M/S Pragathi Rubber Mills & Others v. M/S Paragon Rubber Industries

IN THE HIGH COURT OF KERALA AT ERNAKULAM PRESENT : THE HONOURABLE MR. JUSTICE K.T.SANKARAN TUESDAY, THE 15TH MARCH 2011 / 24TH PHALGUNA 1932 CRP.No. 1417 of 2004() ---------------------AGAINST THE ORDER DATED 06/10/2004 IN IA.NO.322 /2004 IN OS.2/2001 of DISTRICT COURT, KOTTAYAM .................... REVN. PETITIONER(S): PETITIONERS/DEFENDANTS: -------------------------------------------- 1. M/S.PRAGATHI RUBBER MILLS, A PARTNERSHIP FIRM OF NEW COLONY, TANDA ROAD, JALANDHAR 144 004, REP. BY ITS PARTNER SUNIL JAIN, NEW COLONY, TANDA ROAD, JALANDHAR 144 004. 2. SUNIL JAIN, PARTNER OF THE DEFENDANT NO. - 1, HEREIN ABOVE, OF NEW COLONY, TANDA ROAD, JALANDHAR 144 004. 3. YOGESH KUMAR JAIN, NEW COLONY, TANDA ROAD, JALANDHAR 144 004. BY ADV. SRI.T.I.ABDUL SALAM SRI.R.D.SHENOY, SENIOR ADVOCATE RESPONDENT(S): PLAINTIFF: ------------------------- M/S.PARAGON RUBBER INDUSTRIES, A REGD. PARTNERSHIP FRIM HAVING ITS REGD.OFFICE AT PB.NO. 61, PARAGON BLDG. OPPO.BISHOP JACOB MEMORIAL HALL, SREENIVASA IYER ROAD, KOTTAYAM, KERALA, REP. BY ITS PARTNER REG.ABRAHAM, S/O.P.V.ABRAHAM. ADV. SRI.M.NARENDRA KUMAR FOR R1 SMT.LEENA KRISHNAN FOR R1 THIS CIVIL REVISION PETITION HAVING BEEN FINALLY HEARD ON 15/03/2011, THE COURT ON THE SAME DAY PASSED THE FOLLOWING: ## **K.T.SANKARAN, J.** --------------------------------------- C.R.P.No.1417 of 2004 -------------------------------------- Dated this the 15th day of March, 2011 ## **O R D E R** The defendants in O.S.No.2 of 2001, on the file of the court of the District Judge, Kottayam, challenge the order dated 6.10.2004 in I.A.No.322 of 2004 in O.S.No.2 of 2001, by which the court below held that it has got territorial jurisdiction to try the suit. 2. The suit was filed by the respondent claiming reliefs under the Copyright Act, 1957 and The Trade and Merchandise Marks Act, 1958. The plaintiff also sought for reliefs alleging that there was passing off the goods of the plaintiff as the goods of the defendants. 3. It is stated that an interim injunction was granted in favour of the plaintiff. The defendants challenged that order in C.M.A.No.52 of 2003 before the High Court. The C.R.P.No.1417/2004 2 C.M.A. was disposed of directing the trial court to dispose of the suit. 4. Thereafter, the defendants filed I.A.No.322 of 2004 to try the question of territorial jurisdiction as a preliminary issue. The defendants raised a contention that the District Court, Kottayam has no territorial jurisdiction to try the suit. The court below dismissed the application by the order dated 22.3.2004. That order was challenged in C.R.P.No.363 of 2004. This Court allowed the revision. The trial court was directed to decide the issue of territorial jurisdiction afresh. 5. Thereafter, the trial court passed the order dated 6th October, 2004 holding that it has territorial jurisdiction to try the suit. The said order is challenged by the defendants in this revision. The court below held that in view of Section 62 of the Copyright Act, 1957 the suit is maintainable before the District Court, Kottayam. C.R.P.No.1417/2004 3 6. Sri.R.D.Shenoy, the learned senior counsel appearing for the petitioners submitted that the order passed by the court below is liable to be set aside in view of the decisions of the Supreme Court in **M/s.Dhodha House vs. S.K.Maingi (AIR 2006 Supreme Court 730) = (JT 2006(1) SC 123)** and **Dabur India Ltd. vs. K.R. Industries (AIR 2008 Supreme Court 3123) = 2008 (10) SCC 595** . The learned senior counsel also referred to the decisions in **Kurivalli Lingayya Setty vs. Sitharam Agarwala and another (AIR 1955 Madras 595)** , **Laxmikumar Srinivas Das vs. Krishnaram Baldev Bank, Lashkar and another (AIR 1954 Madhya Bharat 156)** , **M/s.Intas Pharmaceuticals Ltd. vs. Allergan Inc. (AIR 2007 Delhi 108)** and **Dharampal Premchand Ltd. vs. Golden Tobacco Products (AIR 2007** . **Delhi 266)** 7. Sri.Narendra Kumar, the learned counsel appearing for the respondent submitted that the plea of lack of territorial C.R.P.No.1417/2004 4 jurisdiction is not available now to the defendants as they shall be deemed to have waived that contention. It is pointed out that when the application for temporary injunction and the appeal therefrom were being considered, the defendants did not raise the contention that the court has no territorial jurisdiction. A direction was issued by the High Court in C.M.A.No.52 of 2003 to dispose of the suit expeditiously. Only at that juncture, I.A.No.322 of 2004 was filed praying for deciding the question of lack of territorial jurisdiction as a preliminary issue. The counsel relied on the decisions in **Hira Lal Patni vs. Sri Kali Nath** ( **AIR 1962 Supreme Court 199)** and **Bahrein Petroleum Co. Ltd. vs. P.J.Pappu and another** ( **AIR 1966 Supreme Court 634)** in support of this contention. 