms of the provisions of the Code of Civil Procedure indisputably shall apply to a suit or proceeding under the 1957 Act as also the 1958 Act. Sub Section (2) of Section 62 of the 1957 Act provides for an additional forum. Such additional forum was provided so as to enable the author to file a suit who may not otherwise be in a position to file a suit at different places where his copyright was violated. The Parliament while enacting the Trade and Merchandise Marks Actinthe year 1958 was aware of the provisions of the 1957 Act. It still did not choose to make a similar provision therein. Such an omission may be held to be a conscious action on the part of the Parliament. The intention of the Parliament in not providing for an additional forum in relation to the violation of the 1958 Act is, therefore, clear and explicit. The Parliament while enacting the Trade Marks Act, 1999 provided for such an additional forum by enacting Sub Section (2) of Section 134 of the Trade Marks Act. The court shall not, it is well-settled, readily presume the existence of jurisdiction of a court which was not conferred by the statute. For the purpose of attracting the jurisdiction of a court in terms of Sub Section (2) of Section 62 of the 1957 Act, the conditions precedent specified therein must be fulfilled, the requisites wherefor are that the plaintiff must actually and voluntarily reside to carry on business or personally work for gain.
56. For the purpose of invoking the jurisdiction of a court only because two causes of action joined in terms of the provisions of the Code of Civil Procedure, the same would not mean that thereby the jurisdiction can be conferred upon a court which had jurisdiction to try only the suit in respect of one cause of action and not the other. Recourse to the additional forum, however, in a given case, may be taken if both the causes of action arise within the jurisdiction of the court which otherwise had the necessary jurisdiction to decide all the issues.”
10. In Dhodha House v. S.K Maingi., (2006) 9 SCC 41 : AIR 2006 Supreme Court 730, the Supreme Court made it clear that the question as to whether in a case where cause of action arises under the 1957 Act and the violation of the provisions of the the Trade Marks Act, 1999 is only incidental, a composite suit will lie or not, did not arise in that case.
11. In Dabur India Limited v. K.R Industries, (2008) 10 SCC 595 : AIR 2008 Supreme Court 3123, the Supreme Court held thus:
“27. There cannot be any doubt whatsoever that the Parliament having inserted Sub Section (2) in Section 62 of the 1957 Act, the jurisdiction of the court thereunder would be wider than the one under Section 20 of the Code. The object and reasons for enactment of Sub Section (2) of Section 62 would also appear from the report of the Committee, as has been noticed by this Court being a provision which as been specifically designed to confer an extra benefit upon the authors who were not in a position to instate copyright infringement proceeding before the courts. It is in the aforementioned context the law laid down by this Court in paragraph 13 of Dhodha House (supra) must be understood.
29. What then would be meant by a composite suit? A composite suit would not entitle a court to entertain a suit in respect whereof it has no jurisdiction, territorial or otherwise. Order II, Rule 3 of the Code specifically states so and, thus, there is no reason as to why the same should be ignored. A composite suit within the provisions of the 1957 Act as considered in Dhoda House (supra) therefore, would mean the suit which is founded on infringement of a copyright and wherein the incidental power of the court is required to be invoked. A plaintiff may seek a remedy which can otherwise be granted by the court It was that aspect of the matter which had not been considered in Dhoda House (supra) but it never meant that two suits having different causes of actions can be clubbed together as a composite suit.”
12. In the the Trade Marks Act, 1999 a provision similar to Section 62(2) of the Copyright Act, 1957 is available. However, the Trade Marks Act, 1999 came into force only on 15.9.2003 The suit was filed in the year 2001. Therefore, the Trade Marks Act, 1999 cannot be applied to the present case for the purpose of deciding the question of territorial jurisdiction.
13. It cannot be disputed that under Section 62(2) of the Copyright Act, the District Court, Kottayam has jurisdiction to try the suit in so far as it relates to the reliefs under the Copyright Act and incidental matters. It is also fairly clear that the reliefs prayed for by the plaintiff under the Trade and Merchandise Marks Act, 1958 would not be maintainable before the District Court, Kottayam as that court does not have the territorial jurisdiction to try the suit in respect of those reliefs. In the light of the decisions of the Supreme Court referred to above, it is for the plaintiff to suitably amend the plaint, so that the suit will be maintainable before the District Court, Kottayam. An opportunity to the plaintiff to amend the plaint cannot be denied in the facts and circumstances of the case. If an application for amendment is filed by the plaintiff, the court below shall consider the same and pass appropriate orders, after affording an opportunity of being heard to both parties.
14. I am not inclined to accept the contention raised by the learned counsel appearing for the plaintiff that the plea of lack of territorial jurisdiction was waived by the defendants. It is stated that the question of lack of jurisdiction was raised in the written statement. Section 20 of the Code of Civil Procedure is also referred to therein. The specific reasons as to why the court lacks territorial jurisdiction are not stated in the written statement, submits the counsel for the plaintiff. It is true that at the time when the application for temporary injunction and appeal there from were considered, the question of lack of territorial jurisdiction was not raised. But that does not mean that the defendants have waived the right to raise that contention in the written statement. Therefore, I reject the plea of waiver raised by the plaintiff. The court below held in the order impugned that the suit as such is maintainable before the District Court, Kottayam. That finding is not correct in view of the decisions of the Supreme Court referred to above. Accordingly, the order passed by the court below is set aside. The plaintiff is given liberty to amend the plaint, so that the suit will be maintainable before the District Court, Kottayam, in the light of the principles laid down by the Supreme Court in the aforesaid decisions. When an application is filed for amendment of the plaint, the court below shall consider the same on the merits, after affording an opportunity of being heard to both sides.
15. The Civil Revision Petition is allowed as above.
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