Sanjib Banerjee, J.:— The Court: The application pertains to the subsequent leave sought under Clause 14 of the Letters Patent by the plaintiff.
2. The grant of leave is resisted by the defendants, primarily on the ground of Section 134 of the Trade Marks Act, 1999 and a judgment of the Supreme Court reported at (2006) 9 SCC 41 (Dhodha House v. S.K Maingi.). The defendants have also referred to Order II Rule 3 of the Code.
3. The plaint contains the prayers pertaining to both infringement and passing-off. Paragraph 37 of the plaint refers to the bundle of facts pleaded at paragraphs 3, 7, 9 and 12 to have arisen within the jurisdiction of this Court. Nothing in paragraphs 3, 7, 9 and 12 which may have arisen within jurisdiction pertains to the cause of action for passing-off. The defendants assert that by virtue of Section 134(2) of the Act, the benefit of the plaintiff's situs in respect of clauses (a) and (b) under subsection (1) of Section 134 of the Act cannot be obtained in respect of a passing-off action or a matter covered under clause (c) of the first sub-section. The defendants are absolutely right in such assertion.
4. However, Clause 14 of the Letters Patent confers the jurisdiction on this Court to join several causes of action unless a further cause of action sought to be joined pertains to any land or immovable property situated outside the territorial jurisdiction of this Court. The clause provides as follows:
“14. Joinder of several causes of action. - And We do further ordain, that were Plaintiff has several causes of action against a Defendant, such causes of action not being for land or other immovable property, and the said High Court shall have original jurisdiction in respect of one of such causes of action, it shall be lawful for the said High Court to call on the Defendant to show cause why the several causes of action should not be joined together in one suit, and to make such order for trial of the same as to the said High Court shall seem fit.”
5. The second limb of the clause, to the effect that it shall be lawful for the High Court to join several causes of action in one suit, is subject to two conditions: that this Court should be competent to receive at least one of the several causes of action sought to be joined; and, that the causes of action sought to be joined should not pertain to land beyond jurisdiction. In other words, as long as a cause of action sought to be joined does not pertain to land or immovable property situated outside - like passing-off as in this case - this Court would have jurisdiction to join the other cause of action, subject to whatever the defendants may cite to resist the same.
6. In this case, the plaintiff has sued for infringement. The plaintiff's registered word mark is Bansal. An alternative or additional relief for passing-off is carried in the plaint; possibly to detract from any defence of the bonafide use of the defendants' surname as part of the defendants' trade name. The matters complained of pertain to the same transaction or the same series of transactions. To split the two causes of action would be artificial. In such a situation, it is incumbent on the defendants resisting the leave sought under Clause 14 of the Letters Patent to show overwhelming inconvenience for the other cause of action not to be joined in this suit.
7. The defendants here show none. The defendants merely stress on the point that if this suit were to be regarded as an independent suit for passing-off, it could not have been maintained in this Court since the necessary averments as to a part of the plaintiff's cause of action regarding passing-off having arisen within are not mentioned in the plaint. The objection is irrelevant in view of the mandate under Clause 14 as this Court is competent to receive the infringement action.
8. It is also elementary that whereas leave under Clause 12 of the Letters Patent has to be obtained at the time of institution of the suit, leave under Clause 14 thereof has, per force, to be granted subsequently; since the defendant is to be heard before leave under Clause 14 is granted. Further, the objection under Order II Rule 3 of the Code is without merit as the clear mandate under Clause 14 is a complete answer thereto.
9. Accordingly, GA No. 1865 of 2016 is allowed by granting leave to the plaintiff to join the claim for passing-off with the claim for infringement as part of the suit based on the plaint which has already been lodged.
10. There will be no order as to costs.
11. Urgent certified website copies of this order, if applied for, be supplied to the parties upon compliance with all requisite formalities.