Jurisdiction of courts under Reg.Trademarks Act & Copy Rights Act = Original jurisdiction Sec. 20 of C.P.C., Or. 2 , rule 3 of C.P.C - where the cause of action arose , there the case has to be filed under Registration of Trademarks Act : Special Jurisdiction under sec.62(2) of Copy Rights Act - Confirming on the courts where the plaintiff resides = Clubbing of both causes of actions in one suit - is a composite suit - When it is a composite suit, the court where the defendants goods are not available , nor do the defendants carry on business and reside within the jurisdiction of this Hon’ble Court, that court holds no jurisdiction under Registration of Trademarks Act simply because the plaintiff is residing : but the same court holds jurisdiction under sec.62(2) of Copy right Act for copyright violation suit =
The Plaintiff is
engaged in the business of manufacturing and
marketing of footwear since 1975, under the registered trademark for
which it also possesses the registered copyright.
The Plaintiff is located in Kerala.
The Defendant, which is located in Jalandhar,
Punjab, also manufactures and markets its footwear under the
registered trademark and copyright PRAGATI/PARAGATI with a device of lion.
4. On 19th March, 2001, the Plaintiff filed a suit being O.S. No. 2 of
2001 at District Courts in Kottayam, Kerala against the defendants,
claiming relief under the Copyright Act, 1957 (hereinafter referred to
as “1957 Act”) and the Trade and Merchandise Marks Act, 1958
(hereinafter referred to as the “1958 Act”).
The suit is pending in the trial court.
The defendant filed I.A. No. 322 of 2004, under order
VII Rule XI CPC, with a prayer for rejection of plaint for want of
territorial jurisdiction. - Lower court dismissed the petition holding it's jurisdiction - but the high court set aside the order of lower court and allowed the petition giving an opportunity to the plaintiff to amend the plaint suitable to hold jurisdiction under sec. 62(2) of Copyright Act = Apex court confirmed the High court order and dismissed the both appeal and counter appeal filed by both parties question the High court order =
“Though the defendants goods are not available in Kottayam, nor
do the defendants carry on business and reside within the
jurisdiction of this Hon’ble Court, yet this Hon’ble Court has
the jurisdiction to try and entertain this suit at Kottayam
having regard to the provisions of Section 62(2) of the
Copyright Act for the plaintiff carries on business and resides
within the territorial jurisdiction of this Hon’ble Court.”
We are, however, of the opinion that the High Court has
correctly held that the provision contained in Section 134 of the 1999
Act, would not come to the aid of the plaintiff.
Although, the 1999
Act was enacted on 30th December, 1999, it came into force on 15th
September, 2003 vide S.O. 1048(E), dated 15th September, 2003,
published in the Gazette of India, Extra., Pt. II, Sec. 3(ii),
dated 15th September, 2003. Since the suit in this case was
filed on 19th March, 2001, it would be adjudicated under the 1958 Act.
The 1958 Act does not contain a provision similar to the provision
contained in Section 62(2) of the 1957 Act. Parliament being
aware of the provisions of the 1957 Act still did not incorporate the
same in the 1958 Act. Therefore, it can not be read into the 1958 Act
by implication. The High Court had correctly concluded that the suit
of the plaintiff (appellant) was a composite one.
22. Having said this, we are still not inclined to interfere with
the order passed by the High Court permitting the plaintiff to
amend the plaint.
The High Court was mindful of the fact that
under the 1999 Act, a composite suit could be filed and would be
maintainable by the Court at Kottayam.
The Court was aware that
the plaintiff has filed the suit on 19th March, 2001, but the
1999 Act was not enforced till 15th September, 2003.
In our
opinion, the High Court has passed the order in exercise of its
discretionary powers taking into consideration the entire facts
and circumstances of the case.
The discretion exercised by the
High Court can not be said to be either erroneous or perverse.
It has been exercised only to avoid multiplicity of litigation.
The defendant (respondent) could not dispute that in so far as
suit predicated on the Copy Right is concerned, the Court at
Kottayam is having requisite jurisdiction in view of the
provisions of Section 62(2) of the Copy Right Act.
Therefore,
had the suit been filed for violation of copy right alone, the
Court at Kottayam could validly entertain the same.
By
permitting the plaintiff to amend the plaint so as that the suit
will be maintainable before the District Court, Kottayam, no
error was committed by the High Court.
23. In view of the observations made above, both the appeals
are dismissed with no order as to costs.
REPORTABLE
IN THE SUPREME COURT OF INDIA
CIVIL APPELLATE JURISDICTION
CIVIL APPEAL NO.10745 OF 2013
(Arising out of SLP (C) No. 22280 of 2011)
M/s. Paragon Rubber Industries …Appellant
VERSUS
M/s. Pragathi Rubber Mills & Ors. ...Respondents
With
Civil Appeal No.10746 of 2013
(Arising out of SLP (C) No. 33453 of 2011)
M/s. Pragathi Rubber Mills & Ors. …Appellants
VERSUS
M/s. Paragon Rubber Industries ...Respondent
J U D G M E N T
SURINDER SINGH NIJJAR, J.
1. Leave granted.
2. This judgment shall dispose of C.A.No.10745 of 2013 @ SLP (C)
No.22280 of 2011 and C.A.No. 10746 of 2013 @ SLP (C) No.33453 of
2011. Both the appeals impugn the judgment of the High Court of
Kerala at Ernakulam dated 15th March, 2011, rendered in Civil
Revision Petition No.1417 of 2004.
3. Since these are cross appeals, the parties shall be referred to as
plaintiff and defendant. The facts at the centre of this
controversy are as follows:
The Plaintiff is
engaged in the business of manufacturing and
marketing of footwear since 1975, under the registered trademark for
which it also possesses the registered copyright.
The Plaintiff is located in Kerala.
The Defendant, which is located in Jalandhar,
Punjab, also manufactures and markets its footwear under the
registered trademark and copyright PRAGATI/PARAGATI with a device of lion.
