Full Judgment Text
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ FAO (OS) No. 260/2008
th
% Reserved on: 9 July, 2010
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Decided on: 10 September, 2010
Archie Comic Publications Inc
(A company organized and existing under the laws of
State of New York, USA) having its office at
325, Fayettee Avenue,
Mamaroneck,
New York 10543,
United States of America
C/o Mr. Sudhir D. Ahuja,
Having his office at:
53, Syed Amir Ali Avenue,
Calcutta-700 019. ..... Appellant
Through: Mr. C.M. Lall, Mr. Jyotideep Kaur,
Ms. Ekta Sarin and Mr. Subhash
Bhutoria, Advocates.
versus
1. Purple Creations Pvt Ltd.
B-123, Ghatkopar Industrial Estate,
L.B.S. Marg, Agra Road,
Ghatkopar (West), Mumbai-400 086.
2. Nagji Kheraj Vira,
Director,
Purple Creations Pvt. Ltd.
B-123, Ghatkopar Industrial Estate,
L.B.S. Marg, Agra Road,
Ghatkopar (West), Mumbai-400 086.
3. Pankaj Nagji Vira,
Director,
Purple Creations Pvt. Ltd.
8, Ramnik Villa, Uday Cinema Lane,
th
5 Road, Ghatkopar (West),
Mumbai-400 086.
FAO (OS) No. 260/2008 Page 1 of 24
4. Dipak Nagji Vira,
Director,
Purple Creations Pvt. Ltd.
8, Ramnik Villa, Uday Cinema Lane,
th
5 Road, Ghatkopar (West),
Mumbai-400 086. ..... Respondents
Through: Mr. Sanjeev Sachdeva and Mr. Preet
Pal Singh, Advocates.
Coram:
HON'BLE MR. JUSTICE VIKRAMAJIT SEN
HON'BLE MS. JUSTICE MUKTA GUPTA
1. Whether the Reporters of local papers may
be allowed to see the judgment? Yes
2. To be referred to Reporter or not? Yes
3. Whether the judgment should be reported
in the Digest? Yes
MUKTA GUPTA, J.
1. By way of the present appeal the Appellant lays a challenge to the
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order dated 20 April, 2008 whereby the application of the Appellant
being I.A. No. 5271/2006 in CS (OS) No. 1420/2005 under Order 6 Rule
17 CPC for amendment of the plaint was dismissed and the application
of the Respondents herein being I.A. No. 238/2006 under Order 7 Rule
11 CPC was allowed, thereby returning the plaint of the Appellant for
the purposes of filing before the competent Court.
2. The Appellant had instituted a suit inter alia for permanent
injunction, infringement of trademark, damages, against the
FAO (OS) No. 260/2008 Page 2 of 24
Respondents claiming to be engaged in the field of printed matter,
paper articles, newspapers, periodicals, books, comic magazines,
cartoons strips, story books, films and a myriad of licensed products
including: glassware, lipstick, vanity sets, nailtips, body mist, clothing
items such as T-shirts, polo shirts, night-shirts and in particular
clothing for children, beach towels, hats etc. According to the
Appellant they are the proprietor of Archie Comic Publication Inc. and
own the “ARCHIE” trademark with its variations like “ARCHIE”,
“ARCHIE‟S”, “LITTLE ARCHIE”, “THE ARCHIES” “THE NEW
ARCHIES”, “ARCHIE COMICS” etc. It is claimed by the Appellant that
since they are using the said trademark “ARCHIE” since 1942, by
virtue of its long, continuous and extensive use consumers all over the
world, including those in India associate the trade mark “ARCHIE” with
that of the Appellant.
3. The Appellant had applied for registration of “ARCHIE and
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Heads” on 17 October, 1989 in Class 16 and it is claimed that they
have been extensively using this mark in India since 1979. According
to the Appellant they came to know that the Respondents have started
using their trademark for the first time in June, 2004 when they came
across an advertisement for the trademark “ARCHIES and device”,
“PURPLE ARCHIE” and “ARCHIES” in Class 25, which was published
in the trademark journals. The Respondents are allegedly involved in
FAO (OS) No. 260/2008 Page 3 of 24
the business of manufacturing and selling kids wear under the said
trademark.
4. The issue that arises for determination in the present appeal is
whether this Court has jurisdiction to entertain the suit filed by the
Appellant. For the purpose of jurisdiction the averments in the plaint
are set out in paragraph 32, which are reproduced as under: -
“32. That this Hon‟ble Court has the jurisdiction to
entertain, try and determine the present suit as a part of
the cause of action arose within the territorial jurisdiction
of this Hon‟ble Court. The Defendant‟s mark has been
advertised in the Trade Marks Journal which was
circulated in Delhi, within the jurisdiction of this Hon‟ble
Court. Therefore, this Hon‟ble Court has the jurisdiction
to entertain, try and decide the present suit under Section
134 (2) of the Trade Marks Act, 1999 as the plaintiff is
carrying on its business in Delhi at least since 1979.”
5. Narration of relevant facts for the determination of the issues are
that the Appellant is a company organized and existing under the laws
of State of New York having its office at New York, USA. The Appellant
has been impleaded through C/o Mr. Sudhir D. Ahuja, having his office
at 53, Syed Amir Ali Avenue, Calcutta. It is stated in the plaint that Mr.
Sudhir D. Ahuja is a constituted power of attorney holder of the
Appellant and has been duly authorized to verify and affix his
signatures on the plaint and sign or execute vakalatnama, affirm
affidavits and all other papers and undertake all acts necessary for the
prosecution of the above suit on its behalf. In the plaint it is nowhere
FAO (OS) No. 260/2008 Page 4 of 24
averred that the Appellant is having its office anywhere in India. Thus,
from the pleadings it is evident that the Appellant has no place of work
in India.
6. It is rather the case of the Appellant that in 1966 “ARCHIE
COMICS” were imported into India and an invoice issued by the
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Appellant to Variety Book Depot, New Delhi dated 8 May, 1979 with
copies of the comic book covers including the earlier issues are
annexed. Thus, the basis of claim that it is carrying on its business in
Delhi at least since 1979, is that its books are being imported into
India.
7. In the light of these averments the Respondents moved an
application under Order 7 Rule 11 being IA No.238/2006 in CS (OS)
No.1420/2005 for rejection of the plaint urging that the Court of Delhi
had no jurisdiction, as neither the Appellant carries on his work or
personally works for gain at Delhi nor the Respondents reside or carry
on business nor any cause of action has arisen in Delhi. After filing its
reply to IA No.238/2008, the Appellant filed an application under Order
6 Rule 17 being IA No.5271/2006 for amendment of the pleadings
stating that after the filing of the suit, it has also come to know that the
Respondents have got a distributor who is operating within the
jurisdiction of the Delhi High Court and had been purchasing ARCHIES
products from the Respondents/their predecessor. The application also
FAO (OS) No. 260/2008 Page 5 of 24
states that the Appellant has also come to know that the Respondents
had advertised their products under the trademark ARCHIES in
newspapers including Mid-Day, Delhi Edition, and they are also
operating their website, namely, www.purplearchies.com which can be
accessed from anywhere in India including Delhi and are thus,
infringing the trademark of the Appellant.
8. In response to the application of the Appellant under Order 6
Rule 17 Respondents filed their reply denying that on the date of filing
of the suit or at any time thereafter the Respondents have distributors
in Delhi or that they advertised their products under the trademark
“ARCHIE” in newspapers including Mid Day, Delhi edition. It is stated
that even as per the settled law advertising alone by the defendant does
not give a right to the plaintiff to invoke the jurisdiction of this Court.
It is also denied that the Respondents are operating any website which
can be accessed from Delhi. It is further contended that on the
pleadings of the Appellant this Court did not have the territorial
jurisdiction to entertain and try the present suit and in any case by way
of the amendment jurisdiction to try the suit cannot be vested in this
Court.
9. Learned counsel for the Appellant in support of his contention
relies upon Section 134 of the Trade Marks Act, 1999 stating that since
the Appellant actually and voluntarily carries on business at Delhi, it is
FAO (OS) No. 260/2008 Page 6 of 24
entitled to institute a suit ventilating his grievance of violation of
copyright at Delhi. Reliance is placed on Liverpool and London S.P.
and I Asson. Ltd. v. M.V. Sea Success I and Anr., 2004 (9) SCC 512,
Wasudhir Foundation v. C. Lal and Sons, 45 (1991) DLT 556, Rajesh
Kumar Aggarwal and others vs. Mr. K.K. Modi and others, 1999 VI AD
(Delhi), 188 and The Singer Company Limited and another v. Chetan
Machine Tools and others, 159 (2009) DLT 135.
10. The issue whether Section 62 of the Copyright Act and Section
134 of the Trade Marks Act oust Section 20 of the CPC is no more res
integra. This Court in Indian Performing Right Society Ltd. v. Sanjay
Dalia and another, 2009 II AD (DELHI) 13 (authored by one of us
Vikramajit Sen, J) held as under: -
“3. We have carefully cogitated upon the contentions
articulated before us on behalf of the litigating
adversaries. Intas Pharmaceuticals Ltd. –vs- Allergan Inc.,
132(2006) DLT 641(DB) lays down an important principle
of law in that it interprets Section 134 of the Trade Marks
Act as not whittling down the provisions of Section 20 of
the CPC but providing an additional forum and a place for
filing a suit in case of an infringement of a trademark.
