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R. Paneerselvam v. Mohammed Rafi
Judgment Summary — Bhaskaran, J.
Factual and Procedural Background
The plaintiff has been conducting an arecanut/seeval business in Tamil Nadu since 5.11.1984. The plaintiff purchases arecanut from growers and merchants, sorts, grades, cleans, slices, mixes with ingredients and packets the product for market sale under the trade mark "Appu Seeval" (described as a dancing elephant on a globe with the word "Appu" on the left and "Seeval" on the right). The plaintiff registered his business as a Small Scale Industrial Unit with the Department of Industries and Commerce, reports a turnover "in the region of Rs. 60,00/- per month," and has taken a bank loan for the business.
The plaintiff alleges that the defendant began a seeval business using the trade mark "Appu Seeval" and circulated that he had registered "Appy Seeval" under the Trade and Merchandise Marks Act, 1988 — a statement the plaintiff says is incorrect. The defendant filed an application for registration of a mark consisting of the words "Appy Seeval" and a pictorial representation identical to the plaintiff's on 13.1.1988 in Class 31 (Registrar assigned application number 484155) and claimed use since 1987. The plaintiff claims continuous use of the mark since 1984 and ownership of the mark.
On those allegations the plaintiff filed a suit for permanent injunction restraining passing off of goods and other reliefs. Pending the suit the plaintiff filed Application No. 1143 of 1988 for interim injunction. The defendant "took notice in the injunction application Therefore, no interim order was passed." The plaintiff had previously obtained leave to institute the suit in Application No. 863 of 1988. The defendant filed Application No. 1283 of 1988 seeking to revoke that leave, arguing lack of jurisdiction of this Court because the defendant's business is carried on only in Kumbakonam (Thanjavur District) and that no part of the cause of action arises in Madras.
Legal Issues Presented
- Whether the suit is maintainable in Madras — in particular, whether this Court has jurisdiction to entertain the plaintiff's suit for injunction and passing off where the defendant's alleged business operations are confined to Kumbakonam but the defendant has applied for registration of a trade mark before the Trade Marks Registry in Madras.
- Whether interim injunction should be granted pendente lite restraining the defendant from passing off goods by using a mark deceptively similar to the plaintiff's.
Arguments of the Parties
Plaintiff's Arguments
- The plaintiff has been using the trade mark "Appu Seeval" continuously since 1984 and is therefore the owner of that trade mark and the associated pictorial representation (dancing elephant on a globe).
- The defendant applied for registration of a similar/identical trade mark in Madras (Registrar application dated 13.1.1988, No. 484155), claiming use since 1987; that application to register in Madras gives the plaintiff jurisdiction to sue in Madras.
- The plaintiff relied on Jawahar Engineering Co. v. Javahar Engineers Pvt. Ltd. (1979 I.P.L.R. 199) and Section 20 of the Code of Civil Procedure to show that a suit can be filed where the cause of action wholly or partly arises, and that an application for registration and threatened sale or use can give rise to jurisdiction even before actual sales occur.
Defendant's Arguments
- The defendant contended that this Court has no jurisdiction because the defendant carries on business only in Kumbakonam (Thanjavur District) and his products are manufactured and marketed only there; hence no part of the cause of action arises in Madras.
- The defendant sought revocation of the leave to institute the suit on the ground that the plaintiff obtained leave by misrepresentation and that the suit should have been filed in the district where the goods were manufactured and marketed.
- The defendant relied on authorities (including Himachal Pradesh Horticulture Produce Marketing and Processing Corporation Ltd. v. Mohan Meakin Breweries Ltd. (A.I.R. 1981 Punjab & Haryana 117)) holding that in passing-off or trade mark suits, cause of action arises in a jurisdiction only if the defendant has proved direct sales under the impugned mark within that jurisdiction on a commercial scale.