4. On 19th March, 2001, the Plaintiff filed a suit being O.S. No. 2 of
2001 at District Courts in Kottayam, Kerala against the defendants,
claiming relief under the Copyright Act, 1957 (hereinafter referred to
as “1957 Act”) and the Trade and Merchandise Marks Act, 1958
(hereinafter referred to as the “1958 Act”).
The suit is pending in the trial court.
The defendant filed I.A. No. 322 of 2004, under order
VII Rule XI CPC, with a prayer for rejection of plaint for want of
territorial jurisdiction.
The trial court dismissed the application on
22nd March, 2004, with the observations that the issue of jurisdiction
will be decided at the final stage of the suit.
The defendant filed
CRP No.363 of 2004 in the High Court against the aforesaid order. The
High Court by order dated 16th June, 2004, allowed the civil revision
and directed the trial court to determine the issue of territorial
jurisdiction afresh.
5. In view of the aforesaid directions issued by the High Court, the
trial court treated the issue with regard to the jurisdiction as
the preliminary issue.
Upon consideration of the entire matter
again the trial court in its order dated 6th October, 2004 held
that it has the jurisdiction to entertain the suit in view of
Section 62(2) of the 1957 Act.
The petitioner challenged the
aforesaid order in the High Court by filing C.R.P. No. 1417 of
2004.
The High Court, upon consideration of the matter has, by the
impugned order dated 15th March, 2011, held as under:-
“The court below held in the order impugned that the suit as
such is maintainable before the District Court, Kottayam. That
finding is not correct in view of the decisions of the Supreme
Court referred to above. Accordingly, the order passed by the
court below is set aside. The plaintiff is given liberty to
amend the plaint, so that the suit will be maintainable before
the District Court, Kottayam, in the light of the principles
laid down by the Supreme Court in the aforesaid decisions. When
an application is filed for amendment of the plaint, the court
below shall consider the same on the merits, after affording an
opportunity of being heard to both sides.
The Civil Revision Petition is allowed as above.”
6. A perusal of the above shows that the High Court, having come to
the correct conclusion that a composite suit would not be
maintainable, has set aside the order passed by the trial court.
Thereafter, the Plaintiff has been given liberty to amend the plaint
so that the suit will be maintainable before the District Court,
Kottayam.
The plaintiff aggrieved by the aforesaid order has filed
SLP (C) No.22280 of 2011 giving rise to C.A.No.10745 of 2013.
7. The defendant/petitioner in SLP (C) No. 33453 of 2011 has
challenged the impugned order on the ground that having come to the
conclusion that a composite suit under the 1957 Act and 1958 Act was
not maintainable, the High Court erred in permitting the plaintiff to
amend the plaint rather than rejecting the same on the ground of lack
of jurisdiction.
8. We have heard the learned counsel for the parties.
9. It is submitted by the learned counsel for the Plaintiff
that the
suit was maintainable before the District Judge, Kottayam for
violation of the copyright in view of Section 62(2) of the 1957 Act,
which permits the filing of the suit at the place where the plaintiff
resides.
It is further submitted by the learned counsel that the High
Court has wrongly held that a composite suit claiming relief under the
1957 Act and the 1958 Act would not be maintainable.
Mr. Siddhartha
Dave, learned counsel appearing for the plaintiff further submitted
that the relief claimed under the 1958 Act in the suit filed by the
plaintiff under the 1957 Act was incidental to the relief claimed
under the 1957 Act. Such a composite suit would be maintainable.
According to the learned counsel, this Court in the case of Dhodha
House vs. S.K.Maingi[1] examined and only partly answered the question
as to whether a composite suit seeking relief of injunction under both
the 1957 Act and the 1958 Act is maintainable when filed in the court
where the plaintiff resides. In support of the submissions made,
learned counsel relied on para 54 and 55 of the judgment.
10. Learned counsel further submitted that this Court in the
case of Dabur India Ltd. Vs. K.R.Industries[2] answered the question
as to what would be meant by a composite suit?
Answering the aforesaid
question, this Court has held that the ratio in the case of Dhodha
House (supra) is that the provisions contained in Section 62(2) of the
1957 Act have been specially designed to confer an extra benefit upon
the parties who were not in a position to initiate copyright
proceedings in two different courts.
In other words, it prescribes an
additional ground for attracting the jurisdiction of the court over
and above the normal grounds as laid down in Section 20 of the Code of
Civil Procedure, 1908.
Mr. Dave also pointed out that there is an
earlier judgment of this Court in Exphar SA vs. Eupharma Laboratories
Ltd.[3]
in which it has been held that a composite suit would be
maintainable where the plaintiff resides in view of the provisions of
the 1957 Act.
In Dabur India’s Case, it has been incorrectly observed
that the case of Exphar SA (supra) was not considered in Dhodha House
(supra).
Therefore, according to the learned counsel, there is a
slight confusion and conflict between the decision in Exphar and
Dhodha House on the one hand and Dabur case on the other.
It is, therefore, submitted that the aforesaid three decisions need to be clarified and referred to a larger bench.
11. In the alternative, it is submitted that the relief claimed
under the 1958 Act was only incidental to the relief claimed under the
1957 Act and such a composite suit would be maintainable in view of
the ratio of law laid down in the case of Dhodha House Case as well as
in the Dabur Case.
Additionally, it is submitted that under the Trade
Marks Act, 1999, (hereinafter referred to as the ‘1999 Act’) the
provisions similar to Section 62(2) of the 1957 Act has been
incorporated thereby conferring the jurisdiction on the court where
the plaintiff resides.
In view of this provision, even though the Act
was enforced with effect from 15th September, 2003, the High Court
ought to have allowed the proceedings to continue in Kottayam rather
than truncating the suit, which would otherwise have to be partly
tried in Kottayam and partly in Jalandhar.
