Full Judgment Text
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 2065/2015
th
% 20 July, 2015
ULTRA HOME CONSTRUCTION PVT. LTD. ..... Plaintiff
Through Mr. R.P. Bhatt, Sr. Advocate along
with Mr. Rakesh Kumar and Mr.Bipin
Kumar, Advocates
versus
PURUSHOTTAM KUMAR CHAUBEY & ORS. ..... Defendants
Through
CORAM:
HON’BLE MR. JUSTICE VALMIKI J.MEHTA
To be referred to the Reporter or not?
VALMIKI J. MEHTA, J (ORAL)
I.A. No.14257/2015 (Exemption)
1. Exemption allowed subject to all just exceptions.
I.A. stands disposed of.
CS(OS) 2065/2015 & I.A. No.14256/2015 (Stay)
2. This is a suit filed by the plaintiff seeking injunction alleging a
cause of action of infringement of its trade mark ‘AMRAPALI’.
CS(OS) 2065/2015 Page 1 of 13
3. Plaintiff alleges infringement of trade mark as also the
copyright of the plaintiff in the depiction of the trade mark. In the suit the
following prayers are made:-
“(a) For a decree of permanent injunction restraining the defendants
and also its individual proprietor, Partners, channel partners, agents,
representatives, dealers, distributors, assigns, heirs, successors and all
others acting for and on their behalf from using, selling, soliciting,
displaying, advertising by visual, audio, print mode or by any other
mode or manner or dealing in or using the impugned trade mark/label
AMBAPALI LABEL WORD per se and in AMBAPALI LABEL or
any other Trade Mark/Label identical with and/or deceptively similar
thereto in relation to their impugned services and business of real
estate development and related/allied services and from doing any
other acts or deeds amounting to or likely to:-
(i) Infringement of aforesaid registered trademarks of the
plaintiff under Class 19 and 37 respectively.
(ii) Passing off and violation of plaintiff’s rights in the said
trademarks/label AMRAPALI.
(iii) Infringing and/or violating plaintiff’s copyrights in the
said trade mark/label AMRAPALI.
(b) Restraining the defendants from disposing off or dealing with
its assets including its shops and premises at Ambapali Green Gupta
Green, Bampass Town, Deoghar and its stocks-in-trade or any other
assets as may be brought to the notice of this Hon’ble Court during
the course of the proceedings and on the defendants’ disclosure
thereof and and/or on its ascertainment by the plaintiff as the plaintiff
is not aware of the same as per Section 135 (2) (c) of the Trade Marks
Act, 1999 as it could adversely affect the plaintiff’s ability to recover
the costs and pecuniary reliefs thereon.
(c) Restraining the defendants from using and selling the flats/other
type of unit in its Group housing residential project at Deoghar,
CS(OS) 2065/2015 Page 2 of 13
Jharkhand by the impugned name Ambapali Green or to use this name
anywhere else.
(d) For an order for delivery up of all impugned finished and
unfinished materials bearing the impugned and violative trade
mark/label AMBAPALI LABEL , or any other deceptively similar
trade mark/label including its blocks, labels, display boards, sign
boards, trade literature and services etc. to the plaintiff for the
purposes of destruction and erasure.
(e) For an order for rendition of accounts of profits earned by the
defendants by their impugned illegal trade activities and a decree for
the amount so found in favour of plaintiff on such rendition of
accounts.
(f) In alternative, to accounts for a decree for grant of damages of
Rs.21,00,000/- (Rupees Twenty One Lakhs only) from the defendants,
jointly and severally to the plaintiff.
(g) For an order for cost of proceedings, and
(h) For such other and further order as this Hon’ble Court may
deem fit and proper in the fact and circumstances of the present case.”
4. Jurisdiction of this Court is claimed on the basis of Section
134(2) of the Trade Marks Act, 1999 and Section 62(2) of the Copyright
Act, 1957 as per para 52 of the plaint and this para reads as under:-
“52. That this Hon’ble Court has the territorial jurisdiction to entertain
and decide the present suit as the Plaintiff operates in Delhi through
rd
its registered office at: 307, 3 Floor, Nipun Tower, Community
Centre, Karkardooma, Delhi-92. The Plaintiff Company carries on its
CS(OS) 2065/2015 Page 3 of 13
business in Delhi through its several exclusive agents. The plaintiff
has extensive goodwill and reputation under the said trademark on
account of voluminous sales and advertisement within the jurisdiction
of this Hon’ble Court. By virtue of above said this Hon’ble Court has
the territorial jurisdiction within the meaning of Section 134 (2) of the
Trade Marks Act, 1999 and also under Section 62(2) of the Copyright
Act, 1957 and Code of Civil Procedure, 1908.”
