R. Balasubramanian, J.@mdashIn the former application, this Court granted leave on 23.6.2004 under Clause 12 of the Letters Patent to the
plaintiff to file the suit before this Court. In the latter application, the defendants are before this Court to have the relief already granted revoked.
Heard the learned counsel on either side.
2. The plaintiff is before this on it''s original side complaining infringement of the plaintiff''s registered trade mark and for consequential reliefs. To
bring the suit before this Court, the plaintiff relies upon the following causes of action:
The plaintiff has it''s liaison office in India at Chennai and as they are carrying on business at Chennai within the jurisdiction of this Court, u/s
134(2) of the Trade Marks Act, 1999 and u/s 62(2) of the Copy Right Act, 1957, a suit can be instituted where the plaintiff actually or voluntarily
resides or carries on business; the plaintiff is located at and carries on business at Chennai within the jurisdiction of this Court and therefore entitled
to file the suit before this Court, the plaintiff''s trade mark is registered at the Trade Marks Registry at Chennai with Chennai as the appropriate
office of jurisdiction; thus, the situs of the plaintiff''s property in the trade mark is situated in Chennai and the infringement of the trade mark having
arisen within the jurisdiction of this Court, the material part of cause of action has arisen at Chennai.
The defendant in their application to revoke the leave would contend as hereunder:
The defendants are admittedly situated outside the territorial jurisdiction of this Court; the goods are not sold within the territorial jurisdiction of
this Court; the plaintiff''s liaison office is permitted to act as a communication channel between the head office in Italy and various parties in India;
such activities would not amount to the plaintiff actually or voluntarily residing or carrying on business or personally working for gain at the said
liaison office and such stand taken by the plaintiff is in violation of the provisions of the Foreign Exchange Management Act.
In addition to the above, the defendants would state before the court during the submissions that the Trade Marks Registry is situated at Mumbai
and the register of trade marks is available only there; therefore the registered trade mark is deemed to be situated only at Mumbai; as such the suit
can be filed only there; that plaintiff is a foreign company; it has to comply with Sections 592 to 597 of the Companies Act; since those provisions
have not been complied with, u/s 599 of the Companies Act the plaintiff would be disabled from bringing any action in a court of law.
3. Having regard to the arguments advanced before this Court as indicated above, let me now proceed to analyse the case. u/s 105 of the Trade
Marks Act, 1958, a suit for infringement of a registered trade mark shall not be instituted in any court inferior to a District Court having jurisdiction
to try the suit. The 1958 Act stands repealed by the Trade Marks Act, 1999. Therefore the new Act alone governs the situation. Section 105 in
the old Act stands re-drafted as Section 134(1) of the now Act. Sub-section (2) of Section 134 is a new provision. Under that sub-section, for the
purposes of Clauses (a) and (b) of Sub-section (1), a ""District Court having jurisdiction"" is stated to mean notwithstanding anything contained in the
CPC or any other law for the time being in force, to include a District Court within the local limits of whose jurisdiction, at the time of institution of
the suit or other proceedings, person instituting the suit or proceeding 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. Therefore u/s 134(2) of the new Act, notwithstanding anything contained in
the CPC or any other law for the time being in force, the plaintiff can move the District Court within whose jurisdiction he actually and voluntarily
resides or carries on business. In other words, under Sub-section (2) of Section 134 of the new Act, the plaintiff has option either to go before the
court within whose jurisdiction he is carrying on business - that being the sole cause of action or before any other court, where the cause of action
has arisen. Such an option was not available u/s 105 of the old Act. Arguments have been advanced by the learned counsel on either side the
plaintiff submitting that it is carrying on business within the jurisdiction of this Court while the defendants asserting the contra. Having regard to the
other points advanced by the learned counsel for the defendants for revoking the leave, I leave this question to be taken up for a decision at the
end.
4. The plaintiff mainly relies upon the situs of the trade mark as giving him a cause of action to move this Court. u/s 5 of the Trade Marks Act,
1999, hereinafter referred to as the ""1999 Act"", there shall be a Trade Marks Registry. There is no dispute that the head office of the Trade Marks
Registry, as specified by the Central Government, for the purpose of facilitating the registration of trade marks, is at Mumbai and there are various
branch offices of the Trade Marks Registry. u/s 6 of the ""1999 Act"", a record called the Register of Trade Marks shall be kept at the head office
of the Trade Marks Registry, wherein all the details relating to the registered trade mark shall be entered. Under Sub-section (6) of Section 6 of
the ""1999 Act"", a copy of the register and such of the other documents mentioned in Section 148 of the Act shall be kept in each branch office.
Under Rule 4(a)(ii) of the Trade Marks Rules, 2002, hereinafter referred to as the Rules, the appropriate office of the Trade Marks Registry for
the purpose of making an application for registration of a trade mark u/s 18, or for other purposes mentioned in Rule 4, shall be where there is no
entry in the register as to the principal place of business in India of the registered proprietor at the place mentioned in the address for service in
India as entered in the register. In other words, the address for service of the registered proprietor, if there is no entry in the register as to it''s
principal place of business in India, then the branch office of the Trade Marks Registry within which such address for service is situated would be
the appropriate office. It is not in dispute that the address for service of the plaintiff, when it moved for it''s registration of trade mark, is within the
jurisdiction of the trade marks branch office at Chennai and therefore it would be the appropriate office. Therefore, though the trade mark is
registered and reflected in the register maintained in the head office of the Trade Marks Registry at Mumbai, yet the Trade Marks Registry''s
branch office at Chennai would be the appropriate office for the purpose of Section 18 of the Trade Marks Act. As already stated, Section 18
deals with an application for registration of a trade mark. Reading Sections 5 and 6 of the ""1999 Act"" with Rule 4 of the Rules, there is no difficulty
at all in concluding that the situs of the trade mark involved in this case is at Chennai.