12. On the other hand, the defendant submitted that the suit
filed by the plaintiff is in the nature of composite suit. It has been
admitted by the plaintiff that the defendant’s goods are not available
in Kottayam, nor do the defendant reside or carry on business within
the jurisdiction of that Court. The plaintiffs have chosen to file the
suit at Kottayam only on the ground that the jurisdiction would be
vested in the District Court of Kottayam by virtue of Section 62(2) of
the 1957 Act. It is further submitted
that the reliance placed by the
plaintiff on the provisions contained in Section 134 of the 1999 Act
is misplaced. The defendant also placed reliance on Section 159(4) of
the 1999 Act and submitted that the proceedings initiated under the
1958 Act would be governed by the same Act notwithstanding the
provisions contained in the 1999 Act.
13. We have considered the submissions made by the learned
counsel for the parties.
In our opinion, the issues raised in the
present proceedings are no longer res integra being covered by the ratio of judgments of this Court in the case of Dhodha House (supra) and Dabur India (supra).
14. It is not disputed before us that in the plaint itself it
is pleaded as under :
“Though the defendants goods are not available in Kottayam, nor
do the defendants carry on business and reside within the
jurisdiction of this Hon’ble Court, yet this Hon’ble Court has
the jurisdiction to try and entertain this suit at Kottayam
having regard to the provisions of Section 62(2) of the
Copyright Act for the plaintiff carries on business and resides
within the territorial jurisdiction of this Hon’ble Court.”
15. The aforesaid averments make it abundantly clear that
even the plaintiff was aware that the court at Kottayam will have no
jurisdiction under the 1958 Act, but tried to camouflage the same by
confusing it and mixing it up or intermingling it with the relief
contained under the 1957 Act.
From the averments made in the plaint,
it is apparent that the plaintiff had filed a composite suit. Such a
suit would not be maintainable unless the court has jurisdiction to
entertain the suit in relation to the entire cause of action and the
entire relief.
16. We have noticed earlier that the issue is no longer res
integra. The same issue has been examined in Dhodha House (supra).
In paragraph 43, this Court formulated the question for
consideration which is as under:
“43. The short question which arises for consideration is as to
whether causes of action in terms of both the 1957 Act and the 1958 Act although may be different, would a suit be maintainable in a court only because it has the jurisdiction to entertain the same in terms of Section 62(2) of the 1957 Act?”
17. It was answered as follows :-
“44. A cause of action in a given case both under the 1957 Act
as also under the 1958 Act may be overlapping to some extent.
The territorial jurisdiction conferred upon the court in terms
of the provisions of the Code of Civil Procedure indisputably
shall apply to a suit or proceeding under the 1957 Act as also
the 1958 Act. Sub-section (2) of Section 62 of the 1957 Act
provides for an additional forum.
Such additional forum was
provided so as to enable the author to file a suit who may not
otherwise be in a position to file a suit at different places
where his copyright was violated.
Parliament while enacting the
Trade and Merchandise Marks Act in the year 1958 was aware of
the provisions of the 1957 Act. It still did not choose to make
a similar provision therein.
Such an omission may be held to be
a conscious action on the part of Parliament. The intention of
Parliament in not providing for an additional forum in relation
to the violation of the 1958 Act is, therefore, clear and
explicit.
Parliament while enacting the Trade Marks Act, 1999
provided for such an additional forum by enacting sub-section
(2) of Section 134 of the Trade Marks Act.
The court shall not,
it is well settled, readily presume the existence of
jurisdiction of a court which was not conferred by the statute.
For the purpose of attracting the jurisdiction of a court in
terms of sub-section (2) of Section 62 of the 1957 Act, the
conditions precedent specified therein must be fulfilled, the
requisites wherefore are that the plaintiff must actually and
voluntarily reside to carry on business or personally work for
gain.
For the purpose of invoking the jurisdiction of a court only
because two causes of action joined in terms of the provisions
of the Code of Civil Procedure, the same would not mean that
thereby the jurisdiction can be conferred upon a court which had
jurisdiction to try only the suit in respect of one cause of
action and not the other.
Recourse to the additional forum,
however, in a given case, may be taken if both the causes of
action arise within the jurisdiction of the court which
otherwise had the necessary jurisdiction to decide all the
issues.”
18. This legal position has been reiterated in the case of
Dabur India (supra) as under:-
“34. What then would be meant by a composite suit?
A composite
suit would not entitle a court to entertain a suit in respect
whereof it has no jurisdiction, territorial or otherwise.
Order
2 Rule 3 of the Code specifically states so and, thus, there is
no reason as to why the same should be ignored.
A composite suit
within the provisions of the 1957 Act as considered in Dhodha
House1, therefore, would mean the suit which is founded on
infringement of a copyright and wherein the incidental power of
the court is required to be invoked. A plaintiff may seek a
remedy which can otherwise be granted by the court. It was that
aspect of the matter which had not been considered in Dhodha
House but it never meant that two suits having different causes
of action can be clubbed together as a composite suit.”
19. We see no conflict in the ratio of law laid down in the
aforesaid two cases. In both the cases, it has been held that for the
purpose of invoking the jurisdiction of the court in a composite suit,
both the causes of action must arise within the jurisdiction of the
court which otherwise had the necessary jurisdiction to decide all the
issues.
However, the jurisdiction cannot be conferred by joining two
causes of action in the same suit when the court has jurisdiction to
try the suit only in respect of one cause of action and not the other.
In Dabur India (supra) the ratio in Dhodha House has been explained.
In Dhodha House, the law was stated in the following terms:
“54. For the purpose of invoking the jurisdiction of a court
only because two causes of action joined in terms of the
provisions of the Code of Civil Procedure, the same would not
mean that thereby the jurisdiction can be conferred upon a court
which had jurisdiction to try only the suit in respect of one
cause of action and not the other. Recourse to the additional
forum, however, in a given case, may be taken if both the causes
of action arise within the jurisdiction of the court which
otherwise had the necessary jurisdiction to decide all the
issues.
55. In this case we have not examined the question as to whether
if a cause of action arises under the 1957 Act and the violation
of the provisions of the Trade Marks Act is only incidental, a
composite suit will lie or not, as such a question does not
arise in this case.”