5. The provisions of Section 134(2) of the Trade Marks Act, 1999
and Section 62(2) of the Copyright Act, 1957 have been the subject matter
of pronouncement in a recent judgment of the Supreme Court in the case of
Indian Performing Rights Society Ltd. Vs. Sanjay Dalia & Anr. , Civil
Appeal nos.10643-44 of 2010 dated 01.07.2015. This judgment has also laid
down the ratio that in case the plaintiff does not carry on business or has
branch office or head office etc at a place where cause of action arises then
surely such a plaintiff uses the provisions of Section 134(2) of the Trade
Marks Act, 1999 and Section 62(2) of the Copyright Act, 1957 to file a suit
where the plaintiff is having an office or carrying on business or residing,
however, these provisions cannot be invoked to file a suit claiming
infringement of trade mark/copyright in case the plaintiff is carrying on
business at the place where cause of action arises or has either a branch
office or a head office at the place where the cause of action arises. The
Supreme Court has clarified that no doubt object of Section 134(2) of the
CS(OS) 2065/2015 Page 4 of 13
Trade Marks Act, 1999 and Section 62(2) of the Copyright Act, 1957 was to
give convenience to the plaintiff, however, these provisions have to be read
in such a manner that it should not lead to harassment of defendants in a case
where plaintiff is carrying on business or resides or works for gain or has a
branch office or a head office or a registered office at the place where the
cause of action arises, and in spite of that a suit is sought not to be filed at
such place where the cause of action arises and where the plaintiff has an
office or is carrying on business, but at another court simply because a
plaintiff has an office or carries on business or resides although the cause of
action does not arise at such latter place. The relevant paragraphs of the
judgment of the Supreme Court in Indian Performing Rights Society Ltd.’s
case (supra) are paragraphs 16, 17, 18, 19, 20, 21, 22, 23 and 24 and these
paragraphs read as under:-
“16. On a due and anxious consideration of the provisions contained
in section 20 of the CPC, section 62 of the Copyright Act and section
134 of the Trade Marks Act, and the object with which the latter
provisions have been enacted, it is clear that if a cause of action has
arisen wholly or in part, where the plaintiff is residing or having its
principal office/carries on business or personally works for gain, the
suit can be filed at such place/s. Plaintiff(s) can also institute a suit at
a place where he is residing, carrying on business or personally works
for gain de hors the fact that the cause of action has not arisen at a
place where he/they are residing or any one of them is residing,
carries on business or personally works for gain. However, this right
to institute suit at such a place has to be read subject to certain
restrictions, such as in case plaintiff is residing or carrying on
CS(OS) 2065/2015 Page 5 of 13
business at a particular place/having its head office and at such
place cause of action has also arisen wholly or in part, plaintiff
cannot ignore such a place under the guise that he is carrying on
business at other far flung places also. The very intendment of the
insertion of provision in the Copyright Act and Trade Marks Act
is the convenience of the plaintiff. The rule of convenience of the
parties has been given a statutory expression in section 20 of the
CPC as well. The interpretation of provisions has to be such
which prevents the mischief of causing inconvenience to parties.
17. The intendment of the aforesaid provisions inserted in the
Copyright Act and the Trade Marks Act is to provide a forum to the
plaintiff where he is residing, carrying on business or personally
works for gain. The object is to ensure that the plaintiff is not deterred
from instituting infringement proceedings “because the court in which
proceedings are to be instituted is at a considerable distance from the
place of their ordinary residence”. The impediment created to the
plaintiff by section 20 C.P.C. of going to a place where it was not
having ordinary residence or principal place of business was sought to
be removed by virtue of the aforesaid provisions of the Copyright Act
and the Trade Marks Act. Where the Corporation is having ordinary
residence/principal place of business and cause of action has also
arisen at that place, it has to institute a suit at the said place and not at
other places. The provisions of section 62 of the Copyright Act and
section 134 of the Trade Marks Act never intended to operate in the
field where the plaintiff is having its principal place of business at a
particular place and the cause of action has also arisen at that place so
as to enable it to file a suit at a distant place where its subordinate
office is situated though at such place no cause of action has arisen.
Such interpretation would cause great harm and would be juxtaposed
to the very legislative intendment of the provisions so enacted.
18. In our opinion, in a case where cause of action has arisen at a
place where the plaintiff is residing or where there are more than one
such persons, any of them actually or voluntarily resides or carries on
business or personally works for gain would oust the jurisdiction
of other place where the cause of action has not arisen though at
such a place, by virtue of having subordinate office, the plaintiff
instituting a suit or other proceedings might be carrying on business
or personally works for gain.
CS(OS) 2065/2015 Page 6 of 13
19. At the same time, the provisions of section 62 of the Copyright
Act and section 134 of the Trade Marks Act have removed the
embargo of suing at place of accrual of cause of action wholly or in
part, with regard to a place where the plaintiff or any of them
ordinarily resides, carries on business or personally works for gain.
We agree to the aforesaid extent the impediment imposed under
section 20 of the CPC to a plaintiff to institute a suit in a court where
the defendant resides or carries on business or where the cause of
action wholly or in part arises, has been removed. But the right is
subject to the rider in case plaintiff resides or has its principal
place of business/carries on business or personally works for gain
at a place where cause of action has also arisen, suit should be
filed at that place not at other places where plaintiff is having
branch offices etc.