The Division Bench presided over by Dr. Mukundakam
Sharma, J. (as his Lordship then was) has also opined that
the words “notwithstanding anything contained in the
CPC” are indicative of the position that Section 134 of the
Trade Marks Act has to be read conjointly with and in
addition to the provisions of Section 20 of the CPC. To
those observations we may add that it is only in the event
of a conflict between the provisions of Section 20 of the
CPC and those of Section 134 of the Trade Marks Act that
the latter would prevail. The effort of the Court must be,
FAO (OS) No. 260/2008 Page 7 of 24
so far as is possible, not to curtail the role that can be
played by either of the provisions acting conjointly or
simultaneously. This Court in Intas had predicated its
decision on the opinion of the Supreme Court in Dhodha
House –vs- S.K. Maingi, (2006) 9 SCC 41 in which it has
been enunciated that Section 62(2) of the Copyright Act
provides an additional forum to enable the holder of a
copyright to file a suit at the place of his residence,
thereby insulating him from the tedium or vexatiousness
of taking the fight to the doorstep of the violating
Defendant. The Trade and Merchandise Marks Act, 1958
did not contain a provision akin to Section 134(2) of the
Trade Marks Act, 1999 enabling the Plaintiff to enjoy the
convenience of filing a suit at the place where he resides
or carries on business etc. The extant provisions are
indeed salutary in purpose and effect, since otherwise the
legal remedy available for a breach of copyright or an
infringement of trademark often remains illusory. It
appears to us that the Court would be acquiescing in an
assault on a general principle of law prevalent at least in
all common law systems if it were to allow a lis to
continue at a place where neither has the cause of action
arisen nor has the Defendant have a residence or place of
business. This legal principle attempts to obviate the use
of litigation as a device of harassment calculated to force
an adversary into succumbing into a settlement for fear
of fighting a lis at an inconvenient venue. Having made
this observation, we see no impediment in extrapolating
this impeccable reason onto an interpretation of Section
62(2) of the Copyright Act and Section 134(2) of the
Trade Marks Act, (which are verbatim to each other), by
requiring the Plaintiff to file a suit at the place where it
has its principal or subordinate place of business if the
cause of action has arisen there. Alternatively, the
Plaintiff may take recourse to the provisions of Section 20
of the CPC.
7. We have perused the Parliamentary Debates relating
to the amendments carried out to the law of copyright
and trademark. One of the Objections that was raised was
FAO (OS) No. 260/2008 Page 8 of 24
that the new jurisdictional dispensation would favour
multinational corporations as they would be able to
initiate litigation according to their choice and secondly
that a poor holder of a trademark will be at a
disadvantage. In the context of the first Objection it was
clarified that the new provisions would be to the
advantage of the petty trader incidentally doing his trade
on the basis of a registered trademark, and that if this
purpose was not achieved, an amendment would be
brought in. If the interpretation of Section 62 which we
intend to impart, (which would also apply to Section 134
of the Trade Marks Act) is accepted, both these
apprehensions would be addressed and resolved. Plainly,
if the cause of action has arisen at a particular place
where the plaintiff has its principal or subordinate office,
and it is restricted to filing a case in that place alone, the
Defendant would not be put to any unfair disadvantage.
The intendement of Section 62 of the Copyright Act and
Section 134 of the Trade Marks Act is to enable the
Plaintiff to initiate litigation at a forum convenient to it. It
is not intended to allow the plaintiff to choose a territorial
forum which is not convenient to either of the parties, as
is demonstrated by the case in hand. Bill No. XV of 1955
sought to “amend and consolidate the law relating to
copyright”. The Parliamentary Committee was of the
opinion that “many authors are deterred from instituting
infringement proceedings because the court in which
such proceedings are to be instituted is situated at a
considerable distance from the place of their ordinary
residence. The Committee feels that this impediment
should be removed and the new sub-clause (2)
accordingly provides that infringement proceedings may
be instituted in the district court within the local limits of
whose jurisdiction the person instituting the proceedings
ordinarily resides, carries on business, etc.” This is a
manifestation, in reverse, of what we have assessed as a
general principle of law, viz., that the intendment behind
prescribing the place of suing is to ensure that litigation
should be as best possible not a weapon of harassment.
Since experience had exposed the reality that if a plaintiff
FAO (OS) No. 260/2008 Page 9 of 24
in an action for infringement of copyright or trademark
may not be able to enjoy the fruits thereof if he was
compelled to file at the transgression‟s place of business,
the amendment was brought about. It could not have
been the intention of Parliament to enable the Plaintiff to
choose the place of suing on the basis of what would be
the inconvenience to the Defendant.
8. The learned Single Judge is unassailably correct in
opining that “the plaintiff would be deemed to carry on
business at a branch office only if a cause of action has
arisen in Delhi”. In doing so he has extracted and infused
the rationale of the CPC into Section 62 of the Copyright
Act. As we have already recorded above, it is the
uncontrovered case of the parties that the cause of action
has not arisen in Delhi. The neat question is whether a
court of law is proscribed from introducing the aspect of
cause of action merely because it has not been prescribed
in the legislation. Alternatively, in the absence of an
Explanation as is to be found in Section 20 of the CPC can
the pragmatic and equitable principles not be injected into
the relevant Section. It is beyond cavil that the concept of
cause of action is inseparably intertwined in each and
every litigation. Without it the lis would be liable for
rejection under Order VII Rule 11 of the CPC. The cause
of action, therefore, permeates every sinew of the suit and
all procedural provisions, which are but handmaidens of
justice.
10. So far as Section 20 is concerned, the Explanation is
clarificatory in nature. The problem that is presented is
that Section 62 of the Copyright Act does not have any
similar Explanation. Strictly speaking, an Explanation
found in one statute cannot be read into another statute.
The CPC, however, constitutes a grundnorm, the ethos
and essence of which percolates through all other
statutes. If any doubt persists in the context of the
provisions of Copyright Act or the Trade Marks Act, we
would not hesitate to dispel them with the aid of this
Explanation found in the CPC. In Harshad S. Mehta vs.
State of Maharashtra, 2001 VII AD (S.C.) 137=AIR 2001
SC 3774 it has been held that if two Acts are similar an
external aid of statutory interpretation contained in one
and omitted in another can be read into the latter. This
course has also been favoured in Shri Narakesari
FAO (OS) No. 260/2008 Page 10 of 24
Prakashan Ltd. vs. Employees‟ State Insurance
Corporation, AIR 1984 SC 1916.
11. The intention of the legislature is evident, inter alia,
in the non-obstante clause pertaining to the CPC. The
word “notwithstanding” in ordinary parlance means
„inspite of‟ or despite. (See Concise Oxford Dictionary as
well as Black‟s Law Dictionary). This word does not
indicate that the CPC has no role to play. In the factual
matrix before us the word „notwithstanding‟ connotes that
in addition to Section 20 of the CPC, by virtue of Section
62(2) of the Copyright Act, the plaintiff is free to choose a
forum convenient to it, that is, wherever it actually and
voluntarily resides or carries on business or personally
works for gain, provided the cause of action arises there.
This is in contradistinction to that of the defendant as
prescribed by Section 20 of the CPC. It is difficult for us to
conceive of a situation where the ameliorative advantage
bestowed on the plaintiff by virtue of Section 62 of the
Trade Marks Act or Section 134 of the Trademarks Act
could be frustrated if this interpretation is given effect to.
Let us assume that the cause of action has arisen in
Kanyakumari. It is axiomatic that in the case of a violation
of a trademark or copyright the Defendant would have
some presence, that is, actual and voluntary residence, or
carrying on of business or working for gain, in
Kanyakumari. If the Plaintiff also carries on business etc.
in Kanyakumari there would be no justifiable reason not to
bring the suit only at Kanyakumari. Assuming, however,
that the Plaintiff does not carry on business in
Kanyakumari but in Delhi or in Bombay or Calcutta, he
would face the disadvantage of having to file his suit at a
hostile or inconvenient place. Section 62 would then enure
to his benefit and enabling it to file the action in any of the
three cities. However, if the Plaintiff were to be free to
choose from any of the places where he is carrying on
business etc. with no correlation to the cause of action,
the consequence would be that his choice would create for
the Defendant the very disadvantage which the legislation
has sought to alleviate for the Plaintiff. In that event, no
useful purpose would be served for the plaintiff except for
additional harassment to the Defendant. This could never
have been the intention or purpose of Parliament and if
this pragmatic and commonsense interpretation is not
imparted to the Section, the comment of Hon‟ble Minister,
Mr. Murosoli Maran that an amendment would be brought
FAO (OS) No. 260/2008 Page 11 of 24
in would become imperative. Since the cause of action is
an integral, inseparable and inevitable part of any
litigation, by reading it into Section 62 of the Copyright
Act and Section 134 of the Trade Marks Act, the law is
made meaningful and expedient. This is the bounden duty
of any Court which is called upon to interpret a provision
of law.
12. We have already mentioned the landmark and oft-
quoted judgment of the Supreme Court in Patel Roadways
and Oil and Natural Gas Commission. We must also refer
to a more comparatively recent decision in Kusum Ingots
and Alloys Limited vs. Union of India, (2004) 6 SCC 254
where it has been enunciated that if only a small part of
the cause of action has arisen within the territorial
jurisdiction of a particular High Court, it is not bound to
entertain the petition. It would be sufficiently empowered
to refer the petition to the court where substantially the
cause of action has arisen as it would be more convenient
to adjudicate the matter in that court. Although it was
Section 20 of the CPC which was in focus in all those
cases, it is the legal rationale behind it that had compelled
the court to render a purposive interpretation thereto.