20. In our opinion, the aforesaid observation is self
explanatory and need no further clarification. We also do not find any
substance in the submission of Mr. Dave that there is any conflict
between the law laid down in Dabur (supra) and Exphar SA (supra). In
the case of Dabur (supra), this Court distinguished the judgment
Exphar SA in the following terms :
“31. Exphar SA cannot be said to have any application in the
instant case. The question which arose for consideration therein
was as to whether the jurisdiction of a court under sub-section
(2) of Section 62 of the 1957 Act is wider than that of the
court specified under the Code of Civil Procedure and thus a
person instituting a suit having any claim on the ownership of
the copyright which has been infringed, would not be a ground
for holding that he would not come within the purview of sub-
section (2) Section 62 of the 1957 Act, as he had been served
with a “cease and desist” notice, opining: (SCC p. 693, para 13)
“13. It is, therefore, clear that the object and reason for
the introduction of sub-section (2) of Section 62 was not
to restrict the owners of the copyright to exercise their
rights but to remove any impediment from their doing so.
Section 62(2) cannot be read as limiting the jurisdiction
of the District Court only to cases where the person
instituting the suit or other proceeding, or where there
are more than one such persons, any of them actually and
voluntarily resides or carries on business or presently
works for gain. It prescribes an additional ground for
attracting the jurisdiction of a court over and above the
‘normal’ grounds as laid down in Section 20 of the Code.”
32. There cannot be any doubt whatsoever that Parliament having inserted sub-section (2) in Section 62 of the 1957 Act, the jurisdiction of the court there under would be wider than the one under Section 20 of the Code.
The object and reasons for
enactment of sub-section (2) of Section 62 would also appear
from the report of the Committee, as has been noticed by this
Court being a provision which has been specially designed to
confer an extra benefit upon the authors who were not in a
position to instate copyright infringement proceeding before the
courts. It is in the aforementioned context the law laid down by
this Court in para 13 of Dhodha House must be understood.
33. If the impediment is sought to be removed by inserting an
incidental provision, there cannot be any doubt the court could
be entitled to pass an interim order, but the same by no stretch
of imagination can be extended to a cause of action which is
founded on separate set of facts as also rights and liabilities
of a party under a different Act. In Dhodha House, although
Exphar Sa was not noticed, the distinction would be apparent
from the following: (Dhodha House case, SCC p. 56, paras 50-51)
“50. In this case, the Delhi High Court could not have
invoked its jurisdiction in terms of the 1957 Act. The
primary ground upon which the jurisdiction of the Original
Side of the High Court was invoked was the violation of the
1958 Act, but in relation thereto, the provisions of sub-
section (2) of Section 62 of the 1957 Act could not be
invoked.
51. 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 (sic).
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.”
21. We are, however, of the opinion that the High Court has
correctly held that the provision contained in Section 134 of the 1999
Act, would not come to the aid of the plaintiff.
Although, the 1999
Act was enacted on 30th December, 1999, it came into force on 15th
September, 2003 vide S.O. 1048(E), dated 15th September, 2003,
published in the Gazette of India, Extra., Pt. II, Sec. 3(ii),
dated 15th September, 2003. Since the suit in this case was
filed on 19th March, 2001, it would be adjudicated under the 1958 Act.
The 1958 Act does not contain a provision similar to the provision
contained in Section 62(2) of the 1957 Act. Parliament being
aware of the provisions of the 1957 Act still did not incorporate the
same in the 1958 Act. Therefore, it can not be read into the 1958 Act
by implication. The High Court had correctly concluded that the suit
of the plaintiff (appellant) was a composite one.
22. Having said this, we are still not inclined to interfere with
the order passed by the High Court permitting the plaintiff to
amend the plaint.
The High Court was mindful of the fact that
under the 1999 Act, a composite suit could be filed and would be
maintainable by the Court at Kottayam.
The Court was aware that
the plaintiff has filed the suit on 19th March, 2001, but the
1999 Act was not enforced till 15th September, 2003.
In our
opinion, the High Court has passed the order in exercise of its
discretionary powers taking into consideration the entire facts
and circumstances of the case.
The discretion exercised by the
High Court can not be said to be either erroneous or perverse.
It has been exercised only to avoid multiplicity of litigation.
The defendant (respondent) could not dispute that in so far as
suit predicated on the Copy Right is concerned, the Court at
Kottayam is having requisite jurisdiction in view of the
provisions of Section 62(2) of the Copy Right Act.
Therefore,
had the suit been filed for violation of copy right alone, the
Court at Kottayam could validly entertain the same.
By
permitting the plaintiff to amend the plaint so as that the suit
will be maintainable before the District Court, Kottayam, no
error was committed by the High Court.
23. In view of the observations made above, both the appeals
are dismissed with no order as to costs.
...………………….….….J.
[Surinder Singh
Nijjar]
………………………….J.
[A.K.Sikri]
New Delhi;
November 29, 2013.
ITEM NO.1A COURT NO.9 SECTION XIA
S U P R E M E C O U R T O F I N D I A
RECORD OF PROCEEDINGS
Civil Appeal No.10745/2013 @
Petition(s) for Special Leave to Appeal (Civil) No(s).22280/2011
M/S PARAGON RUBBER INDUSTRIES Petitioner(s)
VERSUS
M/S PRAGATI RUBBER MILLS & ORS. Respondent(s)
WITH Civil Appeal No.10746/2013 @
SLP(C) NO. 33453 of 2011
Date: 29/11/2013 These matters were called on for
pronouncement of Judgment today.
For Petitioner(s)
Mr. A. Raghunath,Adv.
Mr. Atul Jha, Adv.
Ms. Divya Balasundaram, Adv.
Mr. Sandeep Jha, Adv.
Mr. Dharmendra Kumar Sinha
For Respondent(s)
Mr. Atul Jha, Adv.
Ms. Divya Balasundaram, Adv.
Mr. Sandeep Jha, Adv.
Mr. Dharmendra Kumar Sinha,Adv.
Mr. A. Raghunath
UPON hearing counsel the Court made the following
O R D E R
Leave granted.
Hon'ble Mr. Justice Surinder Singh Nijjar pronounced the
Judgment of the Bench comprising His Lordship and Hon'ble Mr.
Justice A.K. Sikri.
