1. The respondent in Application Nos. 3690 & 3691/87 as plaintiff filed the suit C.S No. 156 of 1986 alleging that he had been manufacturing safety matches from the year 1955 and in the course of the trade using, in connection with safety matches manufactured by him, a distinctive trade mark ‘National Park’ with the device of a standing stag with a peculiar colour scheme and get-up with a view to indicate that such goods are of his manufacture and he had also registered the same under the Trade and Merchandise Marks Act 1958 and he has acquired valuable good will of the said trade mark because of its excellent and high quality standard. While so, during the middle of March 1986 he came to know that the defendant/applicant had commenced manufacturing and selling safety matches using an identical trade mark ‘Running Dear’ together with the device of ‘Standing stag’ with an identical colour scheme and get up. The defendant has deliberately copied the plaintiff's well established trade mark ‘National Park’ together with the device of standing stag by using an identical ‘Running Deer’ trade mark table along with the device of standing stag with an identical colour scheme and get up. Hence the defendant is guilty of infringing the plaintiff's trade mark. Under such circumstances he has filed the suit for a permanent injunction restraining the defendant from using the offending trade mark ‘Running Deer’ together with standing stag. Along with the plaint he has filed Application No. 1402 of 1986 for an order of interim injunction and in the said application ad-interim injunction had been granted by S.A Kader J., on 20-3-1986.

2. The plaintiff did not seek permission to sue the defendant even though be has stated that the defendant is a proprietory concern, carrying on manufacturing and sale of safety matches, at No 1/48, Thottithorai, Mottur village, Morasapalli, Gudiyattam, North Arcot District. After receipt of summons the defendant has filed the above said two application viz., A. Nos. 3690 & 3691 of 1987. In Application No. 3690 of 1987 the defendant/applicant prayed for the suspension of the operation of the order of interim injunction and in Application No. 3691 of 1987 for the rejection of the plaint as barred by law on the ground that Page: 261defendant does not reside within the jurisdiction of the Court and hence the suit can not be entertained by this Court unless the entirety of cause of action is within the jurisdiction of this Court and the event of only a part of cause of action arising within the jurisdiction of this Court prior leave of the Court is mandatory and the suit filed without conforming the mandatory requirement is non set in the eye of law.

3. According to the defendant the suit is liable to be dismissed in limine as it has been filed without obtaining the leave of the Court under clause 12 of the Letters Patent. In the plaint it is made clear that the defendant residing and carrying on businers at Gudiyattam, North Arcot District and in the cause of action for the suit arose at Madras where the plaintiffs appropriate trade marks registry is situate, where the plaintiff's registered trade mark and passing off committed by the defendant first came to the notice of the plaintiff and de die in diem (thereafter as the defendant is still persisting in his illegal activities of passing off within the territorial jurisdiction of this Court.

4. Further according in the defendant the plaintiff's trade mark registry is situate within the jurisdiction of this Court, which provides only a part of the cause of action and not the entirety of the cause of action, and admittedly the defendant's manufacturing and residing place is at Gudiyattam and not in the city of Madras. Except the self-serving statement in paragraph 8 of the plaint that the infringement and passing off is committed within the territorial jurisdiction of this Court, no details are given, whereas on plaintiff's own statement the defendant's manufacturing and residing place is at Gudiyattam. Where the defendant does not reside within the jurisdiction of this Court, the suit cannot be entertained by this Court unless the entirety of the cause of action is within the jurisdiction of this Court, in the event of only a part of the cause of action is being within the jurisdiction of this Court, prior leave of the Court is mandatory and the suit filed without conforming to this mandatory requirement, is non est in the eye of law and the plaint is liable to be rejected.

5. In the common counter affidavit filed by the plaintiff it has been contended that the whole cause of action arose within the jurisdiction of this Court in the light of the judgment of this Court reported in S.P.S JAYAM & CO. v. GOPI CHEMICAL INDUSTRIES. INDIA (1977 (1) M.L.J 286) and this Court has got jurisdiction to try the suit and the learned Judges who were sitting on the Original Side of this Court have held repeatedly that leave to sue was not necessary in the trade marks cases. Accordingly the plaintiff prayed for the dismissal of the applications.