- The defendant also referred to S.B.S. Jayam & Co. v. Krishnamoorthi (1977 (1) MLJ 286) and other cases concerning the effect of registration/venue, and noted that Harold Charles Pinto v. Hilda Menezes (1977 T.L.N.J. 214) did not accept the principle laid down in the Madras decision cited.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Himachal Pradesh Horticulture Produce Marketing and Processing Corporation Limited, Shimla v. Mohan Meakin Breweries Limited, Salem, A.I.R. 1981 Punjab and Haryana 117 | In passing-off/trade mark suits, cause of action (partly or wholly) arises in a jurisdiction only if the defendant is proved to have directly made sale of goods under the impugned mark within that jurisdiction to distributors/wholesalers/retailers on a commercial scale. | The defendant relied on this authority to argue that, absent proof of commercial sales in Madras, the Madras Court lacks jurisdiction. The court recorded the principle but found the present facts different because the defendant had applied for registration in Madras. |
| S.B.S. Jayam and Co. v. Krishnamoorthi, Proprietor, Gopi Chemical Industries, 1977 (1) MLJ 286 | Where a trade mark is registered at the Madras Office (or is deemed registered there by operation of Section 136(2) of the Act), the suit relating to the property in the mark can be instituted in Madras. | The decision was cited in argument regarding venue/registration; the court noted the proposition but did not treat it as determinative of the present case, which turned on an application for registration by the defendant in Madras. |
| Harold Charles Pinto v. Hilda Menezes, O.S.A. Nos. 78–80 of 1976 : 1977 T.L.N.J. 214 | This decision did not accept the principle that registration of a trade mark automatically gives jurisdiction to file suit in the place of registration where the defendant admits registration but is not carrying on business there. | The court recorded that this authority did not accept the Madras principle cited above; the court observed that those decisions were not applicable to the facts of the present case. |
| Jawahar Engineering Co. v. Javahar Engineers Pvt. Ltd. of Delhi, F.A.C.O. (O.S.) No. 117 of 1979 : 1979 I.P.L.R. 199 | Section 20 CPC permits a suit wherever the cause of action wholly or partly arises. An application for registration and the threatened sale of an infringing mark (including advertisement or indication of placing the mark in a jurisdiction) can give jurisdiction in that place even before actual sales occur; an injunction can be sought to prevent a threatened breach. | The plaintiff relied on this decision to argue that the defendant's application for registration in Madras supplies a sufficient basis for jurisdiction and for seeking a prohibitory injunction prior to actual sales in Madras. The court accepted this reasoning as applicable to the present facts. |
Court's Reasoning and Analysis
The court identified the core dispute in the interlocutory applications as the question of maintainability (jurisdiction). It summarized the factual background: the plaintiff's continuous use of the mark since 1984 and the defendant's application for registration in Madras dated 13.1.1988 (claiming use since 1987).
The court considered the defendant's contention (supported by the Himachal Pradesh case) that jurisdiction requires proof of commercial sales under the impugned mark within the forum. The court then considered the plaintiff's reliance on Jawahar Engineering and Section 20 CPC, which hold that a cause of action may arise where threatened conduct will or is likely to take place and that an application for registration in a place may give rise to jurisdiction there.
Applying those principles to the present facts, the court concluded that the defendant's application for registration in Madras is sufficient to imply intention or likelihood to expand business into Madras. Because an injunction is preventative/prohibitory — intended to prevent likely future conduct — the threat inherent in the defendant's registration application is sufficient to create a cause of action in Madras under Section 20 CPC. Thus the court reasoned that it was not necessary for the defendant actually to be carrying on business in Madras at the time of filing for jurisdiction to exist.
On the merits of similarity, the court compared the labels and found them "identically similar": visually and phonetically identical and deceptively similar. On that basis, the court concluded the plaintiff was entitled to injunctive relief pending trial.
Holding and Implications
Holding:
- Application No. 1143 of 1988 (interim injunction) — granted; there will be an injunction as prayed for pending disposal of the suit.
- Application No. 1283 of 1988 (to revoke leave to institute suit) — dismissed.
Implications: The direct consequence of the judgment is that the plaintiff's interim injunction was granted and the defendant was restrained as prayed pending final disposal of the suit; leave to institute the suit in Madras was upheld. The court did not purport to lay down a novel binding precedent; it applied existing authorities (including Jawahar Engineering) to the facts before it and reached a finding that the defendant's application for registration in Madras created a sufficient basis for jurisdiction and for interim relief.
