Allowed

M/S. Ace Productions Pvt. Ltd. v. Mr Sudhir Udayakanth S/O. Mr Udayakanth

Karnataka HC2 Jan 2013MFA/1029/2009

Case brief

AI extract

What is this about?

On appeal against granting a temporary injunction, the High Court held that the trial court erred in ignoring jurisdiction and ownership issues. The Court remanded the matter to examine if the suit satisfies territorial jurisdiction under Section 20 CPC and if the plaintiff has valid title to the unregistered trademark.

What did the court decide?

Order on IA No.1 dated 15.01.2009 set aside. Matter remanded for fresh consideration. Appeal allowed.

M/S. Ace Productions Pvt. Ltd. Vs Mr Sudhir… — Intellectual Property | Karnataka HC (2013)

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IN THE HIGH COURT OF KARNATAKA AT BANGALORE

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DATED THIS THE 2^ND DAY OF JANUARY 2013

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BEFORE

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THE HON’BLE MR. JUSTICE L. NARAYANA SWAMY

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MFA NO. 1029/2009 (IPR)

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BETWEEN

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M/S. ACE PRODUCTIONS PVT LTD 4TH FLOOR, KULSUM TERRACE 7 WALTON ROAD, COLABA

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MUMBAI-400 020, REP. BY DIRECTOR-A2.

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MS RAELL PADAMSEE AGED ABOUT 46 YEARS 4TH FLOOR, KULSUM TERRACE 7 WALTON ROAD, COLABA MUMBAI-400 020

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... APPELLANTS

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(BY SRI ADITYA SONDHI, ADVOCATE)

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AND

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MR SUDHIR UDAYAKANTH S/O. MR UDAYAKANTH AGED ABOUT 46 YEARS PROPRIETOR & CEO OF THE COMPANY M/S EDGE ACADEMY R/A NO.2, 5TH MAIN ROAD, KKR GARDENS MURGESHPALYAM, BANGALORE-560 017

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MR ALYQUE PADAMSEE AGED ABOUT 75 YEARS 4TH FLOOR, KULSUM TERRACE 7 WALTON ROAD, COLABA MUMBAI-400 020

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MS SABIRA MERCHANT AGED ABOUT 70 YEARS 4TH FLOOR, KULSUM TERRACE 7 WALTON ROAD, COLABA MUMBAI-400 020

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... RESPONDENTS (BY SRI RAJESH VENKAT, SRI RAHUL VERMA & SRI JAMSHED HAFIZ, ADVOCATES FOR R1; NOTICE TO R2 AND R3 ARE DISPENSED WITH V.O. DTD.06.02.2009)

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THIS MFA IS FILED U/ORDER 43 RULE 1 (r) OF CPC, AGAINST THE ORDER DATED 15.01.2009 PASSED ON IA NO.1 IN O.S.NO.25301/2008 ON THE FILE OF XVIII ADDITIONAL CITY CIVIL JUDGE, BANGALORE, CCH-10, ALLOWING IA NO.1 FILED U/ORDER 39 RULES 1 & 2 OF CPC FOR T.I.

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THIS MFA COMING ON FOR FINAL HEARING THIS DAY, THE COURT DELIVERED THE FOLLOWING:

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J U D G M E N T

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The appellants are the defendants 1 and 2 in OS No.25301/2008 on the file of the XVIII Additional City Civil Judge, Bangalore. By its order dated 15.01.2009 the Court below allowed the IA No.I filed under Order

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39 Rule 1 and 2 of CPC granting injunction against the defendants/appellants herein.

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Though the respondents served remained absent.