This approach is exactly what is called for even where the
Court is to interpret other statutes such as the Copyright
Act and the Trade Marks Act.”
11. Thus, the facts of the present case are required to be tested in
light of the settled law that the Plaintiff can file a suit in terms of
Section 134 of the Trademarks Act, 1999 at the place where he “carries
on business or personally works for gain”. The Appellant in this case
does not have any registered office in India much less in Delhi. The
sole averment for carrying on business in Delhi is that one bookshop,
that is, Variety Book Stores has been importing books, comics etc. from
the Appellant and retailing at their store in Delhi and in this regard one
invoice of the year 1979 is filed. Even by way of application for
FAO (OS) No. 260/2008 Page 12 of 24
amendment under Order 6 Rule 17 CPC what is sought to be
introduced is, “The Plaintiff is also carrying on its business at least
since 1979 and the Plaintiff has its sole distributor i.e. Variety Book
Depot, Connaught Circus, New Delhi who is exclusively selling Archie
Comics on behalf of the Plaintiff within the territory of this Hon‟ble
Court and who has also been importing books from the Plaintiff in a
substantial way.” It is contended that this Hon‟ble Court has the
jurisdiction to entertain, try and decide the suit under Section 134 (2)
of the Trademarks Act, 1999 as the Plaintiff is carrying on its business
in Delhi at least since 1979.
The Hon‟ble Supreme Court in Dhodha House vs. S.K. Maingi,
2006 (9) SCC 41 held:-
“40. The expression 'carries on business' and the
expression 'personally works for gain' connotes two
different meanings. For the purpose of carrying on
business only presence of a man at a place is not
necessary. Such business may be carried at a place
through an agent or a manager or through a servant. The
owner may not even visit that place. The phrase 'carries
on business" at a certain place would, therefore, mean
having an interest in a business at that place, a voice in
what is done, a share in the gain or loss and some control
thereover. The expression is much wider than what the
expression in normal parlance connotes, because of the
ambit of a civil action within the meaning of section 9 of
the Code. But it is necessary that the following three
conditions should be satisfied, namely:-
"(1) The agent must be a special agent who attends
exclusively to the business of the principal and carries it
on in the name of the principal and not a general agent
who does business for any one that pays him. Thus, a
FAO (OS) No. 260/2008 Page 13 of 24
trader in the mufassil who habitually sends grain to
Madras for sale by a firm of commission agents who have
an independent business of selling goods for others on
commission, cannot be said to "carry on business" in
Madras. So a firm in England, carrying on business in the
name of A.B. & Co., which employs upon the usual terms
a Bombay firm carrying on business in the name of C.D.
& Co., to act as the English firm's commission agents in
Bombay, does not "carry on business" in Bombay so as to
render itself liable to be sued in Bombay.
(2) The person acting as agent must be an agent in the
strict sense of the term. The manager of a joint Hindu
family is not an "agent" within the meaning of this
condition.
(3) To constitute "carrying on business" at a certain
place, the essential part of the business must take place
in that place. Therefore, a retail dealer who sells goods in
the mufassil cannot be said to "carry on business" in
Bombay merely because he has an agent in Bombay to
import and purchase his stock for him. He cannot be said
to carry on business in Bombay unless his agent made
sales there on his behalf. A Calcutta firm that employs an
agent at Amritsar who has no power to receive money or
to enter into contracts, but only collects orders which are
forwarded to and dealt with in Calcutta, cannot be said to
do business in Amritsar. But a Bombay firm that has a
branch office at Amritsar, where orders are received
subject to confirmation by the head office at Bombay, and
where money is paid and disbursed, is carrying on
business at Amritsar and is liable to be sued at Amritsar.
Similarly a Life Assurance Company which carries on
business in Bombay and employs an agent at Madras who
acts merely as a Post Office forwarding proposals and
sending moneys cannot be said to do business in Madras.
Where a contract of insurance was made at place A and
the insurance amount was also payable there, a suit filed
at place B where the insurance Co. had a branch office
was held not maintainable. Where the plaintiff instituted
a suit at Kozhikode alleging that its account with the
defendant Bank at its Calcutta branch had been wrongly
debited and it was claimed that that court had
jurisdiction as the defendant had a branch there, it was
held that the existence of a branch was not part of the
cause of action and that the Kozhikode Court therefore
FAO (OS) No. 260/2008 Page 14 of 24
had no jurisdiction. But when a company through
incorporated outside India gets itself registered in India
and does business in a place in India through its agent
authorized to accept insurance proposals, and to pay
claims, and to do other business incidental to the work of
agency, the company carries on business at the place of
business in India.
[See Mulla on the Code of Civil Procedure (Act V of 1908)
-Fifteenth Edition - Volume I, Pages 246-247.]
41. A corporation in view of Explanation appended to
Section 20 of the Code would be deemed to be carrying
on business inter alia at a place where it has a
subordinate office. Only because, its goods are being sold
at a place would thus evidently not mean that it carries a
business at that place.
45. 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
manufactured 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.”
As is evident, Variety Book Store is not the special agent of the
Appellant. The Appellant has no control over the working of Variety
Book Store. Thus, in view of the legal position, enunciated above, it
cannot be said that the Plaintiff carries on business or was personally
working at Delhi thus, vesting a jurisdiction in this Court to entertain
the plaint.
FAO (OS) No. 260/2008 Page 15 of 24
12. The next ground urged by the Appellant to invoke the jurisdiction
of this Court is that the defendant‟s mark has been advertised in the
Trademark Journal which was circulated, within the jurisdiction of this
Court.
The issue whether publication of the proposed registration of
trademark at Delhi or even of the advertisement in a newspaper in
Delhi vests jurisdiction in the Court at Delhi to try the suit has also
been set at rest by the Hon‟ble Supreme Court in Dhodha House
(supra) enunciating as under:
“An advertisement by itself in a journal or a paper would
not confer jurisdiction upon a court, as would be evident
from the following observations of this Court in Oil and
Natural Gas Commission v. Utpal Kumar Basu and Ors.
(1994) 4 SCC 711:
„Therefore, broadly speaking, NICCO claims that a
part of the cause of action arose within the
jurisdiction of the Calcutta High Court because it
became aware of the advertisement in Calcutta, it
submitted its bid or tender from Calcutta and made
representations demanding justice from Calcutta on
learning about the rejection of its offer. The
advertisement itself mentioned that the tenders
should be submitted to EIL at New Delhi; that those
would be scrutinized at New Delhi and that a final
decision whether or not to award the contract to the
tenderer would be taken at New Delhi. Of course,
the execution of the contract work was to be carried
out at Hazira in Gujarat. Therefore, merely because
it read the advertisement at Calcutta and submitted
the offer from Calcutta and made representations
from Calcutta would not, in our opinion, constitute
facts forming an integral part of the cause of action.
FAO (OS) No. 260/2008 Page 16 of 24
So also the mere fact that it sent fax messages from
Calcutta and received a reply thereto at Calcutta
would not constitute an integral part of the cause of
action....‟”
Thus, this contention of the Appellant also deserves to be
rejected.
13. Another issue which arose for determination before the learned
Single Judge was whether a Court which does not have territorial
jurisdiction on the basis of the averments made in the plaint as
originally filed, can entertain an application for amendment of the
plaint, which if allowed would bring the case within the jurisdiction of
such Court? The learned Single Judge vide the impugned order held
that the question of jurisdiction has to be determined on the basis of
the averments made in the plaint as originally filed and in the absence
of the territorial jurisdiction to entertain the plaint, it had no
jurisdiction to entertain the application under Order 6 Rule 17, CPC for
amendment of the plaint.
14. Learned counsel for the Appellant relies on Wasudhir Foundation
v. C. Lal & Sons 45 (1991) DLT 556 where after adverting to a Division
Bench judgment in Gaganmal Ramchand v. HSBC AIR 1950 Bombay
345 it was held that the Court may allow an Application for amendment
of the plaint to prevent the plaint from being rejected though an
Application for rejection of the same is pending. The reasoning of the
FAO (OS) No. 260/2008 Page 17 of 24
learned Single Judge in support of his view is encapsulated in the
following paragraph of the judgment:
“This is the righteous path and, if this be so is it not
necessary, in the ends of justice, to extend the beneficial
legal principles ensconced in Order 6 rule 17 more so,
when one hardly discerns anything in Order 7 rule 11
which may lead one to take the view that it takes away
the power of the court to allow amendments of places
hurdles in performance of its duty? After all what is the
effect of Order 7 rule 11? It is, if I understand correctly,
that the plaintiff would not be precluded from filing a
fresh suit in respect of the same cause of action. If he so
desires see Order 7 Rule 13. If such be the effect, why
not permit the amendment of the plaint so as to remove
the defect and prevent the operation of the Rule? Why
make him first invite the rejection of the plaint, then
allow him to file a fresh suit at the expense of delay and
heavy costs? Why not straightaway allow him to amend
the plaint, remove the defect and permit him, thereby, to
proceed with the same suit? Why this rigmarole? After
all, procedural law is intended to facilitate and not to
obstruct the course of justice.”