20. There is no doubt about it that the words used in section 62 of the
Copyright Act and section 134 of the Trade Marks Act,
‘notwithstanding anything contained in CPC or any other law for the
time being in force’, emphasise that the requirement of section 20 of
the CPC would not have to be complied with by the plaintiff if he
resides or carries on business in the local limits of the court where he
has filed the suit but, in our view, at the same time, as the provision
providing for an additional forum, cannot be interpreted in the manner
that it has authorised the plaintiff to institute a suit at a different place
other than the place where he is ordinarily residing or having principal
office and incidentally where the cause of action wholly or in part has
also arisen. The impugned judgments, in our considered view, do not
take away the additional forum and fundamental basis of conferring
the right and advantage to the authors of the Copyright Act and the
Trade Marks Act provided under the aforesaid provisions.
21. The provisions of section 62(2) of the Copyright Act and section
134 of the Trade Marks Act are pari materia . Section 134(2) of the
Trade Marks Act is applicable to clauses (a) and (b) of section 134(1)
of the Trade Marks Act. Thus, a procedure to institute suit with
respect to section 134(1)(c) in respect of “passing off” continues to be
governed by section 20 of CPC.
22. If the interpretation suggested by the appellant is accepted, several
mischiefs may result, intention is that the plaintiff should not go to far
flung places than that of residence or where he carries on business or
CS(OS) 2065/2015 Page 7 of 13
works for gain in order to deprive defendant a remedy and harass him
by dragging to distant place. It is settled proposition of law that the
interpretation of the provisions has to be such which prevents
mischief. The said principle was explained in Heydon’s case [76 ER
637]. According to the mischief rule, four points are required to be
taken into consideration. While interpreting a statute, the problem or
mischief that the statute was designed to remedy should first be
identified and then a construction that suppresses the problem and
advances the remedy should be adopted. The Heydon’s mischief rule
has been referred to in Interpretation of Statutes by Justice G.P.
Singh , 12th Edn., at pp. 124-125 thus :
“ (b) Rule in Heydon’s case; purposive construction:
mischief rule
When the material words are capable of bearing two or more
constructions the most firmly established rule for construction
of such words “of all statutes in general (be they penal or
beneficial, restrictive or enlarging of the common law)” is the
rule laid down in Heydon’s case (76 ER 637) which has “now
attained the status of a classic [ Kanailal Sur v. Paramnidhi
Sadhukhan AIR 1957 SC 907]. The rule which is also known as
‘purposive construction’ or ‘mischief rule’ [ Anderton v. Ryan
1985 2 ALL ER 355], enables consideration of four matters in
construing an Act: (i) What was the law before the making of
the Act, (ii) What was the mischief or defect for which the law
did not provide, (iii) What is the remedy that the Act has
provided, and (iv) What is the reason of the remedy. The rule
then directs that the courts must adopt that construction which
“shall suppress the mischief and advance the remedy”. The rule
was explained in the Bengal Immunity Co. v. State of Bihar
[AIR 1955 SC 661] by S.R. DAS, CJI as follows: “It is a sound
rule of construction of a statute firmly established in England as
far back as 1584 when Heydon’s case (supra) was decided that
for the sure and true interpretation of all Statutes in general (be
they penal or beneficial, restrictive or enlarging of the common
law) four things are to be discerned and considered:
1st - What was the common law before the making of the
Act?
CS(OS) 2065/2015 Page 8 of 13
2nd - What was the mischief and defect for which the
common law did not provide?
3rd - What remedy the Parliament hath resolved and
appointed to cure the disease of the commonwealth, and
4th - The true reason of the remedy;
and then the office of all the judges is always to make such
construction as shall suppress the mischief, and advance the
remedy, and to suppress subtle inventions and evasions for
continuance of the mischief, and pro private commodo , and to
add force and life to the cure and remedy, according to the true
intent of the makers of the Act, pro bono publico . [ Bengal
Immunity Co. v. State of Bihar (supra)].”
23. Considering the first aspect of aforesaid principle, the common
law which was existing before the provisions of law were passed was
section 20 of the CPC. It did not provide for the plaintiff to institute a
suit except in accordance with the provisions contained in section 20.
The defect in existing law was inconvenience/deterrence caused to the
authors suffering from financial constraints on account of having to
vindicate their intellectual property rights at a place far away from
their residence or the place of their business. The said mischief or
defect in the existing law which did not provide for the plaintiff to sue
at a place where he ordinarily resides or carries on business or
personally works for gain, was sought to be removed. Hence, the
remedy was provided incorporating the provisions of section 62 of the
Copyright Act. The provisions enabled the plaintiff or any of them to
file a suit at the aforesaid places. But if they were residing or carrying
on business or personally worked for gain already at such place,
where cause of action has arisen, wholly or in part, the said
provisions have not provided additional remedy to them to file a suit
at a different place. The said provisions never intended to operate in
that field. The operation of the provisions was limited and their
objective was clearly to enable the plaintiff to file a suit at the place
where he is ordinarily residing or carrying on business etc., as
enumerated above, not to go away from such places. The Legislature
has never intended that the plaintiff should not institute the suit where
he ordinarily resides or at its Head Office or registered office or where
he otherwise carries on business or personally works for gain where
CS(OS) 2065/2015 Page 9 of 13
the cause of action too has arisen and should drag the defendant to a
subordinate office or other place of business which is at a far distant
place under the guise of the fact that the plaintiff/corporation is
carrying on business through branch or otherwise at such other place
also. If such an interpretation is permitted, as rightly submitted on
behalf of the respondents, the abuse of the provision will take place.
