1. In the Application for grant of leave, Notice was ordered and the respondent entered appearance though counsel and I have heard the augments on both sides.

2. The matter relates to infringement of the Trade Mark “Duroflex” and the applicant has prayed for leave to file the Suit before this Court. The cause of action according to the applicant is the place where the Registry of Trade Mark is situate and in the instant case, the Trade Mark Registry is at Chennai. The Application has also stated that the applicant runs a depot/office at Chennai within the jurisdiction of this Court. The applicant however has it office at Alleppey, Kerala. The respondent is a company registered and having its Registered Office in Delhi. In the Plaint, there is no allegation that the respondent has sold his goods, bearing the offending Trade Mark within the jurisdiction of this Court.

3. The learned counsel for the applicant would submit that it has been settled in various decision that when a Trade Mark is registered, the cause of action would arise in all the places, where there are Branch Offices of the Trade Mark Registry.

4. The learned counsel relied on S.B.S Jayam & Co. v. Gopl Chemical Industries, India, 1977 (1) MLJ 286, which is one of the earliest judgment and referred to in all cases, where the question relating to cause of action arises. The learned Judge held as follows:

“10…. Therefore even though the plaintiff's mark in this case had been registered under the Trade Marks Act, 1940 at Bombay, by virtue of Section 136(2) of the Act, it shall be deemed to have been registered only at Madras. There can be no dispute that in respect of the plaintiff's registered Trade Mark as at present only the Registry at Madras had jurisdiction. If any action in respect of the said mark of the plaintiff is to be taken under Sections 16, 22, 44 or any other Section of the Act, it has necessarily to be taken only at the Registry at madras and not at Bombay. Therefore, there is no merit in the contention that the registration of the plaintiff's mark having been done at Bombay (under the Trade Marks Act, 1940) there is no question of the situs of the property being at Madras.

18…. Even so, when the property is at Madras, I fail to see how it can be said that the infringement was only in Andhra Pradesh and not at Madras. After all what the plaintiff complaints is that his registered Trade Mark is being infringed. Even, though the product with the alleged offending mark has not come to the Madras market, there can be little doubt that the alleged infringements is not only at the place where the defendant markets his goods but also where the plaintiff's property itself is situated.”

5. In Officine Lovato S.P.A v. Ajay Kumar Aggarwal, 2005 (2) CTMR 102, it was held as follows:

4…. 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, tough 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 Section 5 and 6 of the 1999 Act with Rule 4 of the Rules, there is no difficulty at all in concluding that the suits of the Trade Mark involved in this case is at Chennai.

6.. In my opinion, the jurisdiction of the Court as prescribed under Section 105 of the 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 Kailsaam/Ramu Vedaraman wherein the authors have stated as follows:

“Thus in view of the change in law and the general new scheme, it would appear that the jurisdiction for filing a suit for infringement or passing off 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 Trade Mark to go before a Court within whose jurisdiction he caries 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 material 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 al 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.

6. In Ajay Kumar Aggarwal v. Officine Lovato S.P.A, 2005 (2) CTMR 271, the Division Bench was not inclined to accept the submissions made on behalf of the appellants, who had come forward with an Application for revocation of leave and held:

“11. In the present case, the learned Single Judge has come to the conclusion that the situs of the Trade Mark being a part of the cause of action, it can be said that the part of the cause of action arose within the jurisdiction of this Court. It has been concluded that tough the Trade Mark has been registered and reflected in the head office of the Trade Marks Registry at Mumbai, yet the Trade Marks Registry's branch office being at Chennai, it can be said, keeping in view the provisions contained in Section 18 of the Trade Mark Act, 1999, that the situs of the Trade Mark involved in the present case is in Chennai…..

14. We are unable to accept such submission made by the learned counsel for the appellants, and in our opinion, the ration of the decision reported in S.B.S Jayam & Co. v. Gopl Chemical Industries, India, 1977 (1) MLJ 286, is still applicable not withstanding the slight change in the provisions contained in the Trade Marks Act, 1999.”