A similar view was taken by another Ld. Single Judge of this
Court in Hari Bhagwan Sharma and Ors. v. Badri Bhagat Jhandewalan
Temple Society and Ors., 27 (1985) DLT 68.
15. We have given our anxious consideration to the two views
expressed. It is well settled that for any adjudicatory authority to act,
Jurisdictional Fact is a sine qua non for the same. A jurisdictional fact is
one on the existence or non-existence of which depends the vesting of
jurisdiction in a Court, Tribunal or an authority. In Black‟s Legal
FAO (OS) No. 260/2008 Page 18 of 24
Dictionary it is explained as a fact which must exist before a court can
properly assume jurisdiction of a particular case.
16. In this regard it would be relevant to note Section 134 of the
Trademarks Act, 1999 which postulates that a suit can be instituted by
the Plaintiff within the local limits of whose jurisdiction at the time of
institution of suit or other proceedings, the person instituting the suit
or proceedings actually and voluntarily resides or carries on business
or personally works for gain. Thus, the section clearly envisages that at
the time of institution of the suit, the Appellant should have been
carrying on business at Delhi, which unfortunately is not the factual
situation in the present case.
17. Further the jurisdiction of a Court may be classified into i)
Territorial or Local jurisdiction, ii) Pecuniary Jurisdiction and iii)
Jurisdiction over the subject matter. It is clearly laid down in Sec. 21,
CPC that so far as Objection to lack of territorial and pecuniary
jurisdiction is concerned, the same has to be taken at the earliest and
cannot be allowed to be taken at a subsequent stage. However,
jurisdiction as to subject matter is totally distinct and stands on a
different footing. Where a Court has no jurisdiction over the subject
matter of the Suit, the order passed would be a nullity. Neither consent
nor waiver or acquiescence can confer jurisdiction upon a Court
otherwise incompetent to try the Suit. However, the validity of a
FAO (OS) No. 260/2008 Page 19 of 24
decree/judgment cannot be challenged on the ground of lack of
territorial jurisdiction in execution proceedings and the judgment
debtor is estopped from taking such an Objection unless prejudice is
caused on merits. The Hon‟ble Supreme Court in Hira Lal Patni vs. Sri
Kali Nath, AIR 1962 SC 199, held:
“It is well settled that the objection as to local jurisdiction
of a court does not stand on the same footing as an
objection to the competence of a court to try a case.
Competence of a court to try a case goes to the very root
of the jurisdiction, and where it is lacking, it is a case of
inherent lack of jurisdiction. On the other hand an
objection as to the local jurisdiction of a court can be
waived and this principle has been given a statutory
recognition by enactments like S. 21 of the Code of Civil
Procedure. Having consented to have the controversy
between the parties resolved by reference to arbitration
through court, the defendant deprived himself of the
right to question the authority of the court to refer the
matter to arbitration or of the arbitrator to render the
award. It is clear, therefore, that the defendant is
estopped from challenging the jurisdiction of the Bombay
High Court to entertain the suit and to make the
reference to the arbitrator. He is equally estopped from
challenging the authority of the arbitrator to render the
award.”
18. It may be noted that earlier under the Code of Civil Procedure
Section 21 provided for objections to jurisdiction to be taken at the
earliest possible opportunity only with regard to the place of using. By
the Code of Civil Procedure Amendment Act, 1976, Section 21 was
renumbered as 21(1) and sub-sections (2) and (3) were brought in, by
virtue thereof an objection as to the competence of the Court with
FAO (OS) No. 260/2008 Page 20 of 24
reference to the pecuniary limits of its jurisdiction were to be taken in
the Court of first instance at the earliest possible opportunity. This was
in line with the interpretation of the Hon‟ble Supreme Court in Kiran
Singh vs. Chaman Paswan and others, AIR 1954 SC 340 even prior to
the amendment, in view of Sec. 11 of the Suits Valuation Act. It was
held:
7. “With reference to objections relating to territorial
jurisdiction, Section 21 of the Civil Procedure Code
enacts that no objection to the place of suing should be
allowed by an appellate or revisional court, unless there
was a consequent failure of justice. It is the same
principle that has been adopted in section 11 of the Suits
Valuation Act with reference to pecuniary jurisdiction.
The policy underlying sections 21 and 99, C.P.C. and
section 11 of the Suits Valuation Act is the same, namely,
that when a case had been tried by a Court on the merits
and judgment rendered, it should not be liable to be
reversed purely on technical grounds, unless it had
resulted in failure of justice and the policy of the
legislature has been to treat objections to jurisdiction
both territorial and pecuniary as technical and not open
to consideration by an appellate court, unless there has
been a prejudice on the merits. The contention of the
appellants, therefore, that the decree and judgment of
the District Court, Monghyr, should be treated as a
nullity cannot be sustained under section 11 of the Suits
Valuation Act.”
19. In Bahrein Petroleum Co. Ltd. vs. P.J. Pappu and Anr. AIR 1966
SC 634, it was held:
“Counsel for the plaintiff-respondent submitted that it
was open to the defendants to waive this objection, and if
they did so, they could not subsequently take the
objection. This submission is well founded. As a general
rule, neither consent nor waiver nor acquiescence can
confer jurisdiction upon a Court, otherwise incompetent
to try the suit. But S. 21 of the Code provides an
FAO (OS) No. 260/2008 Page 21 of 24
exception, and a defect as to the place of suing, that is to
say, the local venue for suits cognizable by the Courts
under the Code may be waived under this section. The
waiver under S. 21 is limited to objection in the appellate
and revisional Courts. But S. 21 is the statutory
recognition of the principle that the defect as to the place
of suing under Ss. 15 to 20 may be waived. Independently
of this section, the defendant may waive the objection
and may be subsequently precluded from taking it.”
20. The Hon‟ble Supreme Court in Subhash Mahadevasa Habib vs
Nemasa Ambasa Dharmadas (Dead) by LRs & Ors, (2007) 13 SCC 650
reiterated these principles and held:
“Whereas an inherent lack of jurisdiction may make a
decree passed by that court one without jurisdiction or
void in law, a decree passed by a court lacking territorial
jurisdiction or pecuniary jurisdiction does not
automatically become void. At best it is voidable in the
sense that it could be challenged in appeal therefrom
provided the conditions of Section 21 of the Code of Civil
Procedure are satisfied.”
21. In Singer Company Ltd. (Supra), one of us (Vikramajit Sen, J.)
relying on Wasudhir Foundation (Supra) held that procedural laws are
intended to facilitate and not to obstruct the course of substantial
justice. It was observed that in Ganesh Trading Co. vs. Moji Ram (1978)
2 SCR 614, the Hon‟ble Supreme Court held that the defective
pleadings are generally curable if the cause of action sought to be
brought out was not ab initio completely absent. The application under
Order 6 Rule 17, CPC was allowed to cure defective pleadings so as to
FAO (OS) No. 260/2008 Page 22 of 24
constitute a cause of action as the documents filed alongwith the plaint
thereby forming the part of plaint showed jurisdictional facts.
22. Applying the principle of doctrine of relation back as laid down by
the Hon‟ble Supreme Court in Siddhalingamma and another vs. Mamta
Shenoy, 2001 (8) SCC 561 and Sampat Kumar vs. Ayyakannu and
another, AIR 2002 SCC 3369 that once an amendment is allowed
unless it is expressly excluded by the Court, a Plaint or petition would
be deemed to have been filed as it appears after the amendment, in our
view if a plaint is completely bereft of any pleading which are the
„jurisdictional facts‟, the civil court in that case will not have the
jurisdiction to proceed in that suit or even to allow an application
seeking amendment under Order 6 Rule 12 CPC. Thus a completely
unconscionable plaint which does not reveal any fact which confers a
jurisdiction on a civil court to act may not vest the jurisdiction with the
Civil Court to even allow an amendment of the same. But if it is a case
of unclear or ambiguous pleadings, the same may be allowed to be
amended to clarify the already pleaded facts till the same does not give
rise to addition of a new cause of action or pleading new facts.
23. In the light of these decisions, it is evident that though the issue
of territorial jurisdiction does not strike at the root of the proceedings,
however, consent cannot confer territorial jurisdiction on a Court which
has none. The Court, however, if no objection thereto is taken at the
FAO (OS) No. 260/2008 Page 23 of 24
appropriate time, in view of the fact that the proceedings have attained
finality will not set aside the decree, unless prejudice is caused on
merits.
In our view, if the plaint discloses some facts, which may
however, be incomplete to vest territorial jurisdiction in the Court, the
Court would entertain an Application for amendment of the pleadings.
This is more so, as such an amendment would not set up a new case.
However, if no facts are disclosed qua territorial jurisdiction then the
defect cannot be even cured by amendment and in such a case an
Application for amendment cannot be entertained.
24. Indubitably, at this stage the Respondent‟s response cannot be
looked into. However, on merits in the present case, as discussed
above, even taking the pleadings and documents annexed thereto by
way of amendment, this Court has no territorial jurisdiction to entertain
the plaint.
25 For the reasons stated above the present Appeal is dismissed. No
order as to costs.