Corporations and big conglomerates etc. might be having several
subordinate offices throughout the country. Interpretation otherwise
would permit them to institute infringement proceedings at a far flung
place and at unconnected place as compared to a place where plaintiff
is carrying on their business, and at such place, cause of action too has
arisen. In the instant cases, the principal place of business is,
admittedly, in Mumbai and the cause of action has also arisen in
Mumbai. Thus, the provisions of section 62 of the Copyright Act and
section 134 of the Trade Marks Act cannot be interpreted in a manner
so as to confer jurisdiction on the Delhi court in the aforesaid
circumstances to entertain such suits. The Delhi court would have no
territorial jurisdiction to entertain it.
24. The avoidance of counter mischief to the defendant is also
necessary while giving the remedy to the plaintiff under the provisions
in question. It was never visualised by the law makers that both the
parties would be made to travel to a distant place in spite of the fact
that the plaintiff has a remedy of suing at the place where the cause of
action has arisen where he is having head office/ carrying on business
etc. The provisions of the Copyright Act and the Trade Marks Act
provide for the authors/trade marks holders to sue at their ordinary
residence or where they carry on their business. The said provisions of
law never intended to be oppressive to the defendant. The
Parliamentary Debate quoted above has to be understood in the
manner that suit can be filed where the plaintiff ordinarily resides or
carries on business or personally works for gain. Discussion was to
provide remedy to plaintiff at convenient place; he is not to travel
away. Debate was not to enable plaintiff to take defendant to
farther place, leaving behind his place of residence/business etc.
The right to remedy given is not unbriddled and is subject to the
prevention of abuse of the aforesaid provisions, as discussed above.
Parliament never intended that the subject provisions to be abused by
the plaintiff by instituting suit in wholly unconnected jurisdiction. In
the instant cases, as the principal place of business is at Mumbai the
CS(OS) 2065/2015 Page 10 of 13
cause of action is also at Mumbai but still the place for suing has been
chosen at Delhi. There may be a case where plaintiff is carrying on
the business at Mumbai and cause of action has arisen in
Mumbai. Plaintiff is having branch offices at Kanyakumari and
also at Port Blair, if interpretation suggested by appellants is
acceptable, mischief may be caused by such plaintiff to drag a
defendant to Port Blair or Kanyakumari. The provisions cannot
be interpreted in the said manner devoid of the object of the Act. ”
(emphasis added)
6. In view of the categorical language used in the aforesaid
paragraphs of the judgment in Indian Performing Rights Society Ltd.’s case
(supra) I do not think it is permissible on behalf of the plaintiff to re-argue
the issue which has already been decided and fully covered by the ratio in
the case of Indian Performing Rights Society Ltd. (supra) viz though the
provisions of Section 134(2) of the Trade Marks Act, 1999 and Section
62(2) of the Copyright Act, 1957 were meant to give convenience to the
plaintiff and for the plaintiff to file the suit where it is having an office and
carrying on business, but, by that no right was intended to be created in
favour of the plaintiff to file the suit at the place where the cause of action
has not arisen, and although plaintiff is carrying on business or has a branch
office or head office etc at the place where the cause of action, wholly or in
part, has arisen.
CS(OS) 2065/2015 Page 11 of 13
7. I may note that it is conceded on behalf of the plaintiff that at
the place where defendants are infringing the trade mark at Deogarh,
Jharkhand, plaintiff has a hotel, and if the plaintiff has a hotel then surely the
plaintiff is carrying on business at that particular place and carrying on of the
hotel business is very much a part of carrying of the business of the plaintiff
and therefore the ratio of the judgment in Indian Performing Rights Society
Ltd.’s case (supra) clearly applies. The plaintiff is running the hotel with the
Clark-Inn Hotel Group i.e plaintiff company does have a share in the profits
and losses in the hotel which is being run along with the Clark-Inn Hotel
Group at Deoghar, Jharkhand. Once that is so, there is a running business
and plaintiff is therefore carrying on business at Deoghar, Jharkhand, and
consequently the ratio of the judgment in the case of Indian Performing
Rights Society Ltd. (supra) applies and hence this Court would not have
territorial jurisdiction.
8. I may note that in para 28 of the plaint, plaintiff admits that it
has one hotel at Deoghar in Bihar and which is actually Deoghar in
Jharkhand, because, by a typing mistake Deoghar, Bihar is written instead of
Deogarh, Jharkhand.
CS(OS) 2065/2015 Page 12 of 13
9. After arguments I put it to the learned senior counsel for the
plaintiff whether the plaintiff wants to invite the judgment or liberty be
given by this Court to file a suit at the appropriate court having territorial
jurisdiction, but, the learned senior counsel states that he has instructions to
invite a judgment.
10. In view of the above, the suit as well as the I.A. stands
dismissed as this Court lacks territorial jurisdiction.