7. In Ramu Hosieries, rep. by M. Murugeshan v. Ramu Hosieries, rep. by Pandela Ramu, 1999 (19) PTC 183, the Division Bench held as follows:

Normally one jurisdiction of the Civil Court in relation to movable property has to be determined with reference to cause of action. Right or interest in a Trade Mark can only be a movable property having regard to the definition in the General Clauses Act. Admittedly, the Trade Mark has been put to use and exploited and registered at Madras. Therefore, the cause of action in such Suit can be taken to arise where the property is situate or where it was marked or exploited and registration assumes all significance, because in a Suit for infringement of a Trade Mark, the plaintiff has to establish the cause of action by showing that he has a property right in a Trade Mark and the same has been infringed by the other party. Where the infringement has taken place partly in one another jurisdiction by marketing the product, then, the registered owner of the Trade Mark can maintain the Suit either at the place where the cause of action arose partly or wholly which includes the place of registration, advertisement or marketing. This can be by sowing that his Trade Mark has been registered with the Registrar or Trade Marks. Therefore, it cannot be said that no part of the cause of action arose at Madras.”

8. In K.B Venkatachala Mudaliar…Plaintiff; v. M/S Vanaja Match Works…Defendant., 1990 PTC 259, it has been held this:

“11…. But having regard to the facts in our case, which relate to infringement of Trade Mark and passing off action, and taking into consideration the applicability of Section 19, C.P.C 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 fee, 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 plaintiff as barred by law is dismissed.”

9. In Lakha Ram Sharma… v. Balar Marketing Pvt. Ltd. & Ors.…, 2002 (24) PTC 115, the High Court of Delhi held as follows:

“The purpose of confining the Trade Mark registration to one jurisdiction/office for the purposes of its rectification under the provisions of Sections 2(1)(h), 3, 5 and Rules 4, 5 and 6 is, inter alia, to facilitate rectification proceedings so that an aggrieved party does not have to run around to various Courts should the assignment be effected in various different jurisdiction. Likewise, even the registered proprietor gets confined to one jurisdiction wherein the validity/removal of his mark can be determined. The Legislature has chosen the situs of the Trade Mark as the place for conferring territorial jurisdiction which continuous to be at the Trade Mark registry at Chennai. Even in a civil action for injunction the Suit can be filed at a place where the mark is registered even though the person infringing the registered mark does not carry out its impugned activities in that place.”

10. The learned counsel for the applicant submitted that the above cases that relied on by her, would show that the situs of the Trade Mark Registry would give rise to a cause of action, which would entitle the applicant to file the Suit, within the jurisdiction of this Hon'ble Court, where an office of the Trade Mark's Registry exercises its functions.

11. The learned counsel for the respondent on the other hand vehemently opposed the grant of leave. According to the learned counsel, the Registration of Trade Mark is only done at Mumbai. The copies of the Registers alone are kept in each of the offices and the question would be whether the situs of the copy of the Register would be equivalent to situs where the registration has done and consequently, the place where cause of action arises. The learned counsel submitted that in the above cases, that cause of action arises at Chennai, since Trade Mark has been registered at Chennai, must be reconsidered, because the registration is always at Mumbai. The learned counsel also submitted to lay a Suit within the jurisdiction of the particular Court, there must be some action of the defendant, which takes place, within the jurisdiction of this Court to justify filing of the Suit there.

12. In Dhodha House v. S.K Maingi., 2006 (1) CTMR 1(SC), it has been held as follows:

“52. The plaintiff was not a resident of Delhi. It has not been able to establish that it carries on any business at Delhi. For our purpose, the question as to whether the defendant had been selling its produce in Delhi or not is wholly irrelevant. It is possible that the goods manufactures by the plaintiff are available in the market of Delhi or they are sold in Delhi but that by itself would not mean that the plaintiff carries on any business in Delhi.

53. It is not in dispute before us that the Application for registration of the Trade Mark was to be filed either at Bombay or at Ahmedabad. The objections thereto by the plaintiff were also required to be file date the said places. The jurisdiction of the Delhi Court could not have been invoked only on the ground that advertisement in respect thereof was published in the Trade Marks Journal. Section 62 of the 1957 Act, therefore, will have no application. The Plaintiff has no branch office at Delhi. Its manufacturing facilities are not available at Delhi. Both its Trade Mark and copyright are also not registered at Delhi.”