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The learned counsel appearing for the appellants submitted that, the Court below has committed an error in allowing IA No. I filed by the respondents seeking temporary injunction to restrain the appellants, primarily on the ground of jurisdiction, since the appellants, as described in the cause title of the suit, is carrying on the business at Mumbai, Maharashtra. Therefore, by referring Section 134 clause (c) of the Trade Mark Act 1989, he

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submits the suit should have been filed before the jurisdictional Court at Maharashtra for passing off. Since, the plaintiff though is owner of the trade mark, but no trade mark is registered and further the respondent is carrying on the business not within the jurisdiction of Bangalore, the suit is not filed before

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the jurisdictional Court, where the

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appellants/defendants are carrying on the business. For the said purpose the learned counsel referred Section 20 of CPC which contemplates that, “the suits to be instituted where the defendants reside or cause of action arose - squarely same to be interpreted that carrying on business. While disposing of IA No.1 by the Court below it has been referred that, the defendants have their business in Mumbai, but instead of rejecting the claim made in IA No.1, the Court below committed an error in granting the relief sought in the said application. It is stated that, the defendant is passing off the trade mark of the plaintiff in Mumbai and such being the admission and position of fact and law, the jurisdiction for which it is before the Court at Maharashtra not by the Court below.

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In the plaint averment, it has been stated that, the trade mark ‘EDGE ACADEMY’ itself is a

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proprietary firm having address at HSR Layout, Bangalore-34 and the plaintiff is the associate director of a private limited company. Since the said company was wound up by order of the jurisdictional Court, the company transferred all its rights in respect of trade mark ‘EDGE ACADEMY’ to the plaintiff by passing a resolution assigning its rights in favour of the plaintiff. Hence, the plaintiff is the owner. The learned counsel primarily disputing the plaintiff’s ownership of the wound up company, as no assignment or report has been produced to that effect and referred Section 2(b) of the Trade Mark Act which defines, ‘assignments means the assignment in writing by act of the parties concerned, except stating that his name has been assigned to the plaintiff’, no such legal requirements have been placed in support of the claim made by the plaintiff. In support of his submission the learned counsel referred the judgment of the Supreme Court reported in AIR 2006 SC 730,

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in which the Honb’le Supreme Court has expressed its concern in respect of the judgment reported in the case of Premier Distilleries Pvt. Ltd. v. Shashi Distilleries (2001 PTC 907 (mad)), wherein it has been held that, “While it may be convenient to the plaintiff to institute a suit in the Court where he may be later on be able to bring a suit for infringement of the trade mark, that convenience of a plaintiff is in no way relevant for deciding as to whether the cause of action for filing a suit for passing off can be said to have been arisen in a place where, the deceit alleged to have been practised by the defendant had in fact, not been practised within the jurisdiction of the Court in which the suit is brought”. Further, in para No.48 of the judgment it has been held that, “we have furthermore noticed hereinbefore that the advertisement appearing in a journal or newspapers by itself would not confer any jurisdiction on the Court, if it is otherwise did not have any”. The

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learned counsel submits that, the undisputed facts that the defendants/appellants are carrying on business in Maharashtra and the same has not been disputed by the plaintiff and the Court below also referred the same for the purpose of jurisdiction at Para No.10 at page No.12 of the order. Under these circumstances, the trial Court committed an error in allowing the IA No.1 filed by the plaintiff. The judgment reported in 2010 (42) PTC 480 (Karn.) has been placed reliance by the learned counsel, where the judgment referred supra in Premier Distilleries case has been followed and held at para No.16 of the judgment that, “there is no right in the person to assert infringement before registration is granted. This is clear from the fact that to maintain the suit for infringement, the cause of action would arise only if the trade mark is registered and the use of such ‘registered trade mark’ is infringed.

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It is further submitted by the learned counsel

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appearing for the defendants/appellants that, the plaintiff has not placed any materials to prove the registered ownership of a trade mark in order to file a suit, secondly the relief of passing off has been made before the Court below in which the respondent is not carrying on any business and in the light of the judgments referred supra the suit should have been filed within the jurisdiction of Court at Maharashtra. The defendants/appellants also have taken defence in the written statement filed before the Court below that on the ground of jurisdiction to dismiss the suit. Hence, the learned counsel submitted that, the order passed by the Court below is incorrect and it is liable to be set aside for want of jurisdiction.

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None appeared for the respondent.