6. The point that arises for consideration in these applications is as to whether the plaint has to be rejected for not obtaining leave to sue in view of the allegations made in the plaint that the defendant is carrying on manufacturing and sale of safety matches at Gudiyattam in North Arcot District and in view of the fact that the defendant is shown to Page: 262be residing and carrying on business beyond the jurisdiction of this Court.

7. With regard to the defendant's address it is stated that the defendant Vanaja Match Works is a proprietory concern carrying on manufacturing and sale of safety matches at No. 1/48. Thottithorai, Mottur village, Morasapalli, Gudiyattam and is represented by its Proprietor Mr. J. Arumugham. In paragraph 8 of the plaint relating to cause of action it has been stated that the cause of action for the suit arose at Madras where the plaintiff's appropriate Trade Marks Registry is situate, where the plaintiff's trade mark is registered in or about the middle of March 1986 when the infringement of the plaintiff's registered trade mark and passing off committed by the defendant first came to the notice of the plaintiff, and de die in diem thereafter as the defendant is still persisting in his illegal activities of passing off within the territorial jurisdiction of this Court. Admittedly no leave to sue was obtained from this Court by the plaintiff. The plaintiff is also shown to be carrying on business at Gudiyattam, North Arcot District. But the plaintiff has registered his trade mark under the Trade and Merchandise Marks Act. 1958 and the plaintiff has come forward with the suit alleging that the defendant is guilty of infringing the plaintiff's trade mark and the defendant is guilty of passing off his safety matches thereby causing loss to the plaintiff. The plaintiff has prayed for granting of permanent injunction restraining the defendant, bis servants or agents in any manner infringing the plaintiff's trade mark by using the offending trade mark ‘Running Dear’ and for direction to the defendant to surrender the entire stock of the unused offending trade mark labels and for accounts of the profits earned by him. The main contention of the defendant is that both the plaintiff and the defendant conduct their business at Gudiyattam, North Arcot District and the plaintiff's appropriate Trade Mark Registry is situate within the jurisdiction of this Court provides only part of the cause action and not the entirety of the cause of action and as the defendant is residing and is also manufacturing goods at Gudiyattam the Suit cannot be entertained without the leave of the Court unless the entirety of the cause of action arose within the jurisdiction of this Court. In the event of only a part of cause of action being within the jurisdiction of this Court prior leave of the Court is mandatory and the suit filed without conforming the mandatory requirement is non est and is liable to be rejected. But according to the plaintiff the whole cause of action arose within the jurisdiction of this Court and in this connection the plaintiff relies on the judgment reported in S.P.S Jayam & Co. v. Gopi Chemical Industries, India (1977 (1) M.L.J 286.). Further according to the plaintiff the learned Judges sitting on the Original Side of this Court have held that leave to sue was not necessary in trade mark cases.

8. Under Clause 12 of the Letters Patent, which deals with original jurisdiction as to suits, this Court is empowered to receive, try, and determine suits of every description if, in the case of suits for land or other immovable property, such land or property shall be Page: 263situated, or, in all other cases, if the cause of action shall have arisen, either wholly, or, in case the leave of the Court shall have been first obtained, in part, within the local limits of the ordinary original jurisdiction of this Court, or if the defendant at the time of the commencement of the suit shall dwell or carry on business or personally work for gain, within such limits; except that this Court shall not have such original jurisdiction in cases falling within the jurisdiction of the Small Cause Court at Madras, in which the debt or damage, or value of the property used for does not exceed one hundred rupees. This is not the case relating to land or other immoveable property. This is a suit relating to infringement of registered trade mark as well as passing of goods. There could be no dispute that a registered trade mark is a property and as the office of the registry of trade mark is situate at Madras, the situs of that property must be held to be at Madras and therefore the fact of registration of the mark which constituted part of the cause of action must be held to have arisen at Madras. Having regard to such registration it could also be stated that even though the defendant is manufacturing and carrying on business at Gudiyattam, North Arcot District, the infringement could be held to have happened at Madras which is the situs of such right. It cannot be disputed that the right of the plaintiff to the registered trade mark is a proprietory right and therefore it is a property and it is also transferable and it is a moveable property as per section 3(36) of the General Clauses Act, 1897. The decision reported in SPP.S Yavam & Co. v. Gopi Chemical Industries (1977 (1) M.L.J 286), rendered by N.S Ramaswami, J., makes it clear that the right of the plaintiff to the registered trade mark is a proprietory right and therefore it is a property which is transferable and it is an immoveable property as per section 3(36) of the General Clauses Act, 1897 (see para 8). The facts in that case reveal that the original registration of the plaintiff's trade mark was at Bombay under the Trade Marks Act, 1940, but under section 136(2) of the Trade and Merchandise Marks Act, 1958 it shall be deemed to have been registered only at Madras and therefore the registry and Madras was held to be having jurisdiction and it was construed as having been registered at Madras. In that case the passing off was shown to have happened in Andhra Pradesh and the plaintiff in that case had obtained permission to sue. The defendant took the contention that no part of the cause of action had arisen within the jurisdiction of the Original Side of this Court in as much as the alleged infringement of the trade mark was only in Andhra Pradesh and the defendant not being a person residing within the jurisdiction of this Court the High Court has no jurisdiction to entertain the suit and the plaintiff obtained leave to sue wrongly representing to the Court that, part of the cause of action has arisen within the jurisdiction of the High Court. The learned Judge in that case held that even though the product with the alleged offending mark had not come to the Madras markel, 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 plaintiff's property itself was situated. In paragraph 6 at page 288 the learned Page: 264Judge has stated as follows:—