JULY 20, 2015 VALMIKI J. MEHTA, J
nn
CS(OS) 2065/2015 Page 13 of 13
+ CS(OS) 2065/2015
th
% 20 July, 2015
ULTRA HOME CONSTRUCTION PVT. LTD. ..... Plaintiff
Through Mr. R.P. Bhatt, Sr. Advocate along
with Mr. Rakesh Kumar and Mr.Bipin
Kumar, Advocates
versus
PURUSHOTTAM KUMAR CHAUBEY & ORS. ..... Defendants
Through
CORAM:
HON’BLE MR. JUSTICE VALMIKI J.MEHTA
To be referred to the Reporter or not?
VALMIKI J. MEHTA, J (ORAL)
I.A. No.14257/2015 (Exemption)
1. Exemption allowed subject to all just exceptions.
I.A. stands disposed of.
CS(OS) 2065/2015 & I.A. No.14256/2015 (Stay)
2. This is a suit filed by the plaintiff seeking injunction alleging a
cause of action of infringement of its trade mark ‘AMRAPALI’.
CS(OS) 2065/2015 Page 1 of 13
3. Plaintiff alleges infringement of trade mark as also the
copyright of the plaintiff in the depiction of the trade mark. In the suit the
following prayers are made:-
“(a) For a decree of permanent injunction restraining the defendants
and also its individual proprietor, Partners, channel partners, agents,
representatives, dealers, distributors, assigns, heirs, successors and all
others acting for and on their behalf from using, selling, soliciting,
displaying, advertising by visual, audio, print mode or by any other
mode or manner or dealing in or using the impugned trade mark/label
AMBAPALI LABEL WORD per se and in AMBAPALI LABEL or
any other Trade Mark/Label identical with and/or deceptively similar
thereto in relation to their impugned services and business of real
estate development and related/allied services and from doing any
other acts or deeds amounting to or likely to:-
(i) Infringement of aforesaid registered trademarks of the
plaintiff under Class 19 and 37 respectively.
(ii) Passing off and violation of plaintiff’s rights in the said
trademarks/label AMRAPALI.
(iii) Infringing and/or violating plaintiff’s copyrights in the
said trade mark/label AMRAPALI.
(b) Restraining the defendants from disposing off or dealing with
its assets including its shops and premises at Ambapali Green Gupta
Green, Bampass Town, Deoghar and its stocks-in-trade or any other
assets as may be brought to the notice of this Hon’ble Court during
the course of the proceedings and on the defendants’ disclosure
thereof and and/or on its ascertainment by the plaintiff as the plaintiff
is not aware of the same as per Section 135 (2) (c) of the Trade Marks
Act, 1999 as it could adversely affect the plaintiff’s ability to recover
the costs and pecuniary reliefs thereon.
(c) Restraining the defendants from using and selling the flats/other
type of unit in its Group housing residential project at Deoghar,
CS(OS) 2065/2015 Page 2 of 13
Jharkhand by the impugned name Ambapali Green or to use this name
anywhere else.
(d) For an order for delivery up of all impugned finished and
unfinished materials bearing the impugned and violative trade
mark/label AMBAPALI LABEL , or any other deceptively similar
trade mark/label including its blocks, labels, display boards, sign
boards, trade literature and services etc. to the plaintiff for the
purposes of destruction and erasure.
(e) For an order for rendition of accounts of profits earned by the
defendants by their impugned illegal trade activities and a decree for
the amount so found in favour of plaintiff on such rendition of
accounts.
(f) In alternative, to accounts for a decree for grant of damages of
Rs.21,00,000/- (Rupees Twenty One Lakhs only) from the defendants,
jointly and severally to the plaintiff.
(g) For an order for cost of proceedings, and
(h) For such other and further order as this Hon’ble Court may
deem fit and proper in the fact and circumstances of the present case.”
4. Jurisdiction of this Court is claimed on the basis of Section
134(2) of the Trade Marks Act, 1999 and Section 62(2) of the Copyright
Act, 1957 as per para 52 of the plaint and this para reads as under:-
“52. That this Hon’ble Court has the territorial jurisdiction to entertain
and decide the present suit as the Plaintiff operates in Delhi through
rd
its registered office at: 307, 3 Floor, Nipun Tower, Community
Centre, Karkardooma, Delhi-92. The Plaintiff Company carries on its
CS(OS) 2065/2015 Page 3 of 13
business in Delhi through its several exclusive agents. The plaintiff
has extensive goodwill and reputation under the said trademark on
account of voluminous sales and advertisement within the jurisdiction
of this Hon’ble Court. By virtue of above said this Hon’ble Court has
the territorial jurisdiction within the meaning of Section 134 (2) of the
Trade Marks Act, 1999 and also under Section 62(2) of the Copyright
Act, 1957 and Code of Civil Procedure, 1908.”