13. In Kusum Ingots & Alloys Ltd. v. Union of India, 2004 (3) CTC 365: 2004 (6) SCC 254, where the Supreme Court has dealt in detail what is the cause of action, as well as forum conveniens and at paragraph 30 held thus:

“90. We must, however, remind ourselves that even if a small part of cause of action arises within the territorial jurisdiction of the High Court, the same by itself may not be considered to be a determinative factor compelling the High Court to decide the matter on merit. In appropriate cases, the Court may refuse to exercise its discretionary jurisdiction by invoking the doctrine of forum conveniens…”

14. A.B.C Laminart Pvt. Ltd. v. A.P Agencies, 1989 (2) SCC 163, was a case where by agreement parties divided to vest jurisdiction exclusively within the Court.

15. In Premier Distilleries (P) Ltd., v. Shashi Distilleries, 2001 (3) CTC 652, the leave granted was revoked by the Division Bench, on the ground that merely because an Application was filed for registration of the Trade Mark, it would not clothe the plaintiff with the right to contend, that a part of cause of action arose in the city, where the registrar's office is located. This judgment was sought to be distinguished by the learned counsel for the appellant, on the ground, that in the present case, the Trade Mark is registered, whereas in that case, only an Application had been filed.

16. In Parameswari Veluchamy v. T.R. Jayaraman, 2001 (1) CTC 134, reported in where on the ground of forum conveniens, the Division Bench was not inclined to grant leave to sue, even though some of the immovable properties that formed part of the suit schedule properties were situate within the jurisdiction of this Court.

17. The learned counsel also relied on National Westminster Bank Ltd. v. Devraj Nensee & Co., 1997 (1) LW 117, where the Division Bench of this Court felt that it was a fit case, where leave to sue has to be revoked on the ground of forum conveniens.

18. Clause 12 of the Letter Patent reads as follows:

“12. Original jurisdiction as to Suits. — And we do further ordain that the said High Court of Judicature at Madras, in exercise of its ordinary original civil jurisdiction shall be 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 Suited, 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 the said High 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 the said High Court shall not have such original jurisdiction in cases falling within the jurisdiction of the Small Cause at Madras, in which the debt or damage, or value of the property sued for does not exceed hundred rupees.”

19. The question whether merely because an office of the Trade Mark Registry is situate in the city of Chennai, it would amount to Registration of the Trade Mark in Chennai has to be answered in favour of the applicant, in view of the fact that not just in one case, but repeatedly, the S.B.S Jayam's case (cited supra) has been followed by the Division Bench of this Court. The question whether the situs of the copy of the Trade Marks Registry would amount to cause of action has been strenuously argued by the learned counsel for the respondent. But I am bound by the judgment of the Division Bench of this Court, where the Division Bench held that the decision in S.B.S Jayam's case (cited supra) is still applicable, as seen from Ajay Kumar Aggarwal v. Officine Lovato S.P.A, 2005 (2) CTMR 271, extracted above.

20. But the question of forum conveniens is totally a different issue. Though Premier Distilleries (P) Ltd., v. Shashi Distilleries, 2001 (3) CTC 652, arose out of a case, where only the Application for registration was pending. It was submitted that Registrar of Trade Mark Office is at Chennai and the Application was filed in that office and therefore, part of cause of action arose in Chennai, even though neither the plaintiff nor the defendant reside or carry on business in Chennai and the goods with reference to which right to the Trade Mark is asserted were not marketed in Chennai. The observations of the Division Bench are relevant:

“3. The submission so made, even though found favour with the learned Single Judge, cannot be regarded as one which could properly be accepted.

4. As stated by Lord Esher in Read v. Brown, 1888 (22) QBD 128, cause of action means — Every fact which it would be necessary for the plaintiff to prove, if traversed in order to support his right to the judgment of the Court. It does not compromise every piece of evidence which is necessary to prove each fact but every fact which is necessary to be proved. As stated even more vividly by Fry, L.J, in the same case, “Everything which, if not proved, gives the defendant an immediate right to judgment must be part of the cause of action.”