“Whether Clause 12 of the Letters Patent applies or section 20 of the Code of Civil Procedure applies, the plaintiff can succeed on the preliminary issue (regarding territorial jurisdiction) only if it is shown that part of the cause of action has arisen within the jurisdiction of this Court. It cannot be disputed that even under section 20 of the Code, if part of the cause of action has arisen within the jurisdiction of this Court, the suit is maintainable here. Therefore the real question is whether any part of the cause of action for the suit has arisen within the jurisdiction of this Court”.

section 20 of the Code of Civil Procedure deals with the suits to be instituted where the defendant resides or cause of action arises. Section 20 is as follows:—

“20. Other suits to be instituted where defendants reside or cause of action arises-Subject to the limitations aforesaid, every suit shall be instituted in a Court within the local limits of whose jurisdiction:—

(a) the defendant, or each of the defendants where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain; or

(b) any of the defendants where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain, provided that in such case either the leave of the Court is given, or the defendants who do not reside, or carry on business, or personally work for gain, as aforesaid, acquiesce in such institution; or

(c) the cause of action, wholly or in part, arises.”

9. Under section 20(c) of the Code of Civil Procedure the cause of action should arise wholly or in part. But in this regard the learned counsel for the defendant/pointed out that section 120 CPC clearly says that sections 16, 17 and 20 CPC shall not apply to the High Chart in exercise of its original civil jurisdiction. But section 120 CPC has not included section 19 CPC. Under section 19 CPC, where a suit is for compensation for wrong done to a person or to movable property, if the wrong was done within the local limits of the jurisdiction of one Court and the defendant resides, or carries on business,-or personally works for gain, within the local limits of the jurisdiction of another Court, the suit may be instituted at the option of the plaintiff in either of the said Courts. As pointed out by me earlier, having regard to the nature of the suit I feel section 19 CPC will be applicable to the facts of this case and in as much as the application, of section 19 CPC is not made in applicable under section 120 CPC to the Original Side of the High Court I feel the present suit instituted without obtaining leave of the Court is maintainable.

10. Application No. 4806 of 1985 is an application by one N. Shamsudeen Sahib & Sons seeking leave of this Court to file a suit with regard to infringement of its trade mark which was registered at the office of the Registrar of trade marks, Madras, alleging that the defendent had infringed the trade mark of the plaintiff and is passing off the beedies and the defendant in that case was carrying on business at Arcot in North Arcot District and selling their products at Madras. In that application S.A Kader J., held that according to paragraph 8 of the plaint the cause of action wholly arose within the local territorial limits of jurisdiction of this Court and the suit is maintainable under Part (11) of Clause 12 of the Letters Patent irrespective of the fact that the defendant resides outside the limits of this Court and no leave to sue is necessary. Later the suit had been numbered as C.S No. 729 of 1985. Likewise in application No. 2,657 of 1986 filed by one Sivakasi Match Industries leave to sue the defendant was sought for and in that case the defendant was carrying on Match Works at Gudiyattam and S.A Kader J. held that the cause of action had arisen wholly at Madras and the suit is maintainable irrespective of the fact whether the defendants reside at Madras or outside Madras and no leave to sue was necessary. The plaintiff respondent has now placed reliance in the abovesaid two orders passed by S.A Kader J., In those two applications the Plaintiff wanted permission to sue the defendant, but the learned Judge had taken the view that the cause of action had wholly arisen at Madras within the jurisdiction of this Court. But in the present case the respondent/plaintiff has come forward with the contention that the cause of action wholly arose at Madras relating to registry of the trade mark. But the defendant/applicant would contend that as it is alleged that the defendant is rasiding and carrying on business at Gudiyattam part of cause of action had arisen outside the jurisdiction of this Court and therefore leave to sue is necessary.