(MUKTA GUPTA)
JUDGE
(VIKRAMAJIT SEN)
JUDGE
SEPTEMBER 10, 2010
vn
FAO (OS) No. 260/2008 Page 24 of 24
+ FAO (OS) No. 260/2008
th
% Reserved on: 9 July, 2010
th
Decided on: 10 September, 2010
Archie Comic Publications Inc
(A company organized and existing under the laws of
State of New York, USA) having its office at
325, Fayettee Avenue,
Mamaroneck,
New York 10543,
United States of America
C/o Mr. Sudhir D. Ahuja,
Having his office at:
53, Syed Amir Ali Avenue,
Calcutta-700 019. ..... Appellant
Through: Mr. C.M. Lall, Mr. Jyotideep Kaur,
Ms. Ekta Sarin and Mr. Subhash
Bhutoria, Advocates.
versus
1. Purple Creations Pvt Ltd.
B-123, Ghatkopar Industrial Estate,
L.B.S. Marg, Agra Road,
Ghatkopar (West), Mumbai-400 086.
2. Nagji Kheraj Vira,
Director,
Purple Creations Pvt. Ltd.
B-123, Ghatkopar Industrial Estate,
L.B.S. Marg, Agra Road,
Ghatkopar (West), Mumbai-400 086.
3. Pankaj Nagji Vira,
Director,
Purple Creations Pvt. Ltd.
8, Ramnik Villa, Uday Cinema Lane,
th
5 Road, Ghatkopar (West),
Mumbai-400 086.
FAO (OS) No. 260/2008 Page 1 of 24
4. Dipak Nagji Vira,
Director,
Purple Creations Pvt. Ltd.
8, Ramnik Villa, Uday Cinema Lane,
th
5 Road, Ghatkopar (West),
Mumbai-400 086. ..... Respondents
Through: Mr. Sanjeev Sachdeva and Mr. Preet
Pal Singh, Advocates.
Coram:
HON'BLE MR. JUSTICE VIKRAMAJIT SEN
HON'BLE MS. JUSTICE MUKTA GUPTA
1. Whether the Reporters of local papers may
be allowed to see the judgment? Yes
2. To be referred to Reporter or not? Yes
3. Whether the judgment should be reported
in the Digest? Yes
MUKTA GUPTA, J.
1. By way of the present appeal the Appellant lays a challenge to the
th
order dated 20 April, 2008 whereby the application of the Appellant
being I.A. No. 5271/2006 in CS (OS) No. 1420/2005 under Order 6 Rule
17 CPC for amendment of the plaint was dismissed and the application
of the Respondents herein being I.A. No. 238/2006 under Order 7 Rule
11 CPC was allowed, thereby returning the plaint of the Appellant for
the purposes of filing before the competent Court.
2. The Appellant had instituted a suit inter alia for permanent
injunction, infringement of trademark, damages, against the
FAO (OS) No. 260/2008 Page 2 of 24
Respondents claiming to be engaged in the field of printed matter,
paper articles, newspapers, periodicals, books, comic magazines,
cartoons strips, story books, films and a myriad of licensed products
including: glassware, lipstick, vanity sets, nailtips, body mist, clothing
items such as T-shirts, polo shirts, night-shirts and in particular
clothing for children, beach towels, hats etc. According to the
Appellant they are the proprietor of Archie Comic Publication Inc. and
own the “ARCHIE” trademark with its variations like “ARCHIE”,
“ARCHIE‟S”, “LITTLE ARCHIE”, “THE ARCHIES” “THE NEW
ARCHIES”, “ARCHIE COMICS” etc. It is claimed by the Appellant that
since they are using the said trademark “ARCHIE” since 1942, by
virtue of its long, continuous and extensive use consumers all over the
world, including those in India associate the trade mark “ARCHIE” with
that of the Appellant.
3. The Appellant had applied for registration of “ARCHIE and
th
Heads” on 17 October, 1989 in Class 16 and it is claimed that they
have been extensively using this mark in India since 1979. According
to the Appellant they came to know that the Respondents have started
using their trademark for the first time in June, 2004 when they came
across an advertisement for the trademark “ARCHIES and device”,
“PURPLE ARCHIE” and “ARCHIES” in Class 25, which was published
in the trademark journals. The Respondents are allegedly involved in
FAO (OS) No. 260/2008 Page 3 of 24
the business of manufacturing and selling kids wear under the said
trademark.
4. The issue that arises for determination in the present appeal is
whether this Court has jurisdiction to entertain the suit filed by the
Appellant. For the purpose of jurisdiction the averments in the plaint
are set out in paragraph 32, which are reproduced as under: -
“32. That this Hon‟ble Court has the jurisdiction to
entertain, try and determine the present suit as a part of
the cause of action arose within the territorial jurisdiction
of this Hon‟ble Court. The Defendant‟s mark has been
advertised in the Trade Marks Journal which was
circulated in Delhi, within the jurisdiction of this Hon‟ble
Court. Therefore, this Hon‟ble Court has the jurisdiction
to entertain, try and decide the present suit under Section
134 (2) of the Trade Marks Act, 1999 as the plaintiff is
carrying on its business in Delhi at least since 1979.”
5. Narration of relevant facts for the determination of the issues are
that the Appellant is a company organized and existing under the laws
of State of New York having its office at New York, USA. The Appellant
has been impleaded through C/o Mr. Sudhir D. Ahuja, having his office
at 53, Syed Amir Ali Avenue, Calcutta. It is stated in the plaint that Mr.
Sudhir D. Ahuja is a constituted power of attorney holder of the
Appellant and has been duly authorized to verify and affix his
signatures on the plaint and sign or execute vakalatnama, affirm
affidavits and all other papers and undertake all acts necessary for the
prosecution of the above suit on its behalf. In the plaint it is nowhere
FAO (OS) No. 260/2008 Page 4 of 24
averred that the Appellant is having its office anywhere in India. Thus,
from the pleadings it is evident that the Appellant has no place of work
in India.
6. It is rather the case of the Appellant that in 1966 “ARCHIE
COMICS” were imported into India and an invoice issued by the
th
Appellant to Variety Book Depot, New Delhi dated 8 May, 1979 with
copies of the comic book covers including the earlier issues are
annexed. Thus, the basis of claim that it is carrying on its business in
Delhi at least since 1979, is that its books are being imported into
India.
7. In the light of these averments the Respondents moved an
application under Order 7 Rule 11 being IA No.238/2006 in CS (OS)
No.1420/2005 for rejection of the plaint urging that the Court of Delhi
had no jurisdiction, as neither the Appellant carries on his work or
personally works for gain at Delhi nor the Respondents reside or carry
on business nor any cause of action has arisen in Delhi. After filing its
reply to IA No.238/2008, the Appellant filed an application under Order
6 Rule 17 being IA No.5271/2006 for amendment of the pleadings
stating that after the filing of the suit, it has also come to know that the
Respondents have got a distributor who is operating within the
jurisdiction of the Delhi High Court and had been purchasing ARCHIES
products from the Respondents/their predecessor. The application also
FAO (OS) No. 260/2008 Page 5 of 24
states that the Appellant has also come to know that the Respondents
had advertised their products under the trademark ARCHIES in
newspapers including Mid-Day, Delhi Edition, and they are also
operating their website, namely, www.purplearchies.com which can be
accessed from anywhere in India including Delhi and are thus,
infringing the trademark of the Appellant.
8. In response to the application of the Appellant under Order 6
Rule 17 Respondents filed their reply denying that on the date of filing
of the suit or at any time thereafter the Respondents have distributors
in Delhi or that they advertised their products under the trademark
“ARCHIE” in newspapers including Mid Day, Delhi edition. It is stated
that even as per the settled law advertising alone by the defendant does
not give a right to the plaintiff to invoke the jurisdiction of this Court.
It is also denied that the Respondents are operating any website which
can be accessed from Delhi. It is further contended that on the
pleadings of the Appellant this Court did not have the territorial
jurisdiction to entertain and try the present suit and in any case by way
of the amendment jurisdiction to try the suit cannot be vested in this
Court.
9. Learned counsel for the Appellant in support of his contention
relies upon Section 134 of the Trade Marks Act, 1999 stating that since
the Appellant actually and voluntarily carries on business at Delhi, it is
FAO (OS) No. 260/2008 Page 6 of 24
entitled to institute a suit ventilating his grievance of violation of
copyright at Delhi. Reliance is placed on Liverpool and London S.P.
and I Asson. Ltd. v. M.V. Sea Success I and Anr., 2004 (9) SCC 512,
Wasudhir Foundation v. C. Lal and Sons, 45 (1991) DLT 556, Rajesh
Kumar Aggarwal and others vs. Mr. K.K. Modi and others, 1999 VI AD
(Delhi), 188 and The Singer Company Limited and another v. Chetan
Machine Tools and others, 159 (2009) DLT 135.
10. The issue whether Section 62 of the Copyright Act and Section
134 of the Trade Marks Act oust Section 20 of the CPC is no more res
integra. This Court in Indian Performing Right Society Ltd. v. Sanjay
Dalia and another, 2009 II AD (DELHI) 13 (authored by one of us
Vikramajit Sen, J) held as under: -
“3. We have carefully cogitated upon the contentions
articulated before us on behalf of the litigating
adversaries. Intas Pharmaceuticals Ltd. –vs- Allergan Inc.,
132(2006) DLT 641(DB) lays down an important principle
of law in that it interprets Section 134 of the Trade Marks
Act as not whittling down the provisions of Section 20 of
the CPC but providing an additional forum and a place for
filing a suit in case of an infringement of a trademark.