For the reasons recorded in the signed Reportable Judgment,
both the Appeals are dismissed with no order as to costs.
|(Vishal Anand) | |(Indu Bala Kapur) |
|Court Master | |Court Master |
(Signed Reportable Judgment is placed on the file)
-----------------------
[1] (2006) 9 SCC 41
[2] (2008) 10 SCC 595
[3] (2004) 3 SCC 688
-----------------------
20
The Plaintiff is
engaged in the business of manufacturing and
marketing of footwear since 1975, under the registered trademark for
which it also possesses the registered copyright.
The Plaintiff is located in Kerala.
The Defendant, which is located in Jalandhar,
Punjab, also manufactures and markets its footwear under the
registered trademark and copyright PRAGATI/PARAGATI with a device of lion.
4. On 19th March, 2001, the Plaintiff filed a suit being O.S. No. 2 of
2001 at District Courts in Kottayam, Kerala against the defendants,
claiming relief under the Copyright Act, 1957 (hereinafter referred to
as “1957 Act”) and the Trade and Merchandise Marks Act, 1958
(hereinafter referred to as the “1958 Act”).
The suit is pending in the trial court.
The defendant filed I.A. No. 322 of 2004, under order
VII Rule XI CPC, with a prayer for rejection of plaint for want of
territorial jurisdiction. - Lower court dismissed the petition holding it's jurisdiction - but the high court set aside the order of lower court and allowed the petition giving an opportunity to the plaintiff to amend the plaint suitable to hold jurisdiction under sec. 62(2) of Copyright Act = Apex court confirmed the High court order and dismissed the both appeal and counter appeal filed by both parties question the High court order =
“Though the defendants goods are not available in Kottayam, nor
do the defendants carry on business and reside within the
jurisdiction of this Hon’ble Court, yet this Hon’ble Court has
the jurisdiction to try and entertain this suit at Kottayam
having regard to the provisions of Section 62(2) of the
Copyright Act for the plaintiff carries on business and resides
within the territorial jurisdiction of this Hon’ble Court.”
We are, however, of the opinion that the High Court has
correctly held that the provision contained in Section 134 of the 1999
Act, would not come to the aid of the plaintiff.
Although, the 1999
Act was enacted on 30th December, 1999, it came into force on 15th
September, 2003 vide S.O. 1048(E), dated 15th September, 2003,
published in the Gazette of India, Extra., Pt. II, Sec. 3(ii),
dated 15th September, 2003. Since the suit in this case was
filed on 19th March, 2001, it would be adjudicated under the 1958 Act.
The 1958 Act does not contain a provision similar to the provision
contained in Section 62(2) of the 1957 Act. Parliament being
aware of the provisions of the 1957 Act still did not incorporate the
same in the 1958 Act. Therefore, it can not be read into the 1958 Act
by implication. The High Court had correctly concluded that the suit
of the plaintiff (appellant) was a composite one.
22. Having said this, we are still not inclined to interfere with
the order passed by the High Court permitting the plaintiff to
amend the plaint.
The High Court was mindful of the fact that
under the 1999 Act, a composite suit could be filed and would be
maintainable by the Court at Kottayam.
The Court was aware that
the plaintiff has filed the suit on 19th March, 2001, but the
1999 Act was not enforced till 15th September, 2003.
In our
opinion, the High Court has passed the order in exercise of its
discretionary powers taking into consideration the entire facts
and circumstances of the case.
The discretion exercised by the
High Court can not be said to be either erroneous or perverse.
It has been exercised only to avoid multiplicity of litigation.
The defendant (respondent) could not dispute that in so far as
suit predicated on the Copy Right is concerned, the Court at
Kottayam is having requisite jurisdiction in view of the
provisions of Section 62(2) of the Copy Right Act.
Therefore,
had the suit been filed for violation of copy right alone, the
Court at Kottayam could validly entertain the same.
By
permitting the plaintiff to amend the plaint so as that the suit
will be maintainable before the District Court, Kottayam, no
error was committed by the High Court.
23. In view of the observations made above, both the appeals
are dismissed with no order as to costs.
REPORTABLE
IN THE SUPREME COURT OF INDIA
CIVIL APPELLATE JURISDICTION
CIVIL APPEAL NO.10745 OF 2013
(Arising out of SLP (C) No. 22280 of 2011)
M/s. Paragon Rubber Industries …Appellant
VERSUS
M/s. Pragathi Rubber Mills & Ors. ...Respondents
With
Civil Appeal No.10746 of 2013
(Arising out of SLP (C) No. 33453 of 2011)
M/s. Pragathi Rubber Mills & Ors. …Appellants
VERSUS
M/s. Paragon Rubber Industries ...Respondent
J U D G M E N T
SURINDER SINGH NIJJAR, J.
1. Leave granted.
2. This judgment shall dispose of C.A.No.10745 of 2013 @ SLP (C)
No.22280 of 2011 and C.A.No. 10746 of 2013 @ SLP (C) No.33453 of
2011. Both the appeals impugn the judgment of the High Court of
Kerala at Ernakulam dated 15th March, 2011, rendered in Civil
Revision Petition No.1417 of 2004.
3. Since these are cross appeals, the parties shall be referred to as
plaintiff and defendant. The facts at the centre of this
controversy are as follows:
The Plaintiff is
engaged in the business of manufacturing and
marketing of footwear since 1975, under the registered trademark for
which it also possesses the registered copyright.
The Plaintiff is located in Kerala.
The Defendant, which is located in Jalandhar,
Punjab, also manufactures and markets its footwear under the
registered trademark and copyright PRAGATI/PARAGATI with a device of lion.
4. On 19th March, 2001, the Plaintiff filed a suit being O.S. No. 2 of
2001 at District Courts in Kottayam, Kerala against the defendants,
claiming relief under the Copyright Act, 1957 (hereinafter referred to
as “1957 Act”) and the Trade and Merchandise Marks Act, 1958
(hereinafter referred to as the “1958 Act”).
The suit is pending in the trial court.
The defendant filed I.A. No. 322 of 2004, under order
VII Rule XI CPC, with a prayer for rejection of plaint for want of
territorial jurisdiction.