5. The provisions of Section 134(2) of the Trade Marks Act, 1999
and Section 62(2) of the Copyright Act, 1957 have been the subject matter
of pronouncement in a recent judgment of the Supreme Court in the case of
Indian Performing Rights Society Ltd. Vs. Sanjay Dalia & Anr. , Civil
Appeal nos.10643-44 of 2010 dated 01.07.2015. This judgment has also laid
down the ratio that in case the plaintiff does not carry on business or has
branch office or head office etc at a place where cause of action arises then
surely such a plaintiff uses the provisions of Section 134(2) of the Trade
Marks Act, 1999 and Section 62(2) of the Copyright Act, 1957 to file a suit
where the plaintiff is having an office or carrying on business or residing,
however, these provisions cannot be invoked to file a suit claiming
infringement of trade mark/copyright in case the plaintiff is carrying on
business at the place where cause of action arises or has either a branch
office or a head office at the place where the cause of action arises. The
Supreme Court has clarified that no doubt object of Section 134(2) of the
CS(OS) 2065/2015 Page 4 of 13
Trade Marks Act, 1999 and Section 62(2) of the Copyright Act, 1957 was to
give convenience to the plaintiff, however, these provisions have to be read
in such a manner that it should not lead to harassment of defendants in a case
where plaintiff is carrying on business or resides or works for gain or has a
branch office or a head office or a registered office at the place where the
cause of action arises, and in spite of that a suit is sought not to be filed at
such place where the cause of action arises and where the plaintiff has an
office or is carrying on business, but at another court simply because a
plaintiff has an office or carries on business or resides although the cause of
action does not arise at such latter place. The relevant paragraphs of the
judgment of the Supreme Court in Indian Performing Rights Society Ltd.’s
case (supra) are paragraphs 16, 17, 18, 19, 20, 21, 22, 23 and 24 and these
paragraphs read as under:-
“16. On a due and anxious consideration of the provisions contained
in section 20 of the CPC, section 62 of the Copyright Act and section
134 of the Trade Marks Act, and the object with which the latter
provisions have been enacted, it is clear that if a cause of action has
arisen wholly or in part, where the plaintiff is residing or having its
principal office/carries on business or personally works for gain, the
suit can be filed at such place/s. Plaintiff(s) can also institute a suit at
a place where he is residing, carrying on business or personally works
for gain de hors the fact that the cause of action has not arisen at a
place where he/they are residing or any one of them is residing,
carries on business or personally works for gain. However, this right
to institute suit at such a place has to be read subject to certain
restrictions, such as in case plaintiff is residing or carrying on
CS(OS) 2065/2015 Page 5 of 13
business at a particular place/having its head office and at such
place cause of action has also arisen wholly or in part, plaintiff
cannot ignore such a place under the guise that he is carrying on
business at other far flung places also. The very intendment of the
insertion of provision in the Copyright Act and Trade Marks Act
is the convenience of the plaintiff. The rule of convenience of the
parties has been given a statutory expression in section 20 of the
CPC as well. The interpretation of provisions has to be such
which prevents the mischief of causing inconvenience to parties.
17. The intendment of the aforesaid provisions inserted in the
Copyright Act and the Trade Marks Act is to provide a forum to the
plaintiff where he is residing, carrying on business or personally
works for gain. The object is to ensure that the plaintiff is not deterred
from instituting infringement proceedings “because the court in which
proceedings are to be instituted is at a considerable distance from the
place of their ordinary residence”. The impediment created to the
plaintiff by section 20 C.P.C. of going to a place where it was not
having ordinary residence or principal place of business was sought to
be removed by virtue of the aforesaid provisions of the Copyright Act
and the Trade Marks Act. Where the Corporation is having ordinary
residence/principal place of business and cause of action has also
arisen at that place, it has to institute a suit at the said place and not at
other places. The provisions of section 62 of the Copyright Act and
section 134 of the Trade Marks Act never intended to operate in the
field where the plaintiff is having its principal place of business at a
particular place and the cause of action has also arisen at that place so
as to enable it to file a suit at a distant place where its subordinate
office is situated though at such place no cause of action has arisen.
Such interpretation would cause great harm and would be juxtaposed
to the very legislative intendment of the provisions so enacted.
18. In our opinion, in a case where cause of action has arisen at a
place where the plaintiff is residing or where there are more than one
such persons, any of them actually or voluntarily resides or carries on
business or personally works for gain would oust the jurisdiction
of other place where the cause of action has not arisen though at
such a place, by virtue of having subordinate office, the plaintiff
instituting a suit or other proceedings might be carrying on business
or personally works for gain.
CS(OS) 2065/2015 Page 6 of 13
19. At the same time, the provisions of section 62 of the Copyright
Act and section 134 of the Trade Marks Act have removed the
embargo of suing at place of accrual of cause of action wholly or in
part, with regard to a place where the plaintiff or any of them
ordinarily resides, carries on business or personally works for gain.
We agree to the aforesaid extent the impediment imposed under
section 20 of the CPC to a plaintiff to institute a suit in a court where
the defendant resides or carries on business or where the cause of
action wholly or in part arises, has been removed. But the right is
subject to the rider in case plaintiff resides or has its principal
place of business/carries on business or personally works for gain
at a place where cause of action has also arisen, suit should be
filed at that place not at other places where plaintiff is having
branch offices etc.