11. Learned counsel for the defendant submitted the decision reported in Clan Line Steamers Ltd. v. Gordon Woodroffe & Co. (AIR 1980 Madras 73 : ILR 1979 (3) Madras 407).

12. The facts in that case reveal that the suit was in respect of termination of tenancy and by a written agreement entered into between the plaintiff company and the first defendant. The plaintiff was appointed as sole steamer agent for the Clan Line Steamers Ltd., U.K and under the agreement the plaintiff acquired certain share of the Clan Line Vessals. The said agency was terminated and the second defendant was appointed us the agent. The plainttiff filed a suit against the defendants for a permanent injunction restraining them from taking over the steamer agency. Subsequently another suit was filed without obtaining leave under Clause 12 of the Letters Patent. After filing of that suit the plaintiff filed two applications one for impleading the Clan Line Steamers Ltd. as the fourth respondent an the other for leave under Clause 12 of the Letters Patent to institute the suit against the proposed fourth defendant. Leave was thereupon granted. The fourth respondent filed an application to revoke that leave. That application was Page: 266rejected and the fourth respendent prefered an appeal. The question that arose for consideration was, whether the order refusing to revoke the lease to sue granted to the first respondent plaintiff under Clause 12 of the Letters Patent is sustainable. A Division Bench of this Court consisting of Remanujam and Paui JJ held that on the ground that the first defendant is carrying on business through bis agent within the jurisdiction of the Court, the plaintiff did not obtain leave under Clause 12 of the Letters Patent, for such leave under Clause 12 of the Letters Patent would not be necessary, if the first defendat at the time of the commencement of the suit was dwelling or carrying on business or was personally working for gain within the limits of the jurisdiction of this Court. But the proposed fourth defendant is not dwelling or carrying on business or personally working for gain within the jurisdiction of this Court and as such ieavn should be obtained under Clause 12 only against the proposed fourth defendant and even if the suit against the first defendant is held to be not maintainable eventually, on the ground that leave under Clause 12 of the Letters Patent had not been obtained, the suit against the other defendants, including the proposed fourth defendant, would still remain unaffected. The learned trial Judge rejected the application to revoke the leave and the matter came up in appeal before the said Division Bench and the appeal had been dismissed by the Division Bench. The facts in that case, as pointed out earlier, related to termination of contract executed at Madras. This judgment was relied on by the learned counsel for the defendant in support of bis contention that in cases where the defendant resides outside the jurisdiction of this Court leave to sue was necessary and where such leave had not been obtained the suit has to be treated as non est and the Court has no power to deal with such suit and for want of such leave the suit is not maintainable and legal consequences arising from such situation would necessarily follow. It was also submitted that on the basis of the decision reported in Clan Line Steamers Ltd. v. Gordon Woodroffe & Co. (AIR 1980 Madras 73 : ILR 1979 (3) Madras 407) the defect cannot be cured by subsequently granting leave to sue under Clause 12 of the Letters Patent. But having regard to the facts in oar case, which relate to infringement of trade mark and passing off action, and taking into consideration the applicability of section 19 CPC and also the averments of the plaintiff that whole cause of action arose within the jurisdiction of this Court relating to the registry of the trade mark, I feel, the contention put forward on behalf of the defendant that the plaint has to be rejected cannot be accepted. Accordingly Application No. 3691 of 1987 filed for rejection of the plaint as barred by law is dismissed.

13. The application to suspend the operation of the order of the interim injunction passed in Application No. 1402 of 1986 on 20-3-1986 viz, Application No. 3690 of 1987 is also dismissed in view of the discussion made above. Consequently the ad-interim injunction granted in Application No. 1402 of 1986 is made absolute. No. Costs.