The trial court dismissed the application on
22nd March, 2004, with the observations that the issue of jurisdiction
will be decided at the final stage of the suit.
The defendant filed
CRP No.363 of 2004 in the High Court against the aforesaid order. The
High Court by order dated 16th June, 2004, allowed the civil revision
and directed the trial court to determine the issue of territorial
jurisdiction afresh.
5. In view of the aforesaid directions issued by the High Court, the
trial court treated the issue with regard to the jurisdiction as
the preliminary issue.
Upon consideration of the entire matter
again the trial court in its order dated 6th October, 2004 held
that it has the jurisdiction to entertain the suit in view of
Section 62(2) of the 1957 Act.
The petitioner challenged the
aforesaid order in the High Court by filing C.R.P. No. 1417 of
2004.
The High Court, upon consideration of the matter has, by the
impugned order dated 15th March, 2011, held as under:-
“The court below held in the order impugned that the suit as
such is maintainable before the District Court, Kottayam. That
finding is not correct in view of the decisions of the Supreme
Court referred to above. Accordingly, the order passed by the
court below is set aside. The plaintiff is given liberty to
amend the plaint, so that the suit will be maintainable before
the District Court, Kottayam, in the light of the principles
laid down by the Supreme Court in the aforesaid decisions. When
an application is filed for amendment of the plaint, the court
below shall consider the same on the merits, after affording an
opportunity of being heard to both sides.
The Civil Revision Petition is allowed as above.”
6. A perusal of the above shows that the High Court, having come to
the correct conclusion that a composite suit would not be
maintainable, has set aside the order passed by the trial court.
Thereafter, the Plaintiff has been given liberty to amend the plaint
so that the suit will be maintainable before the District Court,
Kottayam.
The plaintiff aggrieved by the aforesaid order has filed
SLP (C) No.22280 of 2011 giving rise to C.A.No.10745 of 2013.
7. The defendant/petitioner in SLP (C) No. 33453 of 2011 has
challenged the impugned order on the ground that having come to the
conclusion that a composite suit under the 1957 Act and 1958 Act was
not maintainable, the High Court erred in permitting the plaintiff to
amend the plaint rather than rejecting the same on the ground of lack
of jurisdiction.
8. We have heard the learned counsel for the parties.
9. It is submitted by the learned counsel for the Plaintiff
that the
suit was maintainable before the District Judge, Kottayam for
violation of the copyright in view of Section 62(2) of the 1957 Act,
which permits the filing of the suit at the place where the plaintiff
resides.
It is further submitted by the learned counsel that the High
Court has wrongly held that a composite suit claiming relief under the
1957 Act and the 1958 Act would not be maintainable.
Mr. Siddhartha
Dave, learned counsel appearing for the plaintiff further submitted
that the relief claimed under the 1958 Act in the suit filed by the
plaintiff under the 1957 Act was incidental to the relief claimed
under the 1957 Act. Such a composite suit would be maintainable.
According to the learned counsel, this Court in the case of Dhodha
House vs. S.K.Maingi[1] examined and only partly answered the question
as to whether a composite suit seeking relief of injunction under both
the 1957 Act and the 1958 Act is maintainable when filed in the court
where the plaintiff resides. In support of the submissions made,
learned counsel relied on para 54 and 55 of the judgment.
10. Learned counsel further submitted that this Court in the
case of Dabur India Ltd. Vs. K.R.Industries[2] answered the question
as to what would be meant by a composite suit?
Answering the aforesaid
question, this Court has held that the ratio in the case of Dhodha
House (supra) is that the provisions contained in Section 62(2) of the
1957 Act have been specially designed to confer an extra benefit upon
the parties who were not in a position to initiate copyright
proceedings in two different courts.
In other words, it prescribes an
additional ground for attracting the jurisdiction of the court over
and above the normal grounds as laid down in Section 20 of the Code of
Civil Procedure, 1908.
Mr. Dave also pointed out that there is an
earlier judgment of this Court in Exphar SA vs. Eupharma Laboratories
Ltd.[3]
in which it has been held that a composite suit would be
maintainable where the plaintiff resides in view of the provisions of
the 1957 Act.
In Dabur India’s Case, it has been incorrectly observed
that the case of Exphar SA (supra) was not considered in Dhodha House
(supra).
Therefore, according to the learned counsel, there is a
slight confusion and conflict between the decision in Exphar and
Dhodha House on the one hand and Dabur case on the other.
It is, therefore, submitted that the aforesaid three decisions need to be clarified and referred to a larger bench.
11. In the alternative, it is submitted that the relief claimed
under the 1958 Act was only incidental to the relief claimed under the
1957 Act and such a composite suit would be maintainable in view of
the ratio of law laid down in the case of Dhodha House Case as well as
in the Dabur Case.
Additionally, it is submitted that under the Trade
Marks Act, 1999, (hereinafter referred to as the ‘1999 Act’) the
provisions similar to Section 62(2) of the 1957 Act has been
incorporated thereby conferring the jurisdiction on the court where
the plaintiff resides.
In view of this provision, even though the Act
was enforced with effect from 15th September, 2003, the High Court
ought to have allowed the proceedings to continue in Kottayam rather
than truncating the suit, which would otherwise have to be partly
tried in Kottayam and partly in Jalandhar.
12. On the other hand, the defendant submitted that the suit
filed by the plaintiff is in the nature of composite suit. It has been
admitted by the plaintiff that the defendant’s goods are not available
in Kottayam, nor do the defendant reside or carry on business within
the jurisdiction of that Court. The plaintiffs have chosen to file the
suit at Kottayam only on the ground that the jurisdiction would be
vested in the District Court of Kottayam by virtue of Section 62(2) of
the 1957 Act. It is further submitted
that the reliance placed by the
plaintiff on the provisions contained in Section 134 of the 1999 Act
is misplaced. The defendant also placed reliance on Section 159(4) of
the 1999 Act and submitted that the proceedings initiated under the
1958 Act would be governed by the same Act notwithstanding the
provisions contained in the 1999 Act.