20. There is no doubt about it that the words used in section 62 of the
Copyright Act and section 134 of the Trade Marks Act,
‘notwithstanding anything contained in CPC or any other law for the
time being in force’, emphasise that the requirement of section 20 of
the CPC would not have to be complied with by the plaintiff if he
resides or carries on business in the local limits of the court where he
has filed the suit but, in our view, at the same time, as the provision
providing for an additional forum, cannot be interpreted in the manner
that it has authorised the plaintiff to institute a suit at a different place
other than the place where he is ordinarily residing or having principal
office and incidentally where the cause of action wholly or in part has
also arisen. The impugned judgments, in our considered view, do not
take away the additional forum and fundamental basis of conferring
the right and advantage to the authors of the Copyright Act and the
Trade Marks Act provided under the aforesaid provisions.
21. The provisions of section 62(2) of the Copyright Act and section
134 of the Trade Marks Act are pari materia . Section 134(2) of the
Trade Marks Act is applicable to clauses (a) and (b) of section 134(1)
of the Trade Marks Act. Thus, a procedure to institute suit with
respect to section 134(1)(c) in respect of “passing off” continues to be
governed by section 20 of CPC.
22. If the interpretation suggested by the appellant is accepted, several
mischiefs may result, intention is that the plaintiff should not go to far
flung places than that of residence or where he carries on business or
CS(OS) 2065/2015 Page 7 of 13
works for gain in order to deprive defendant a remedy and harass him
by dragging to distant place. It is settled proposition of law that the
interpretation of the provisions has to be such which prevents
mischief. The said principle was explained in Heydon’s case [76 ER
637]. According to the mischief rule, four points are required to be
taken into consideration. While interpreting a statute, the problem or
mischief that the statute was designed to remedy should first be
identified and then a construction that suppresses the problem and
advances the remedy should be adopted. The Heydon’s mischief rule
has been referred to in Interpretation of Statutes by Justice G.P.
Singh , 12th Edn., at pp. 124-125 thus :
“ (b) Rule in Heydon’s case; purposive construction:
mischief rule
When the material words are capable of bearing two or more
constructions the most firmly established rule for construction
of such words “of all statutes in general (be they penal or
beneficial, restrictive or enlarging of the common law)” is the
rule laid down in Heydon’s case (76 ER 637) which has “now
attained the status of a classic [ Kanailal Sur v. Paramnidhi
Sadhukhan AIR 1957 SC 907]. The rule which is also known as
‘purposive construction’ or ‘mischief rule’ [ Anderton v. Ryan
1985 2 ALL ER 355], enables consideration of four matters in
construing an Act: (i) What was the law before the making of
the Act, (ii) What was the mischief or defect for which the law
did not provide, (iii) What is the remedy that the Act has
provided, and (iv) What is the reason of the remedy. The rule
then directs that the courts must adopt that construction which
“shall suppress the mischief and advance the remedy”. The rule
was explained in the Bengal Immunity Co. v. State of Bihar
[AIR 1955 SC 661] by S.R. DAS, CJI as follows: “It is a sound
rule of construction of a statute firmly established in England as
far back as 1584 when Heydon’s case (supra) was decided that
for the sure and true interpretation of all Statutes in general (be
they penal or beneficial, restrictive or enlarging of the common
law) four things are to be discerned and considered:
1st - What was the common law before the making of the
Act?
CS(OS) 2065/2015 Page 8 of 13
2nd - What was the mischief and defect for which the
common law did not provide?
3rd - What remedy the Parliament hath resolved and
appointed to cure the disease of the commonwealth, and
4th - The true reason of the remedy;
and then the office of all the judges is always to make such
construction as shall suppress the mischief, and advance the
remedy, and to suppress subtle inventions and evasions for
continuance of the mischief, and pro private commodo , and to
add force and life to the cure and remedy, according to the true
intent of the makers of the Act, pro bono publico . [ Bengal
Immunity Co. v. State of Bihar (supra)].”
23. Considering the first aspect of aforesaid principle, the common
law which was existing before the provisions of law were passed was
section 20 of the CPC. It did not provide for the plaintiff to institute a
suit except in accordance with the provisions contained in section 20.
The defect in existing law was inconvenience/deterrence caused to the
authors suffering from financial constraints on account of having to
vindicate their intellectual property rights at a place far away from
their residence or the place of their business. The said mischief or
defect in the existing law which did not provide for the plaintiff to sue
at a place where he ordinarily resides or carries on business or
personally works for gain, was sought to be removed. Hence, the
remedy was provided incorporating the provisions of section 62 of the
Copyright Act. The provisions enabled the plaintiff or any of them to
file a suit at the aforesaid places. But if they were residing or carrying
on business or personally worked for gain already at such place,
where cause of action has arisen, wholly or in part, the said
provisions have not provided additional remedy to them to file a suit
at a different place. The said provisions never intended to operate in
that field. The operation of the provisions was limited and their
objective was clearly to enable the plaintiff to file a suit at the place
where he is ordinarily residing or carrying on business etc., as
enumerated above, not to go away from such places. The Legislature
has never intended that the plaintiff should not institute the suit where
he ordinarily resides or at its Head Office or registered office or where
he otherwise carries on business or personally works for gain where
CS(OS) 2065/2015 Page 9 of 13
the cause of action too has arisen and should drag the defendant to a
subordinate office or other place of business which is at a far distant
place under the guise of the fact that the plaintiff/corporation is
carrying on business through branch or otherwise at such other place
also. If such an interpretation is permitted, as rightly submitted on
behalf of the respondents, the abuse of the provision will take place.