5. The test formulated by Fry, L.J, if applied here, will demonstrate how fallacious the argument advanced by the plaintiff is. The action here is one for passing off and not one for infringement of Trade Mark which has been registered. The action of passing off can be maintained even without applying for registration of a Trade Mark and can be maintained even in spite of the registration of Trade Mark by a defendant. The registration of a Trade Mark, by itself, will not preclude the action of passing off if the plaintiff is able to demonstrate necessary ingredients for establishing his rights. The action or inaction on the part of the plaintiff in relation to the registration of the mark which he claims to be his, is wholly irrelevant for the purpose of deciding the plaintiff's right to be a relief in relation to passing off.

6. In order to establish his right to an injunction in an action for passing off, it is wholly unnecessary for the plaintiff to demonstrate that he had applied for registration of mark under the Trade Marks Act. His failure to demonstrate that he had filed an Application for registration will not clothe the defendant with a right to obtain dismissal of the Suit. The Application for registration is, therefore, a factor of no relevance in an action for passing off.

7. The essence of the action of passing off is deceit on the part of the defendant in trying to pass off his goods as that of the plaintiff. That is a pure question of fact to be established by proper evidence. The cause of action can arise where deceit is practiced. It cannot arise at a location where the plaintiff who claims the relief, chooses to lodge an Application for registering his mark, without any deceit having been practiced within that jurisdiction.

8. The right to bring an action for infringement in the Court within whose jurisdiction the Trade Mark Registry is located, is founded on the fact that the relief sought in the action is one for infringement and not merely for passing off. Where it is alleged that a Trade Mark is infringed, it is essential for the plaintiff to show that the Trade Mark had, in fact, been registered. The failure to establish that fact will result in the dismissal of the Suit for infringement, satisfying the test formulated by Fry, L.J, for ascertaining the cause of action, namely everything which, of not proved, entitled the defendant to an immediate right to judgment.

9. The cause of action in a Suit for passing off, on the other hand and as already observed, had nothing at all to do with the location of the Registrar's Office or the factum of applying or not applying for registration. It is wholly unnecessary for the plaintiff to prove that he had applied for registration. The fact that the plaintiff had not applied for registration will not improve the case of the defendant either. Filing of an Application for registration of a Trade Mark, therefore, does not constitute a part of cause of action where the Suit is one for passing off.

10. The argument advanced that registration if granted would date back to the date of Application and the plaintiff would have the right to seek amendment of the Plaint to seek relief on the ground of infringement as well, is wholly irrelevant so far as the cause of action for bringing a Suit for passing off is concerned. While it may be convenient to the plaintiff to institute a Suit in a Court where he may later on be able to bring a Suit for infringement of the Trade Mark, that convenience of the plaintiff is no way relevant for deciding as to whether a cause of action for filing a Suit for passing off can be said to have arisen in a place where, the deceit alleged to have been practiced by the defendant had in fact, not been practiced within the jurisdiction of the Court in which the Suit is brought.

11. The cause of action is not to be confused with convenience. Many things may be convenient to a plaintiff, but they do not become part of the bundle of facts requiring to be established for obtaining the decree in the Suit. The argument advanced for the plaintiff is also far fetched. It seeks to presume that the plaintiff in a Suit for passing of who has applied for registration of the mark will pursue the effort to have the Trade Mark registered; that such effort will be successful; that such an event will occur when the Suit is still pending; that the Suit will continue to pend till the registration is effected; that plaintiff would be seeking an amendment to add a prayer with regard to infringement. The cause of action is something which has occurred and which gives a right to take action. The cause must precede the action and not follow it. The events contemplated by the plaintiff as being capable of occurring at a point of time in the future, merely on account of those possibilities, will not constitute a cause of action for relief for securing which, those events are not materially relevant.”

21. In Parameswari Veluchamy v. R.T Jayaraman, 2002 (1) CTC 134, the subject matter of the Suit was for partition, as many as 185 properties were listed in the Plaint schedule, out of which 3 items were situate within the jurisdiction of this Court. Ex parte leave was granted. After contest, it was revoked, mainly on the ground of forum conveniens. The observations in this case are also relevant:

“9. There can be no doubt that this Court has jurisdiction to try any Suit in relation to any land which is situated within the jurisdiction of this Court. No leave of the Court is necessary in such cases. In case where a part of cause of action arises within the jurisdiction of this Court as also in cases where the defendants do not reside or carry on business or work for gain within the jurisdiction of this Court, leave of the Court is essential. The grant or refusal of leave is discretionary.