13. We have considered the submissions made by the learned
counsel for the parties.
In our opinion, the issues raised in the
present proceedings are no longer res integra being covered by the ratio of judgments of this Court in the case of Dhodha House (supra) and Dabur India (supra).
14. It is not disputed before us that in the plaint itself it
is pleaded as under :
“Though the defendants goods are not available in Kottayam, nor
do the defendants carry on business and reside within the
jurisdiction of this Hon’ble Court, yet this Hon’ble Court has
the jurisdiction to try and entertain this suit at Kottayam
having regard to the provisions of Section 62(2) of the
Copyright Act for the plaintiff carries on business and resides
within the territorial jurisdiction of this Hon’ble Court.”
15. The aforesaid averments make it abundantly clear that
even the plaintiff was aware that the court at Kottayam will have no
jurisdiction under the 1958 Act, but tried to camouflage the same by
confusing it and mixing it up or intermingling it with the relief
contained under the 1957 Act.
From the averments made in the plaint,
it is apparent that the plaintiff had filed a composite suit. Such a
suit would not be maintainable unless the court has jurisdiction to
entertain the suit in relation to the entire cause of action and the
entire relief.
16. We have noticed earlier that the issue is no longer res
integra. The same issue has been examined in Dhodha House (supra).
In paragraph 43, this Court formulated the question for
consideration which is as under:
“43. The short question which arises for consideration is as to
whether causes of action in terms of both the 1957 Act and the 1958 Act although may be different, would a suit be maintainable in a court only because it has the jurisdiction to entertain the same in terms of Section 62(2) of the 1957 Act?”
17. It was answered as follows :-
“44. A cause of action in a given case both under the 1957 Act
as also under the 1958 Act may be overlapping to some extent.
The territorial jurisdiction conferred upon the court in terms
of the provisions of the Code of Civil Procedure indisputably
shall apply to a suit or proceeding under the 1957 Act as also
the 1958 Act. Sub-section (2) of Section 62 of the 1957 Act
provides for an additional forum.
Such additional forum was
provided so as to enable the author to file a suit who may not
otherwise be in a position to file a suit at different places
where his copyright was violated.
Parliament while enacting the
Trade and Merchandise Marks Act in the year 1958 was aware of
the provisions of the 1957 Act. It still did not choose to make
a similar provision therein.
Such an omission may be held to be
a conscious action on the part of Parliament. The intention of
Parliament in not providing for an additional forum in relation
to the violation of the 1958 Act is, therefore, clear and
explicit.
Parliament while enacting the Trade Marks Act, 1999
provided for such an additional forum by enacting sub-section
(2) of Section 134 of the Trade Marks Act.
The court shall not,
it is well settled, readily presume the existence of
jurisdiction of a court which was not conferred by the statute.
For the purpose of attracting the jurisdiction of a court in
terms of sub-section (2) of Section 62 of the 1957 Act, the
conditions precedent specified therein must be fulfilled, the
requisites wherefore are that the plaintiff must actually and
voluntarily reside to carry on business or personally work for
gain.
For the purpose of invoking the jurisdiction of a court only
because two causes of action joined in terms of the provisions
of the Code of Civil Procedure, the same would not mean that
thereby the jurisdiction can be conferred upon a court which had
jurisdiction to try only the suit in respect of one cause of
action and not the other.
Recourse to the additional forum,
however, in a given case, may be taken if both the causes of
action arise within the jurisdiction of the court which
otherwise had the necessary jurisdiction to decide all the
issues.”
18. This legal position has been reiterated in the case of
Dabur India (supra) as under:-
“34. What then would be meant by a composite suit?
A composite
suit would not entitle a court to entertain a suit in respect
whereof it has no jurisdiction, territorial or otherwise.
Order
2 Rule 3 of the Code specifically states so and, thus, there is
no reason as to why the same should be ignored.
A composite suit
within the provisions of the 1957 Act as considered in Dhodha
House1, therefore, would mean the suit which is founded on
infringement of a copyright and wherein the incidental power of
the court is required to be invoked. A plaintiff may seek a
remedy which can otherwise be granted by the court. It was that
aspect of the matter which had not been considered in Dhodha
House but it never meant that two suits having different causes
of action can be clubbed together as a composite suit.”
19. We see no conflict in the ratio of law laid down in the
aforesaid two cases. In both the cases, it has been held that for the
purpose of invoking the jurisdiction of the court in a composite suit,
both the causes of action must arise within the jurisdiction of the
court which otherwise had the necessary jurisdiction to decide all the
issues.
However, the jurisdiction cannot be conferred by joining two
causes of action in the same suit when the court has jurisdiction to
try the suit only in respect of one cause of action and not the other.
In Dabur India (supra) the ratio in Dhodha House has been explained.
In Dhodha House, the law was stated in the following terms:
“54. For the purpose of invoking the jurisdiction of a court
only because two causes of action joined in terms of the
provisions of the Code of Civil Procedure, the same would not
mean that thereby the jurisdiction can be conferred upon a court
which had jurisdiction to try only the suit in respect of one
cause of action and not the other. Recourse to the additional
forum, however, in a given case, may be taken if both the causes
of action arise within the jurisdiction of the court which
otherwise had the necessary jurisdiction to decide all the
issues.
55. In this case we have not examined the question as to whether
if a cause of action arises under the 1957 Act and the violation
of the provisions of the Trade Marks Act is only incidental, a
composite suit will lie or not, as such a question does not
arise in this case.”
20. In our opinion, the aforesaid observation is self
explanatory and need no further clarification. We also do not find any
substance in the submission of Mr. Dave that there is any conflict
between the law laid down in Dabur (supra) and Exphar SA (supra). In
the case of Dabur (supra), this Court distinguished the judgment
Exphar SA in the following terms :
“31. Exphar SA cannot be said to have any application in the
instant case. The question which arose for consideration therein
was as to whether the jurisdiction of a court under sub-section
(2) of Section 62 of the 1957 Act is wider than that of the
court specified under the Code of Civil Procedure and thus a
person instituting a suit having any claim on the ownership of
the copyright which has been infringed, would not be a ground
for holding that he would not come within the purview of sub-
section (2) Section 62 of the 1957 Act, as he had been served
with a “cease and desist” notice, opining: (SCC p. 693, para 13)
“13. It is, therefore, clear that the object and reason for
the introduction of sub-section (2) of Section 62 was not
to restrict the owners of the copyright to exercise their
rights but to remove any impediment from their doing so.