Corporations and big conglomerates etc. might be having several
subordinate offices throughout the country. Interpretation otherwise
would permit them to institute infringement proceedings at a far flung
place and at unconnected place as compared to a place where plaintiff
is carrying on their business, and at such place, cause of action too has
arisen. In the instant cases, the principal place of business is,
admittedly, in Mumbai and the cause of action has also arisen in
Mumbai. Thus, the provisions of section 62 of the Copyright Act and
section 134 of the Trade Marks Act cannot be interpreted in a manner
so as to confer jurisdiction on the Delhi court in the aforesaid
circumstances to entertain such suits. The Delhi court would have no
territorial jurisdiction to entertain it.
24. The avoidance of counter mischief to the defendant is also
necessary while giving the remedy to the plaintiff under the provisions
in question. It was never visualised by the law makers that both the
parties would be made to travel to a distant place in spite of the fact
that the plaintiff has a remedy of suing at the place where the cause of
action has arisen where he is having head office/ carrying on business
etc. The provisions of the Copyright Act and the Trade Marks Act
provide for the authors/trade marks holders to sue at their ordinary
residence or where they carry on their business. The said provisions of
law never intended to be oppressive to the defendant. The
Parliamentary Debate quoted above has to be understood in the
manner that suit can be filed where the plaintiff ordinarily resides or
carries on business or personally works for gain. Discussion was to
provide remedy to plaintiff at convenient place; he is not to travel
away. Debate was not to enable plaintiff to take defendant to
farther place, leaving behind his place of residence/business etc.
The right to remedy given is not unbriddled and is subject to the
prevention of abuse of the aforesaid provisions, as discussed above.
Parliament never intended that the subject provisions to be abused by
the plaintiff by instituting suit in wholly unconnected jurisdiction. In
the instant cases, as the principal place of business is at Mumbai the
CS(OS) 2065/2015 Page 10 of 13
cause of action is also at Mumbai but still the place for suing has been
chosen at Delhi. There may be a case where plaintiff is carrying on
the business at Mumbai and cause of action has arisen in
Mumbai. Plaintiff is having branch offices at Kanyakumari and
also at Port Blair, if interpretation suggested by appellants is
acceptable, mischief may be caused by such plaintiff to drag a
defendant to Port Blair or Kanyakumari. The provisions cannot
be interpreted in the said manner devoid of the object of the Act. ”
(emphasis added)
6. In view of the categorical language used in the aforesaid
paragraphs of the judgment in Indian Performing Rights Society Ltd.’s case
(supra) I do not think it is permissible on behalf of the plaintiff to re-argue
the issue which has already been decided and fully covered by the ratio in
the case of Indian Performing Rights Society Ltd. (supra) viz though the
provisions of Section 134(2) of the Trade Marks Act, 1999 and Section
62(2) of the Copyright Act, 1957 were meant to give convenience to the
plaintiff and for the plaintiff to file the suit where it is having an office and
carrying on business, but, by that no right was intended to be created in
favour of the plaintiff to file the suit at the place where the cause of action
has not arisen, and although plaintiff is carrying on business or has a branch
office or head office etc at the place where the cause of action, wholly or in
part, has arisen.
CS(OS) 2065/2015 Page 11 of 13
7. I may note that it is conceded on behalf of the plaintiff that at
the place where defendants are infringing the trade mark at Deogarh,
Jharkhand, plaintiff has a hotel, and if the plaintiff has a hotel then surely the
plaintiff is carrying on business at that particular place and carrying on of the
hotel business is very much a part of carrying of the business of the plaintiff
and therefore the ratio of the judgment in Indian Performing Rights Society
Ltd.’s case (supra) clearly applies. The plaintiff is running the hotel with the
Clark-Inn Hotel Group i.e plaintiff company does have a share in the profits
and losses in the hotel which is being run along with the Clark-Inn Hotel
Group at Deoghar, Jharkhand. Once that is so, there is a running business
and plaintiff is therefore carrying on business at Deoghar, Jharkhand, and
consequently the ratio of the judgment in the case of Indian Performing
Rights Society Ltd. (supra) applies and hence this Court would not have
territorial jurisdiction.
8. I may note that in para 28 of the plaint, plaintiff admits that it
has one hotel at Deoghar in Bihar and which is actually Deoghar in
Jharkhand, because, by a typing mistake Deoghar, Bihar is written instead of
Deogarh, Jharkhand.
CS(OS) 2065/2015 Page 12 of 13
9. After arguments I put it to the learned senior counsel for the
plaintiff whether the plaintiff wants to invite the judgment or liberty be
given by this Court to file a suit at the appropriate court having territorial
jurisdiction, but, the learned senior counsel states that he has instructions to
invite a judgment.
10. In view of the above, the suit as well as the I.A. stands
dismissed as this Court lacks territorial jurisdiction.
JULY 20, 2015 VALMIKI J. MEHTA, J
nn
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