12. If the plaintiff's had brought the Suit only in relation to the three items in Madras, as already notices, question of granting leave would not arise, but having regard to all the facts of this case, it is clear that a mere claim made by them in relation to those properties cannot be made the foundation on which their claim for a share in all other properties all of which are outside Madras should be tried by this Court. It would be like trying to make an elephant stand on a pin head.

17. In support of his submission that the balance of convenience is indeed a very relevant factor, Counsel relied on a Division Bench decision of this Court in Seshagiri Row v. Nawab Asker Jung Aftal Dowlah, ILR 30 Mad. 348. The Bench in that decision considered the scope of Clause 12 and held that “having regard to the wording of Article 12 it is clear that the fact that the cause of action arises in part within the local limits is not conclusive and that notwithstanding that the cause of action arises in part within the local limits, the Court may decline to give leave to sue.

As regard the law of this Court, so far we are aware it has never been held that the question of convenience is not a question which may be taken into consideration in dealing with the Applications under Article 12, and we are certainly not prepared to hold that this question should be excluded from consideration.

18. Counsel also relied upon the decision of Venkatasubbharao, J. In Amir B. v. Abdul Rahim Sahib, AIR 1928 Mad. 760, wherein while considering the question of granting leave in an administration Suit it was inter alia observed that “The Court will not grant leave unless a substantial portion immovable properties are outside jurisdiction and they represent the bulk of the estate, that my be a good ground for refusing leave; for, in determining what constitutes cause of action one element is undoubtedly: where is the property (movable or immovable) situate?”

21. Moreover, considerations of convenience are very germane while determining the question of grant, refusal or revocation of leave. Almost all the properties, the documents relating thereto and the witnesses who have knowledge of the same are outside the city of Madras.”

22. In National Westminster Bank Ltd. v. Devraj Nensee & Co., 1997 (1) LW 117, it has been held as follows:

“30. Even while granting leave, this Court is bound to consider the forum non-convenience. In paragraph 5 of the affidavit filed in support of the Applications, the second defendant has stated the reasons why the leave should not be granted. It is said therein that therein that both the defendants are carrying on business outside India, and even the credit report was received in England, and al the documents pertaining to the correspondence are in England. The defendants are also permanent residents of England, and even as against the first defendant, liquidation proceedings are pending only in England. If the second defendant is asked to contest the Suit before this Court, naturally, it will be put to great difficulties. Taking into consideration these facts also, we feel that this is a fit case where leave to sue as against the second defendant has to be revoked.”

23. As stated earlier, it is not been pleaded that the defendant is using the Trade Mark “DUROFLEX” within the jurisdiction of this Court. In fact except in paragraph 16, which is the cause of action paragraph, where it is stated thus:

“The cause of action for the Suit arose a Chennai within the jurisdiction of this Hon'ble Court where the Registry of Trade Mark in which the plaintiff's Trade Mark is registered is located, and wherein the plaintiff has an Office/Depot and working for gain in Chennai…”

and apart from the vague averment that the plaintiff has exclusive showrooms in various parts of the country, including Kerala, Tamil Nadu, Maharashtra, West Bengal, Madhya Pradesh, Andhra Pradesh, Karnataka, Bihar, no material fact has been pleaded as to how cause of action arose, within the jurisdiction of this Court. The plaintiff does not reside here and therefore, the plaintiff's witnesses have to come from outside the city. The defendant does not carry on business here, but in Delhi, the witnesses also have to come from far. As the Division Bench picturesquely put it, “It would be like trying to make an elephant stand on a pin head”. This Court undoubtedly has the discretion to decide the question of convenience in Applications for grant of leave to sue.

24. Considering the averments in the Plaint, I do not think the question of convenience can be answered in favour of the applicant. Hence, the Application is dismissed.