The Division Bench presided over by Dr. Mukundakam
Sharma, J. (as his Lordship then was) has also opined that
the words “notwithstanding anything contained in the
CPC” are indicative of the position that Section 134 of the
Trade Marks Act has to be read conjointly with and in
addition to the provisions of Section 20 of the CPC. To
those observations we may add that it is only in the event
of a conflict between the provisions of Section 20 of the
CPC and those of Section 134 of the Trade Marks Act that
the latter would prevail. The effort of the Court must be,
FAO (OS) No. 260/2008 Page 7 of 24
so far as is possible, not to curtail the role that can be
played by either of the provisions acting conjointly or
simultaneously. This Court in Intas had predicated its
decision on the opinion of the Supreme Court in Dhodha
House –vs- S.K. Maingi, (2006) 9 SCC 41 in which it has
been enunciated that Section 62(2) of the Copyright Act
provides an additional forum to enable the holder of a
copyright to file a suit at the place of his residence,
thereby insulating him from the tedium or vexatiousness
of taking the fight to the doorstep of the violating
Defendant. The Trade and Merchandise Marks Act, 1958
did not contain a provision akin to Section 134(2) of the
Trade Marks Act, 1999 enabling the Plaintiff to enjoy the
convenience of filing a suit at the place where he resides
or carries on business etc. The extant provisions are
indeed salutary in purpose and effect, since otherwise the
legal remedy available for a breach of copyright or an
infringement of trademark often remains illusory. It
appears to us that the Court would be acquiescing in an
assault on a general principle of law prevalent at least in
all common law systems if it were to allow a lis to
continue at a place where neither has the cause of action
arisen nor has the Defendant have a residence or place of
business. This legal principle attempts to obviate the use
of litigation as a device of harassment calculated to force
an adversary into succumbing into a settlement for fear
of fighting a lis at an inconvenient venue. Having made
this observation, we see no impediment in extrapolating
this impeccable reason onto an interpretation of Section
62(2) of the Copyright Act and Section 134(2) of the
Trade Marks Act, (which are verbatim to each other), by
requiring the Plaintiff to file a suit at the place where it
has its principal or subordinate place of business if the
cause of action has arisen there. Alternatively, the
Plaintiff may take recourse to the provisions of Section 20
of the CPC.
7. We have perused the Parliamentary Debates relating
to the amendments carried out to the law of copyright
and trademark. One of the Objections that was raised was
FAO (OS) No. 260/2008 Page 8 of 24
that the new jurisdictional dispensation would favour
multinational corporations as they would be able to
initiate litigation according to their choice and secondly
that a poor holder of a trademark will be at a
disadvantage. In the context of the first Objection it was
clarified that the new provisions would be to the
advantage of the petty trader incidentally doing his trade
on the basis of a registered trademark, and that if this
purpose was not achieved, an amendment would be
brought in. If the interpretation of Section 62 which we
intend to impart, (which would also apply to Section 134
of the Trade Marks Act) is accepted, both these
apprehensions would be addressed and resolved. Plainly,
if the cause of action has arisen at a particular place
where the plaintiff has its principal or subordinate office,
and it is restricted to filing a case in that place alone, the
Defendant would not be put to any unfair disadvantage.
The intendement of Section 62 of the Copyright Act and
Section 134 of the Trade Marks Act is to enable the
Plaintiff to initiate litigation at a forum convenient to it. It
is not intended to allow the plaintiff to choose a territorial
forum which is not convenient to either of the parties, as
is demonstrated by the case in hand. Bill No. XV of 1955
sought to “amend and consolidate the law relating to
copyright”. The Parliamentary Committee was of the
opinion that “many authors are deterred from instituting
infringement proceedings because the court in which
such proceedings are to be instituted is situated at a
considerable distance from the place of their ordinary
residence. The Committee feels that this impediment
should be removed and the new sub-clause (2)
accordingly provides that infringement proceedings may
be instituted in the district court within the local limits of
whose jurisdiction the person instituting the proceedings
ordinarily resides, carries on business, etc.” This is a
manifestation, in reverse, of what we have assessed as a
general principle of law, viz., that the intendment behind
prescribing the place of suing is to ensure that litigation
should be as best possible not a weapon of harassment.
Since experience had exposed the reality that if a plaintiff
FAO (OS) No. 260/2008 Page 9 of 24
in an action for infringement of copyright or trademark
may not be able to enjoy the fruits thereof if he was
compelled to file at the transgression‟s place of business,
the amendment was brought about. It could not have
been the intention of Parliament to enable the Plaintiff to
choose the place of suing on the basis of what would be
the inconvenience to the Defendant.
8. The learned Single Judge is unassailably correct in
opining that “the plaintiff would be deemed to carry on
business at a branch office only if a cause of action has
arisen in Delhi”. In doing so he has extracted and infused
the rationale of the CPC into Section 62 of the Copyright
Act. As we have already recorded above, it is the
uncontrovered case of the parties that the cause of action
has not arisen in Delhi. The neat question is whether a
court of law is proscribed from introducing the aspect of
cause of action merely because it has not been prescribed
in the legislation. Alternatively, in the absence of an
Explanation as is to be found in Section 20 of the CPC can
the pragmatic and equitable principles not be injected into
the relevant Section. It is beyond cavil that the concept of
cause of action is inseparably intertwined in each and
every litigation. Without it the lis would be liable for
rejection under Order VII Rule 11 of the CPC. The cause
of action, therefore, permeates every sinew of the suit and
all procedural provisions, which are but handmaidens of
justice.
10. So far as Section 20 is concerned, the Explanation is
clarificatory in nature. The problem that is presented is
that Section 62 of the Copyright Act does not have any
similar Explanation. Strictly speaking, an Explanation
found in one statute cannot be read into another statute.
The CPC, however, constitutes a grundnorm, the ethos
and essence of which percolates through all other
statutes. If any doubt persists in the context of the
provisions of Copyright Act or the Trade Marks Act, we
would not hesitate to dispel them with the aid of this
Explanation found in the CPC. In Harshad S. Mehta vs.
State of Maharashtra, 2001 VII AD (S.C.) 137=AIR 2001
SC 3774 it has been held that if two Acts are similar an
external aid of statutory interpretation contained in one
and omitted in another can be read into the latter. This
course has also been favoured in Shri Narakesari
FAO (OS) No. 260/2008 Page 10 of 24
Prakashan Ltd. vs. Employees‟ State Insurance
Corporation, AIR 1984 SC 1916.
11. The intention of the legislature is evident, inter alia,
in the non-obstante clause pertaining to the CPC. The
word “notwithstanding” in ordinary parlance means
„inspite of‟ or despite. (See Concise Oxford Dictionary as
well as Black‟s Law Dictionary). This word does not
indicate that the CPC has no role to play. In the factual
matrix before us the word „notwithstanding‟ connotes that
in addition to Section 20 of the CPC, by virtue of Section
62(2) of the Copyright Act, the plaintiff is free to choose a
forum convenient to it, that is, wherever it actually and
voluntarily resides or carries on business or personally
works for gain, provided the cause of action arises there.
This is in contradistinction to that of the defendant as
prescribed by Section 20 of the CPC. It is difficult for us to
conceive of a situation where the ameliorative advantage
bestowed on the plaintiff by virtue of Section 62 of the
Trade Marks Act or Section 134 of the Trademarks Act
could be frustrated if this interpretation is given effect to.
Let us assume that the cause of action has arisen in
Kanyakumari. It is axiomatic that in the case of a violation
of a trademark or copyright the Defendant would have
some presence, that is, actual and voluntary residence, or
carrying on of business or working for gain, in
Kanyakumari. If the Plaintiff also carries on business etc.
in Kanyakumari there would be no justifiable reason not to
bring the suit only at Kanyakumari. Assuming, however,
that the Plaintiff does not carry on business in
Kanyakumari but in Delhi or in Bombay or Calcutta, he
would face the disadvantage of having to file his suit at a
hostile or inconvenient place. Section 62 would then enure
to his benefit and enabling it to file the action in any of the
three cities. However, if the Plaintiff were to be free to
choose from any of the places where he is carrying on
business etc. with no correlation to the cause of action,
the consequence would be that his choice would create for
the Defendant the very disadvantage which the legislation
has sought to alleviate for the Plaintiff. In that event, no
useful purpose would be served for the plaintiff except for
additional harassment to the Defendant. This could never
have been the intention or purpose of Parliament and if
this pragmatic and commonsense interpretation is not
imparted to the Section, the comment of Hon‟ble Minister,
Mr. Murosoli Maran that an amendment would be brought
FAO (OS) No. 260/2008 Page 11 of 24
in would become imperative. Since the cause of action is
an integral, inseparable and inevitable part of any
litigation, by reading it into Section 62 of the Copyright
Act and Section 134 of the Trade Marks Act, the law is
made meaningful and expedient. This is the bounden duty
of any Court which is called upon to interpret a provision
of law.
12. We have already mentioned the landmark and oft-
quoted judgment of the Supreme Court in Patel Roadways
and Oil and Natural Gas Commission. We must also refer
to a more comparatively recent decision in Kusum Ingots
and Alloys Limited vs. Union of India, (2004) 6 SCC 254
where it has been enunciated that if only a small part of
the cause of action has arisen within the territorial
jurisdiction of a particular High Court, it is not bound to
entertain the petition. It would be sufficiently empowered
to refer the petition to the court where substantially the
cause of action has arisen as it would be more convenient
to adjudicate the matter in that court. Although it was
Section 20 of the CPC which was in focus in all those
cases, it is the legal rationale behind it that had compelled
the court to render a purposive interpretation thereto.