8. Sub Section 2 of Section 62 of the Copyright Act, 1957 reads thus : "(2) For the purpose of Sub Section (1), a "District Court having jurisdiction" shall, notwithstanding anything contained in the C.R.P.No.1417/2004 5 Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, 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 personally works for gain." There is no similar provision in the Trade and Merchandise Marks Act, 1958. Therefore, the territorial jurisdiction in so far as it relates to the relief under the Trade and Merchandise Marks Act, 1958 has to be considered with reference to Section 20 of the Code of Civil Procedure. There is no case for the plaintiff that the District Court, Kottayam would have jurisdiction, if Section 20 of the Code of Civil Procedure is applied. ## 9. In **M/s.Dhodha House vs. S.K.Maingi (AIR 2006** C.R.P.No.1417/2004 6 ## **Supreme Court 730)** , the Supreme Court held thus : "45. 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 (enable?) a suit to 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? 46. 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 C.R.P.No.1417/2004 7 was violated. The 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 the Parliament. The intention of the Parliament in not providing for an additional forum in relation to the violation of the 1958 Act is, therefore, clear and explicit. The 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 wherefor are that the plaintiff must actually and voluntarily reside to carry on business or personally work for gain. C.R.P.No.1417/2004 8 56. 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." In M/s.Dhodha House vs. S.K.Maingi (AIR 2006 Supreme Court 730), the Supreme Court made it clear that the question as to whether in a case where cause of action arises under the 1957 Act and the violation of the provisions of the the Trade Marks Act, 1999 is only incidental, a composite suit will lie or not, did not arise in that case. C.R.P.No.1417/2004 9 10. In **Dabur India Ltd. vs. K.R.Industries (AIR 2008 Supreme Court 3123)** , the Supreme Court held thus : "27. There cannot be any doubt whatsoever that the Parliament having inserted Sub Section (2) in Section 62 of the 1957 Act, the jurisdiction of the court thereunder 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 as been specifically 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 paragraph 13 of Dhodha House (supra) must be understood. 29. What then would be meant by a composite suit? A composite suit would not entitle a court to entertain a suit in respect C.R.P.No.1417/2004 10 whereof it has no jurisdiction, territorial or otherwise. Order II, 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 Dhoda House (supra) 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 Dhoda House (supra) but it never meant that two suits having different causes of actions can be clubbed together as a composite suit." 11. In the the Trade Marks Act, 1999 a provision similar to Section 62(2) of the Copyright Act, 1957 is available. However, the Trade Marks Act, 1999 came into force only on 15.9.2003. The suit was filed in the year 2001. Therefore, the Trade Marks Act, 1999 cannot be applied to the present case C.R.P.No.1417/2004 11 for the purpose of deciding the question of territorial jurisdiction. 12. It cannot be disputed that under Section 62(2) of the Copyright Act, the District Court, Kottayam has jurisdiction to try the suit in so far as it relates to the reliefs under the Copyright Act and incidental matters. It is also fairly clear that the reliefs prayed for by the plaintiff under the Trade and Merchandise Marks Act, 1958 would not be maintainable before the District Court, Kottayam as that court does not have the territorial jurisdiction to try the suit in respect of those reliefs. In the light of the decisions of the Supreme Court referred to above, it is for the plaintiff to suitably amend the plaint, so that the suit will be maintainable before the District Court, Kottayam. An opportunity to the plaintiff to amend the plaint cannot be denied in the facts and circumstances of the case. If an application for amendment is filed by the plaintiff, the court C.R.P.No.1417/2004 12 below shall consider the same and pass appropriate orders, after affording an opportunity of being heard to both parties. 13. I am not inclined to accept the contention raised by the learned counsel appearing for the plaintiff that the plea of lack of territorial jurisdiction was waived by the defendants. It is stated that the question of lack of jurisdiction was raised in the written statement. Section 20 of the Code of Civil Procedure is also referred to therein. The specific reasons as to why the court lacks territorial jurisdiction are not stated in the written statement, submits the counsel for the plaintiff. It is true that at the time when the application for temporary injunction and appeal therefrom were considered, the question of lack of territorial jurisdiction was not raised. But that does not mean that the defendants have waived the right to raise that contention in the written statement. Therefore, I reject the plea of waiver raised by the plaintiff. C.R.P.No.1417/2004 13 14. 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. **K.T.SANKARAN** **JUDGE** csl