This summary is based exclusively on the text of the provided opinion and does not add information beyond what the opinion contains.
JUDGMENT
Bhaskaran, J.
1. The Plaintiff, who is engaged in Several business from 5.11.1984 in Tamil Nadu, has been buying new arecanut from growers and merchants, sort, grade and clean them, slice them, mix them with several ingredients and packet them is different sizes for ready consumption in the market. This product has been marked throughout with the trade mark Appu Seeval'. The trade mark consists of a dancing elephant on a globe with the word Appu printed on the left and Seeval printed on the right. The packets are sold in different quantities. The plaintiff has also registered his business as a small Scale Industrial Unit with the Department of Industries and Commerce. The plaintiff has developed his business and his turnover is in the region of Rs. 60,00/- per month. The plaintiff has also availed bank loan for his business. While so, the plaintiff came to know that the defendant has also started Seeval business with the trade mark 'Appu Seeval'. The defendant has also been circulating the news that the he has secured the registration of 'Appy Seeval' as a trade mark under the Trade and Merchandise Marks Act, 1988 (hereinafter referred to as the Act) but on verification it was found that the statement is not correct. The defendant's trade mark is also identically similar to that of the plaintiff. The defendant has not registered his trade mark but has only filed an application for registration with the Registrar of Trade Marks on 13.1.1988 of the trade mark consisting of words 'Appy Seeval, and pictorial representation identical to that of the plaintiff's trade mark. The defendant's application in Class 31 has been assigned the number 484155 by the Registrar of Trade Marks. In that application the defendant claimed the user of the above mark since 1987. Whereas the plaintiff is the continuous user of the mark from 1984. As such, the plaintiff has become the owner of the trade mark consisting of the words 'Appu Several' and the pictorial representation of the dancing elephant on the globe. Even according to the representation made by the defendant before the Registrar of Trade Marks, he has been using the trade mark since November, 1987.
2. With the above allegations, the plaintiff has filed the suit for permanent injunction restraining the defendant by himself, his servants, agents or anyone claiming through him from passing off arecanut products/seeval/supari or any other similar goods with the labels/wrappers similar to that of the plaintiff or any manner passing off his goods as the goods of the plaintiff and for other reliefs. Pending the suit, the plaintiff has also filed application No. 1143 of 1988 for grant of interim injunction. The defendant took notice in the injunction application Therefore, no interim order was passed.
3. The suit itself was filed by the plaintiff after obtaining leave to institute the suit in application No. 863 of 1988. The defendant has filed Application No. 1283 of 1988 to revoke the leave granted stating this Court has no jurisdiction since the defendant is carrying on business only in the area of Kumbakonam in Thanjavur District and his products are manufactured and marketed only in that area. He has not expanded his business to any other area, according to the defendant, no part of the cause of action arises in Madras. His application to the Registrar of Trade Marks will not give any cause of action to the plaintiff. The plaintiff should have filed the suit only in the Court of the District where the goods manufactured and marketed. Therefore, the leave already granted has to be vacated.
4. The plaintiff has filed the suit on the basis that the defendants is passing off his goods viz., Seeval as that of the plaintiff by using the identical trade mark consisting of the words 'Appu Seeval' and pictorial representation of a dancing elephant on a globe. On a look of both the labels of the plaintiff and the defendant, there is no difficulty to conclude that both are identically similar. Learned counsel for the defendant raises defense only on the ground that this Court has no jurisdiction to entertain the suit, that the plaintiff has obtained leave on misrepresentation and that therefore, the leave has to be cancelled. Therefore, the main issue to be considered in these applications is, whether the suit is maintainable.
5. Learned counsel for the defendant submitted that it is not the case of the plaintiff that the defendant is marketing his products in Madras and, therefore, the cause of action will arise only in Kumbakonam within the jurisdiction of the Court where the alleged spurious goods were manufactured, marketed and sent for sale on commercial scale and this Court has no jurisdiction. He also referred to the decision reported in Himachal Pradesh Horticulture Produce Marketing and Processing Corporation Limited, Shimla v. Mohan Meakin Breweries Limited, Salem, A.I.R. 1981 Punjab and Haryana 117 wherein it has been held as follows:
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 has no jurisdiction to entertain the suit.