This approach is exactly what is called for even where the
Court is to interpret other statutes such as the Copyright
Act and the Trade Marks Act.”
11. Thus, the facts of the present case are required to be tested in
light of the settled law that the Plaintiff can file a suit in terms of
Section 134 of the Trademarks Act, 1999 at the place where he “carries
on business or personally works for gain”. The Appellant in this case
does not have any registered office in India much less in Delhi. The
sole averment for carrying on business in Delhi is that one bookshop,
that is, Variety Book Stores has been importing books, comics etc. from
the Appellant and retailing at their store in Delhi and in this regard one
invoice of the year 1979 is filed. Even by way of application for
FAO (OS) No. 260/2008 Page 12 of 24
amendment under Order 6 Rule 17 CPC what is sought to be
introduced is, “The Plaintiff is also carrying on its business at least
since 1979 and the Plaintiff has its sole distributor i.e. Variety Book
Depot, Connaught Circus, New Delhi who is exclusively selling Archie
Comics on behalf of the Plaintiff within the territory of this Hon‟ble
Court and who has also been importing books from the Plaintiff in a
substantial way.” It is contended that this Hon‟ble Court has the
jurisdiction to entertain, try and decide the suit under Section 134 (2)
of the Trademarks Act, 1999 as the Plaintiff is carrying on its business
in Delhi at least since 1979.
The Hon‟ble Supreme Court in Dhodha House vs. S.K. Maingi,
2006 (9) SCC 41 held:-
“40. The expression 'carries on business' and the
expression 'personally works for gain' connotes two
different meanings. For the purpose of carrying on
business only presence of a man at a place is not
necessary. Such business may be carried at a place
through an agent or a manager or through a servant. The
owner may not even visit that place. The phrase 'carries
on business" at a certain place would, therefore, mean
having an interest in a business at that place, a voice in
what is done, a share in the gain or loss and some control
thereover. The expression is much wider than what the
expression in normal parlance connotes, because of the
ambit of a civil action within the meaning of section 9 of
the Code. But it is necessary that the following three
conditions should be satisfied, namely:-
"(1) The agent must be a special agent who attends
exclusively to the business of the principal and carries it
on in the name of the principal and not a general agent
who does business for any one that pays him. Thus, a
FAO (OS) No. 260/2008 Page 13 of 24
trader in the mufassil who habitually sends grain to
Madras for sale by a firm of commission agents who have
an independent business of selling goods for others on
commission, cannot be said to "carry on business" in
Madras. So a firm in England, carrying on business in the
name of A.B. & Co., which employs upon the usual terms
a Bombay firm carrying on business in the name of C.D.
& Co., to act as the English firm's commission agents in
Bombay, does not "carry on business" in Bombay so as to
render itself liable to be sued in Bombay.
(2) The person acting as agent must be an agent in the
strict sense of the term. The manager of a joint Hindu
family is not an "agent" within the meaning of this
condition.
(3) To constitute "carrying on business" at a certain
place, the essential part of the business must take place
in that place. Therefore, a retail dealer who sells goods in
the mufassil cannot be said to "carry on business" in
Bombay merely because he has an agent in Bombay to
import and purchase his stock for him. He cannot be said
to carry on business in Bombay unless his agent made
sales there on his behalf. A Calcutta firm that employs an
agent at Amritsar who has no power to receive money or
to enter into contracts, but only collects orders which are
forwarded to and dealt with in Calcutta, cannot be said to
do business in Amritsar. But a Bombay firm that has a
branch office at Amritsar, where orders are received
subject to confirmation by the head office at Bombay, and
where money is paid and disbursed, is carrying on
business at Amritsar and is liable to be sued at Amritsar.
Similarly a Life Assurance Company which carries on
business in Bombay and employs an agent at Madras who
acts merely as a Post Office forwarding proposals and
sending moneys cannot be said to do business in Madras.
Where a contract of insurance was made at place A and
the insurance amount was also payable there, a suit filed
at place B where the insurance Co. had a branch office
was held not maintainable. Where the plaintiff instituted
a suit at Kozhikode alleging that its account with the
defendant Bank at its Calcutta branch had been wrongly
debited and it was claimed that that court had
jurisdiction as the defendant had a branch there, it was
held that the existence of a branch was not part of the
cause of action and that the Kozhikode Court therefore
FAO (OS) No. 260/2008 Page 14 of 24
had no jurisdiction. But when a company through
incorporated outside India gets itself registered in India
and does business in a place in India through its agent
authorized to accept insurance proposals, and to pay
claims, and to do other business incidental to the work of
agency, the company carries on business at the place of
business in India.
[See Mulla on the Code of Civil Procedure (Act V of 1908)
-Fifteenth Edition - Volume I, Pages 246-247.]
41. A corporation in view of Explanation appended to
Section 20 of the Code would be deemed to be carrying
on business inter alia at a place where it has a
subordinate office. Only because, its goods are being sold
at a place would thus evidently not mean that it carries a
business at that place.
45. 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
manufactured 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.”
As is evident, Variety Book Store is not the special agent of the
Appellant. The Appellant has no control over the working of Variety
Book Store. Thus, in view of the legal position, enunciated above, it
cannot be said that the Plaintiff carries on business or was personally
working at Delhi thus, vesting a jurisdiction in this Court to entertain
the plaint.
FAO (OS) No. 260/2008 Page 15 of 24
12. The next ground urged by the Appellant to invoke the jurisdiction
of this Court is that the defendant‟s mark has been advertised in the
Trademark Journal which was circulated, within the jurisdiction of this
Court.
The issue whether publication of the proposed registration of
trademark at Delhi or even of the advertisement in a newspaper in
Delhi vests jurisdiction in the Court at Delhi to try the suit has also
been set at rest by the Hon‟ble Supreme Court in Dhodha House
(supra) enunciating as under:
“An advertisement by itself in a journal or a paper would
not confer jurisdiction upon a court, as would be evident
from the following observations of this Court in Oil and
Natural Gas Commission v. Utpal Kumar Basu and Ors.
(1994) 4 SCC 711:
„Therefore, broadly speaking, NICCO claims that a
part of the cause of action arose within the
jurisdiction of the Calcutta High Court because it
became aware of the advertisement in Calcutta, it
submitted its bid or tender from Calcutta and made
representations demanding justice from Calcutta on
learning about the rejection of its offer. The
advertisement itself mentioned that the tenders
should be submitted to EIL at New Delhi; that those
would be scrutinized at New Delhi and that a final
decision whether or not to award the contract to the
tenderer would be taken at New Delhi. Of course,
the execution of the contract work was to be carried
out at Hazira in Gujarat. Therefore, merely because
it read the advertisement at Calcutta and submitted
the offer from Calcutta and made representations
from Calcutta would not, in our opinion, constitute
facts forming an integral part of the cause of action.
FAO (OS) No. 260/2008 Page 16 of 24
So also the mere fact that it sent fax messages from
Calcutta and received a reply thereto at Calcutta
would not constitute an integral part of the cause of
action....‟”
Thus, this contention of the Appellant also deserves to be
rejected.
13. Another issue which arose for determination before the learned
Single Judge was whether a Court which does not have territorial
jurisdiction on the basis of the averments made in the plaint as
originally filed, can entertain an application for amendment of the
plaint, which if allowed would bring the case within the jurisdiction of
such Court? The learned Single Judge vide the impugned order held
that the question of jurisdiction has to be determined on the basis of
the averments made in the plaint as originally filed and in the absence
of the territorial jurisdiction to entertain the plaint, it had no
jurisdiction to entertain the application under Order 6 Rule 17, CPC for
amendment of the plaint.
14. Learned counsel for the Appellant relies on Wasudhir Foundation
v. C. Lal & Sons 45 (1991) DLT 556 where after adverting to a Division
Bench judgment in Gaganmal Ramchand v. HSBC AIR 1950 Bombay
345 it was held that the Court may allow an Application for amendment
of the plaint to prevent the plaint from being rejected though an
Application for rejection of the same is pending. The reasoning of the
FAO (OS) No. 260/2008 Page 17 of 24
learned Single Judge in support of his view is encapsulated in the
following paragraph of the judgment:
“This is the righteous path and, if this be so is it not
necessary, in the ends of justice, to extend the beneficial
legal principles ensconced in Order 6 rule 17 more so,
when one hardly discerns anything in Order 7 rule 11
which may lead one to take the view that it takes away
the power of the court to allow amendments of places
hurdles in performance of its duty? After all what is the
effect of Order 7 rule 11? It is, if I understand correctly,
that the plaintiff would not be precluded from filing a
fresh suit in respect of the same cause of action. If he so
desires see Order 7 Rule 13. If such be the effect, why
not permit the amendment of the plaint so as to remove
the defect and prevent the operation of the Rule? Why
make him first invite the rejection of the plaint, then
allow him to file a fresh suit at the expense of delay and
heavy costs? Why not straightaway allow him to amend
the plaint, remove the defect and permit him, thereby, to
proceed with the same suit? Why this rigmarole? After
all, procedural law is intended to facilitate and not to
obstruct the course of justice.”