5. A Division Bench of this Court in the case S. B. S. Jayam and Co. Vs. Krishnamoorthi, Proprietor, Gopi Chemical Industries, held as follows:
A registered trade mark is a proprietary right and therefore it is property; though the head office is at Bombay, the branch office, including the one
at Madras have independent territorial jurisdiction regarding the powers conferred under the Act; therefore there can be no doubt that in respect of
the trade mark registered at the Madras office, the situs of the property in the mark is at Madras and therefore there can be a little doubt that the
alleged infringement is not only at a place where the defendant markets his goods but also where the plaintiff''s property itself is situated.
In AIR 1991 Mad 277 (Amrutanjan Limited v. Ashwin Fine Chemicals & Pharmaceuticals) this Court held that ""the registration of the trade mark
being at Madras office, the situs of the property in the registered trade mark is deemed to be at Madras"". In the judgment reported in 1999 P.T.C.
(19) 183 in the matter of Ramu Hosieries, a Division Bench of this Court held that ""having regard to the registration of the trade mark, which is
alleged to have been interfered with, with the Registrar of Trade Marks at Madras, it can be said that a part of the cause of action has arisen at
Madras"". The above referred to case laws make it abundantly clear that the situs of the trade mark would give a cause of action for the party
complaining infringement of the said trade mark to go before the court within whose jurisdiction the said situs is situated.
6. In my opinion, the jurisdiction of the court as prescribed u/s 105 of the old Act and u/s 134 of the new Act do not affect the right of a party
complaining infringement of a trade mark to go before the court within whose jurisdiction the situs of the trade mark is situated. Learned counsel
appearing for the defendants brought to my notice a book on ""Law of Trade Marks and Geographical Indications"" by K.C. Kailasam/Ramu
Vedaraman wherein the authors have stated as follows:
Thus in vies of the change in law and the general new legislative scheme, it would appear that the jurisdiction for filing a suit for infringement or
passing of u/s 134 is not to be based on or linked with the operative jurisdiction of the head office or branch offices.
The change brought about u/s 134(2) of the new Act is only giving an additional option to the party complaining of infringement of trademark to go
before a court within those jurisdiction he carries on business and such a change do not affect the existing rights available under the old Act namely,
u/s 105 of the old Act, which is imparie materia with Section 134(1) of the new Act. All the case laws referred to above are rendered in the
context of Section 105 of the old Act. Therefore I have no difficulty at all in holding that the situs of the trade mark (stated to be infringed), being
situated in the appropriate office of the Trade Marks Registry at Chennai, would give a cause of action for the plaintiff to come before this Court.
7. Learned counsel for the defendants strenuously contended that the plaintiff, having failed to comply with Sections 592 to 597 of the Companies
Act, cannot bring a suit before this Court, since the plaintiff is disabled from doing so u/s 599 of the Companies Act. Chapter XI of the Companies
Act is made applicable to foreign companies. u/s 592, foreign companies having a place of business within India, within 30 days of the
establishment of the place of business, deliver to the Registrar for registration certain documents and details. u/s 593, if any alteration is made or
occurs in any of the records mentioned therein, then also the company shall, within the prescribed time, deliver to the Registrar the particulars of
the alterations. Section 594 deals with accounts of a foreign company while Section 595 casts an obligation on the foreign company to give the
details mentioned in that section. Sections 596 and 597 speak about service on foreign company and the office where the documents have to be
delivered. Section 598 deals with penalties. Section 599 of the Companies Act provides that if any foreign company fails to comply with the
requirements of Sections 592 to 598 of the Companies Act, then such failure would not affect the validity of any contract, dealing or transaction,
entered into by the company or it''s liability to be sued in respect thereof. In the same breadth, Section 599 provides that in the event of such
failure, the company shall not be entitled to bring any suit claiming any set off, make any counter or institute any legal proceedings in respect of any
such contract, dealing or transaction until it has complied with the provisions of this part. The arguments of the learned counsel for the defendants is
that, since the plaintiff is not shown to have complied with Sections 592 to 598 of the Companies Act, the plaintiff is disabled from bringing the
present suit. I am unable to appreciate this contention. In my opinion, such a bar on the right of the company would come into operation only when
the company wants to bring a suit on a contract, dealing or transaction against the other person to the contract, dealing or transaction, until it has
complied with the provisions of Sections 592 to 598 of the Companies Act. In the same breadth, the company also would be disabled from
pleading a set off or counter claim when it faces a suit initiated by a party to the contract, dealing or transaction. On the facts of this case, the
plaintiff is not before this Court claiming any relief on a contract, dealing or transaction against the defendants. But on the other hand, the plaintiff is
only complaining about the infringement of it''s trade mark. Since I have decided against the defendants on the above two points, I am not inclined
to decide the other point i.e., whether the plaintiff is carrying on business within the jurisdiction of this Court and the same is left open.
8. In the light of my above referred to discussion, I find that leave has been properly granted and no case is made out for revoking the same. As a
result thereof, Appeal No. 3352/2004 is dismissed and leave already granted in Appeal No. 2306/2004 is confirmed.