6. Learned counsel for the defendant also referred to the decision reported in S.B.S. Jayam and Co. v. Krishnamoorthi, Proprietor, Gopi Chemical Industries, India, 1977 (1) MLJ 286. In that case, the contention of the defendant is that unless the plaintiff has registered its trade mark at Madras, he cannot maintain a suit at Madras against a possible infringement. It was held that in respect of a trade mark registered at the Madras Office, the suit of the property in the mark is at Madras and even though the plaintiff's mark had been registered under the Act at Bombay, by virtue of Section 136(2) of the Act, is should be deemed to have been registered only at Madras and, therefore, the plaintiff can maintain a suit against the defendant at Madras for any infringement of the trade mark. The learned counsel for the defendant further referred to the decision reported in Harold Charles Pinto v. Hilda Menezes in O.S.A. Nos. 78 to 80 of 1976 : 1977 T.L.N.J. 214. Which has not accepted the principal laid down in the above cited Madras decision, wherein it has been held that registration of a trade mark by the plaintiff will give jurisdiction to file a suit against the defendant who disputes the registration, but, once the defendant admits the registration the plaintiff, the plaintiff cannot have jurisdiction to maintain a suit against the defendant, who is not carrying on business in the place of registration of the plaintiff's trade mark. Those decisions are not applicable to the to the facts of the present case.
7. Learned counsel for the plaintiff cited a direct decision reported in Jawahar Engineering Co. v. Javahar Engineers Pvt. Ltd. of Delhi High Court in F.A.C.O. (O.S) No. 117 of 1979 : 1979 I.P.L.R. 199 wherein a Bench of the Delhi High Court has held as follows:
There is another ground for holding that the Court has jurisdiction. Section 20 of the Code of Civil Procedure shows that a suit like the present can be filled wherever the cause of action wholly or party arises. The plaintiff has prayed for an injunction regarding a threatened breach of a registered trade mark. The learned single Judge held that the Delhi Court does not have jurisdiction on the ground of any sale having been made in Delhi, but does have jurisdiction on account of the advertisement having appeared in the trade mark Journal. The real point which gives the Court jurisdiction is not the place where the advertisement has appeared, but the fact that the trade mark is sought for sale in Delhi amongst other places Furthermore, when an injunction is sought, it is not necessary that the threat should have become a reality before the injunction and it can even be sought for a threat that is still to materialise.
As injunction being prohibitive in nature is intended to prevent something that is likely to happen. Once the plaintiffs have learnt that the defendants have applied for registration of trade mark in Delhi, they can claim an injunction to prevent any sale of the infringing produce in Delhi. In this sense, the Court will have jurisdiction whether any sale in Delhi has taken place or not. In any case, as already stated, the decision is of preliminary; nature once the exact scope of what the defendants intend to do is known, it is open to the Court to return the plaint. In that sense, it is not a final decision and is not open to appeal at the preliminary stage being not a final adjudication.
8. In the instant case, admittedly, the defendant has applied for registration of the trade mark in Madras before the Trade Marks Registry. The trade mark of the defendant is similar to that of plaintiff, and that the same has also been taken up for registration. As has been held in the above cited decision, once the defendant applied for registration of his trade mark in Madras, that will give jurisdiction for the plaintiff to file the suit Madras ant it is not necessary that the defendant must actually carry on business at Madras. Once the defendant has applied for registration, it implies that he is likely to expend his business to Madras. As held in the above cited decision, injunction being prohibitory in nature is intended to prevent something that is likely to happen. Therefore, it can be said that the cause of action also arises at Madras on the basis of the fact that the defendant has applied for registration before the Registrar of Trade Marks, Madras. It cannot therefore said that the leave granted is wrong.
9. So far as the similarity of the trade marks is concerned, as already stated, there is no difficulty in holding that the defendant's trade mark is identical and deceptively similar to that of the plaintiff's trade mark, visually and phonetically Therefore, the plaintiff is entitled to injunction. In the result Application No. 1143 of 1988 is ordered and there will be injunction as prayed for pending disposal of the suit. Application No. 1283 of 1988 to revoke the leave granted in application No. 863 of 1988 is dismissed.
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