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In order to examine the case of the

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defendants/appellants, I have gone through the plaint, where the plaintiff has stated that, the

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ownership of the trademark ‘EDGE ACADEMY’ originally belongs to a company which is situated in HSR Layout Bangalore, for which the plaintiff became the owner of the said trade mark. While such pleadings have been taken, the Court below should have examined the requirements of Section 2(b) of the Trade Mark Act. It is no where clear in the pleadings and the material available on file, as to whether the trade mark has been registered in the name of the plaintiff, though the registration is not required as mandatory, but in order to file a suit of this nature as it is held by this Court in the judgments referred at 2010 (42) PTC 480 (Karn.) that, the registration of trade mark is mandatory, but for the relief of passing off, the suit is to be filed where the defendants reside. The said position of law is very clear in view of Section 134(a)(b)(c) of the Trade Mark Act, which reads as under:

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(a) for the infringement of a registered trade mark;

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(b) relating to any right in a registered trade made; or

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(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff’s trade mark, whether registered or unregistered.

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Since, the trade mark is not registered in the

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instant case, the case of the plaintiff falls in clause 3 of Section 134. The section contemplates that, any suit for passing off is arising out of the use by the defendants on any trade mark which is identical with or similar to the plaintiff’s trade mark shall be instituted in any Court below having jurisdiction to try the suit. Since the plaintiff has not placed any materials to show that the trade mark is registered one and for which he should have filed a suit before the jurisdictional Court. The place of carrying on the business by the defendants as it is described by the plaintiff in the suit filed against him and also the Court below has referred the disputed position of a

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fact for which Section 20 of CPC comes into picture, which contemplates that, the suit instituted where the defendants carrying on the business in whose jurisdiction, the competent District Court is appropriate Court. Section 2(b) of the Trade Mark Act, assignments or reports to be placed the same is not coming out either in the pleadings or in any materials to that effect. Hence, the legal presumption would be that, the plaintiff is not a registered owner and further no assignment has been expressed by the wound up company in favour of the plaintiff.

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The injunction sought against the defendants

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is in respect of carrying on the business in Maharashtra for which the suit to be instituted there. Though the defendants have taken before the Court below the said contention which is referred at Para 10 Page 12 of the order, at the operative portion of the order, Court below has lost sight of.

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The Court below by referring the judgments

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reported in AIR 2008 SUPREME COURT 3132 PTC 348 Dabur India Ltd., v. K.R. Industries has held that, the suit is maintainable in respect of a composite suit in respect of both the Trade Mark Act and Copy right Act. Para 29 of the said judgment is relevant for further purpose where it has been held that, “A composite suit would not entitle a court to entertain a suit in respect whereof it has no jurisdiction, territorial or otherwise”. IA No.1 filed by the plaintiff under the Trade Mark Act for the relief of passing off, when such being the case it should not have been construed as composite suit. The suit is still pending and it is submitted that, yet the issues have not been framed. Under these circumstances and in the light of the judgments of the Supreme Court and also this Court referred supra, the trial Court is required to examine the requirements of Section 2(b) of Trade Mark Act and Section 20 of the

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CPC for the purpose of filing suit where the defendants reside or carrying on business and more particularly the Court below should examine the legal position by referring para No.29 of the judgment in the case of Dabur India and related case.

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Even considering the prayer in interlocutory applications, the Court primarily should examine, even in the absence of any objections or in the absence of any applications under Order 39 Rule 1 and 2 of CPC. It is also the case of the plaintiff that the respondent is carrying on the business in Maharashtra in the name of ‘EDGE ACADEMY’, for which the plaintiff claims to be the owner. In case Section 20 of the CPC or Section 134 of Trade Marks Act read with Section 2(b) of the Trade Marks Act the Court below has to decide primarily the jurisdiction, thereafter to consider the prayer made in the application. In the light of the above and after going through thoroughly the order passed by the Court

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below, I feel the primary aspects have not been given serious note by the Court below. Hence, I pass the following:

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ORDER

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The order passed on IA No.1 filed under Order 39, Rule 1 and 2 of CPC dated 15.01.2009 is set aside

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and matter is remanded for fresh consideration.

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Appeal is allowed.

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