A similar view was taken by another Ld. Single Judge of this
Court in Hari Bhagwan Sharma and Ors. v. Badri Bhagat Jhandewalan
Temple Society and Ors., 27 (1985) DLT 68.
15. We have given our anxious consideration to the two views
expressed. It is well settled that for any adjudicatory authority to act,
Jurisdictional Fact is a sine qua non for the same. A jurisdictional fact is
one on the existence or non-existence of which depends the vesting of
jurisdiction in a Court, Tribunal or an authority. In Black‟s Legal
FAO (OS) No. 260/2008 Page 18 of 24
Dictionary it is explained as a fact which must exist before a court can
properly assume jurisdiction of a particular case.
16. In this regard it would be relevant to note Section 134 of the
Trademarks Act, 1999 which postulates that a suit can be instituted by
the Plaintiff within the local limits of whose jurisdiction at the time of
institution of suit or other proceedings, the person instituting the suit
or proceedings actually and voluntarily resides or carries on business
or personally works for gain. Thus, the section clearly envisages that at
the time of institution of the suit, the Appellant should have been
carrying on business at Delhi, which unfortunately is not the factual
situation in the present case.
17. Further the jurisdiction of a Court may be classified into i)
Territorial or Local jurisdiction, ii) Pecuniary Jurisdiction and iii)
Jurisdiction over the subject matter. It is clearly laid down in Sec. 21,
CPC that so far as Objection to lack of territorial and pecuniary
jurisdiction is concerned, the same has to be taken at the earliest and
cannot be allowed to be taken at a subsequent stage. However,
jurisdiction as to subject matter is totally distinct and stands on a
different footing. Where a Court has no jurisdiction over the subject
matter of the Suit, the order passed would be a nullity. Neither consent
nor waiver or acquiescence can confer jurisdiction upon a Court
otherwise incompetent to try the Suit. However, the validity of a
FAO (OS) No. 260/2008 Page 19 of 24
decree/judgment cannot be challenged on the ground of lack of
territorial jurisdiction in execution proceedings and the judgment
debtor is estopped from taking such an Objection unless prejudice is
caused on merits. The Hon‟ble Supreme Court in Hira Lal Patni vs. Sri
Kali Nath, AIR 1962 SC 199, held:
“It is well settled that the objection as to local jurisdiction
of a court does not stand on the same footing as an
objection to the competence of a court to try a case.
Competence of a court to try a case goes to the very root
of the jurisdiction, and where it is lacking, it is a case of
inherent lack of jurisdiction. On the other hand an
objection as to the local jurisdiction of a court can be
waived and this principle has been given a statutory
recognition by enactments like S. 21 of the Code of Civil
Procedure. Having consented to have the controversy
between the parties resolved by reference to arbitration
through court, the defendant deprived himself of the
right to question the authority of the court to refer the
matter to arbitration or of the arbitrator to render the
award. It is clear, therefore, that the defendant is
estopped from challenging the jurisdiction of the Bombay
High Court to entertain the suit and to make the
reference to the arbitrator. He is equally estopped from
challenging the authority of the arbitrator to render the
award.”
18. It may be noted that earlier under the Code of Civil Procedure
Section 21 provided for objections to jurisdiction to be taken at the
earliest possible opportunity only with regard to the place of using. By
the Code of Civil Procedure Amendment Act, 1976, Section 21 was
renumbered as 21(1) and sub-sections (2) and (3) were brought in, by
virtue thereof an objection as to the competence of the Court with
FAO (OS) No. 260/2008 Page 20 of 24
reference to the pecuniary limits of its jurisdiction were to be taken in
the Court of first instance at the earliest possible opportunity. This was
in line with the interpretation of the Hon‟ble Supreme Court in Kiran
Singh vs. Chaman Paswan and others, AIR 1954 SC 340 even prior to
the amendment, in view of Sec. 11 of the Suits Valuation Act. It was
held:
7. “With reference to objections relating to territorial
jurisdiction, Section 21 of the Civil Procedure Code
enacts that no objection to the place of suing should be
allowed by an appellate or revisional court, unless there
was a consequent failure of justice. It is the same
principle that has been adopted in section 11 of the Suits
Valuation Act with reference to pecuniary jurisdiction.
The policy underlying sections 21 and 99, C.P.C. and
section 11 of the Suits Valuation Act is the same, namely,
that when a case had been tried by a Court on the merits
and judgment rendered, it should not be liable to be
reversed purely on technical grounds, unless it had
resulted in failure of justice and the policy of the
legislature has been to treat objections to jurisdiction
both territorial and pecuniary as technical and not open
to consideration by an appellate court, unless there has
been a prejudice on the merits. The contention of the
appellants, therefore, that the decree and judgment of
the District Court, Monghyr, should be treated as a
nullity cannot be sustained under section 11 of the Suits
Valuation Act.”
19. In Bahrein Petroleum Co. Ltd. vs. P.J. Pappu and Anr. AIR 1966
SC 634, it was held:
“Counsel for the plaintiff-respondent submitted that it
was open to the defendants to waive this objection, and if
they did so, they could not subsequently take the
objection. This submission is well founded. As a general
rule, neither consent nor waiver nor acquiescence can
confer jurisdiction upon a Court, otherwise incompetent
to try the suit. But S. 21 of the Code provides an
FAO (OS) No. 260/2008 Page 21 of 24
exception, and a defect as to the place of suing, that is to
say, the local venue for suits cognizable by the Courts
under the Code may be waived under this section. The
waiver under S. 21 is limited to objection in the appellate
and revisional Courts. But S. 21 is the statutory
recognition of the principle that the defect as to the place
of suing under Ss. 15 to 20 may be waived. Independently
of this section, the defendant may waive the objection
and may be subsequently precluded from taking it.”
20. The Hon‟ble Supreme Court in Subhash Mahadevasa Habib vs
Nemasa Ambasa Dharmadas (Dead) by LRs & Ors, (2007) 13 SCC 650
reiterated these principles and held:
“Whereas an inherent lack of jurisdiction may make a
decree passed by that court one without jurisdiction or
void in law, a decree passed by a court lacking territorial
jurisdiction or pecuniary jurisdiction does not
automatically become void. At best it is voidable in the
sense that it could be challenged in appeal therefrom
provided the conditions of Section 21 of the Code of Civil
Procedure are satisfied.”
21. In Singer Company Ltd. (Supra), one of us (Vikramajit Sen, J.)
relying on Wasudhir Foundation (Supra) held that procedural laws are
intended to facilitate and not to obstruct the course of substantial
justice. It was observed that in Ganesh Trading Co. vs. Moji Ram (1978)
2 SCR 614, the Hon‟ble Supreme Court held that the defective
pleadings are generally curable if the cause of action sought to be
brought out was not ab initio completely absent. The application under
Order 6 Rule 17, CPC was allowed to cure defective pleadings so as to
FAO (OS) No. 260/2008 Page 22 of 24
constitute a cause of action as the documents filed alongwith the plaint
thereby forming the part of plaint showed jurisdictional facts.
22. Applying the principle of doctrine of relation back as laid down by
the Hon‟ble Supreme Court in Siddhalingamma and another vs. Mamta
Shenoy, 2001 (8) SCC 561 and Sampat Kumar vs. Ayyakannu and
another, AIR 2002 SCC 3369 that once an amendment is allowed
unless it is expressly excluded by the Court, a Plaint or petition would
be deemed to have been filed as it appears after the amendment, in our
view if a plaint is completely bereft of any pleading which are the
„jurisdictional facts‟, the civil court in that case will not have the
jurisdiction to proceed in that suit or even to allow an application
seeking amendment under Order 6 Rule 12 CPC. Thus a completely
unconscionable plaint which does not reveal any fact which confers a
jurisdiction on a civil court to act may not vest the jurisdiction with the
Civil Court to even allow an amendment of the same. But if it is a case
of unclear or ambiguous pleadings, the same may be allowed to be
amended to clarify the already pleaded facts till the same does not give
rise to addition of a new cause of action or pleading new facts.
23. In the light of these decisions, it is evident that though the issue
of territorial jurisdiction does not strike at the root of the proceedings,
however, consent cannot confer territorial jurisdiction on a Court which
has none. The Court, however, if no objection thereto is taken at the
FAO (OS) No. 260/2008 Page 23 of 24
appropriate time, in view of the fact that the proceedings have attained
finality will not set aside the decree, unless prejudice is caused on
merits.
In our view, if the plaint discloses some facts, which may
however, be incomplete to vest territorial jurisdiction in the Court, the
Court would entertain an Application for amendment of the pleadings.
This is more so, as such an amendment would not set up a new case.
However, if no facts are disclosed qua territorial jurisdiction then the
defect cannot be even cured by amendment and in such a case an
Application for amendment cannot be entertained.
24. Indubitably, at this stage the Respondent‟s response cannot be
looked into. However, on merits in the present case, as discussed
above, even taking the pleadings and documents annexed thereto by
way of amendment, this Court has no territorial jurisdiction to entertain
the plaint.
25 For the reasons stated above the present Appeal is dismissed. No
order as to costs.
(MUKTA GUPTA)
JUDGE
(VIKRAMAJIT SEN)
JUDGE
SEPTEMBER 10, 2010
vn
FAO (OS) No. 260/2008 Page 24 of 24