Section 62(2) cannot be read as limiting the jurisdiction
of the District Court only to cases where the person
instituting the suit or other proceeding, or where there
are more than one such persons, any of them actually and
voluntarily resides or carries on business or presently
works for gain. It prescribes an additional ground for
attracting the jurisdiction of a court over and above the
‘normal’ grounds as laid down in Section 20 of the Code.”
32. There cannot be any doubt whatsoever that Parliament having inserted sub-section (2) in Section 62 of the 1957 Act, the jurisdiction of the court there under would be wider than the one under Section 20 of the Code.
The object and reasons for
enactment of sub-section (2) of Section 62 would also appear
from the report of the Committee, as has been noticed by this
Court being a provision which has been specially designed to
confer an extra benefit upon the authors who were not in a
position to instate copyright infringement proceeding before the
courts. It is in the aforementioned context the law laid down by
this Court in para 13 of Dhodha House must be understood.
33. If the impediment is sought to be removed by inserting an
incidental provision, there cannot be any doubt the court could
be entitled to pass an interim order, but the same by no stretch
of imagination can be extended to a cause of action which is
founded on separate set of facts as also rights and liabilities
of a party under a different Act. In Dhodha House, although
Exphar Sa was not noticed, the distinction would be apparent
from the following: (Dhodha House case, SCC p. 56, paras 50-51)
“50. In this case, the Delhi High Court could not have
invoked its jurisdiction in terms of the 1957 Act. The
primary ground upon which the jurisdiction of the Original
Side of the High Court was invoked was the violation of the
1958 Act, but in relation thereto, the provisions of sub-
section (2) of Section 62 of the 1957 Act could not be
invoked.
51. 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 (sic).
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.”
21. We are, however, of the opinion that the High Court has
correctly held that the provision contained in Section 134 of the 1999
Act, would not come to the aid of the plaintiff.
Although, the 1999
Act was enacted on 30th December, 1999, it came into force on 15th
September, 2003 vide S.O. 1048(E), dated 15th September, 2003,
published in the Gazette of India, Extra., Pt. II, Sec. 3(ii),
dated 15th September, 2003. Since the suit in this case was
filed on 19th March, 2001, it would be adjudicated under the 1958 Act.
The 1958 Act does not contain a provision similar to the provision
contained in Section 62(2) of the 1957 Act. Parliament being
aware of the provisions of the 1957 Act still did not incorporate the
same in the 1958 Act. Therefore, it can not be read into the 1958 Act
by implication. The High Court had correctly concluded that the suit
of the plaintiff (appellant) was a composite one.
22. Having said this, we are still not inclined to interfere with
the order passed by the High Court permitting the plaintiff to
amend the plaint.
The High Court was mindful of the fact that
under the 1999 Act, a composite suit could be filed and would be
maintainable by the Court at Kottayam.
The Court was aware that
the plaintiff has filed the suit on 19th March, 2001, but the
1999 Act was not enforced till 15th September, 2003.
In our
opinion, the High Court has passed the order in exercise of its
discretionary powers taking into consideration the entire facts
and circumstances of the case.
The discretion exercised by the
High Court can not be said to be either erroneous or perverse.
It has been exercised only to avoid multiplicity of litigation.
The defendant (respondent) could not dispute that in so far as
suit predicated on the Copy Right is concerned, the Court at
Kottayam is having requisite jurisdiction in view of the
provisions of Section 62(2) of the Copy Right Act.
Therefore,
had the suit been filed for violation of copy right alone, the
Court at Kottayam could validly entertain the same.
By
permitting the plaintiff to amend the plaint so as that the suit
will be maintainable before the District Court, Kottayam, no
error was committed by the High Court.
23. In view of the observations made above, both the appeals
are dismissed with no order as to costs.
...………………….….….J.
[Surinder Singh
Nijjar]
………………………….J.
[A.K.Sikri]
New Delhi;
November 29, 2013.
ITEM NO.1A COURT NO.9 SECTION XIA
S U P R E M E C O U R T O F I N D I A
RECORD OF PROCEEDINGS
Civil Appeal No.10745/2013 @
Petition(s) for Special Leave to Appeal (Civil) No(s).22280/2011
M/S PARAGON RUBBER INDUSTRIES Petitioner(s)
VERSUS
M/S PRAGATI RUBBER MILLS & ORS. Respondent(s)
WITH Civil Appeal No.10746/2013 @
SLP(C) NO. 33453 of 2011
Date: 29/11/2013 These matters were called on for
pronouncement of Judgment today.
For Petitioner(s)
Mr. A. Raghunath,Adv.
Mr. Atul Jha, Adv.
Ms. Divya Balasundaram, Adv.
Mr. Sandeep Jha, Adv.
Mr. Dharmendra Kumar Sinha
For Respondent(s)
Mr. Atul Jha, Adv.
Ms. Divya Balasundaram, Adv.
Mr. Sandeep Jha, Adv.
Mr. Dharmendra Kumar Sinha,Adv.
Mr. A. Raghunath
UPON hearing counsel the Court made the following
O R D E R
Leave granted.
Hon'ble Mr. Justice Surinder Singh Nijjar pronounced the
Judgment of the Bench comprising His Lordship and Hon'ble Mr.
Justice A.K. Sikri.
For the reasons recorded in the signed Reportable Judgment,
both the Appeals are dismissed with no order as to costs.
|(Vishal Anand) | |(Indu Bala Kapur) |
|Court Master | |Court Master |
(Signed Reportable Judgment is placed on the file)
-----------------------
[1] (2006) 9 SCC 41
[2] (2008) 10 SCC 595
[3] (2004) 3 SCC 688
-----------------------
20
