2015(1) ALL MR 339
IN THE HIGH COURT OF JUDICATURE AT BOMBAY

S.J. KATHAWALA, J.

Ultratech Cement Limited & Anr. Vs. Dalmia Cement Bharat Limited

Notice of Motion (L) No.141 of 2014

27th August, 2014

Petitioner Counsel: Dr. VIRENDRA V. TULZAPURKAR, Mr. AMIT JAMSANDEKAR
Respondent Counsel: Mr. RAVI KADAM, Mr. V.R. DHOND, Ms. BIJAL TRIVEDI

(A) Trade Marks Act (1999), Ss.134(2), 28, 52, 53 - Civil P.C. (1908), O.7 R.11 - Infringement of trade mark - Entitlement to file suit against - Contention raised by defendant that u/S.134(2) word 'person' includes registered proprietor or registered user only, is irrelevant - Word used in explanation is 'includes' and therefore definition is inclusive.

It is law that averments in plaint are required to be treated as true. While considering application under O.7 R.11, Court cannot look into defence of defendant. Therefore contention of plaintiff is correct that defendant is not entitled to resort to provisions of O.7 R.11(d) on ground that entire plaint is liable to be rejected , because plaintiff no. 1 as licensee is not entitled to file suit for infringement.

Defendant's contention that plaintiff is attempting to form 'jurisdictional joint venture' cannot be accepted. Plaintiff no. 1 deals under registered trademark of plaintiff no. 2 in goods manufactured by it as licensee and does not deal with any third party goods at all.

Reference to provisions of Act requiring only registered proprietor or registered user being entitled to file suit for infringement is irrelevant. Act provides for filing of suit for infringement and also suit relating to registered trademark in court within jurisdiction of which plaintiff resides or carries business. Contention raised by defendant that under S.134(2), word 'person' includes registered proprietor or registered user only, is irrelevant. Word used in explanation is 'includes' and therefore definition is inclusive. Legislature has purposely not restricted meaning of word 'person' only to registered proprietor and registered user, otherwise Legislature would have used word 'means'. There is difference between word 'includes' and one which uses word 'means'.

2004 (3) SCC 688, 2006 (9) SCC 41 : 2006 (32) PTC 1(SC), 2004(5) ALL MR 360 (S.C.) Ref. to. [Para 16,23]

(B) Trade Marks Act (1999), S.134 - Civil P.C. (1908), S.20 - Letters Patent (Bombay), Cl.12 - Infringement of trade mark - Jurisdiction under S.134 - S.134 conferring jurisdiction makes only reference to place of plaintiff's business - S.134 confers jurisdiction in addition, independently of S.20 of CPC and Clause 12 of Letters Patent - Issue is required to be considered by reading provisions of S.134 of Act alone - Plaintiff can file suit at place where he carries business - This is without reference to cause of action - Defendant's interpretation of S.134 that cause of action must arise at corporate office of plaintiff for plaintiff to be able to file suit, is liable to be rejected.(Paras 25 to 29)

Cases Cited:
M/s. Patel Roadways Vs. M/s. Prasad Trading Company, 1991 (4) SCC 270 [Para 4,11,24,29]
Indian Performing Rights Society Vs. Sanjay Dalia & Anr., 2009 (39) PTC 1 [Para 5,29]
World Wide Wrestling Entertainment Vs. M/s. Reshma Collections & Ors., CS (OS) 1801/2014, I.A./14958-59/2013 [Para 5,29]
Archie Comic Publications Inc Vs. Purple Creations Pvt. Ltd., (2009) 39 PTC 1 (Del) DB [Para 5,31]
Sopan Sukhdeo Sable & Ors. Vs. Assistant Charity Commissioner & Ors., 2004(5) ALL MR 360 (S.C.)=(2004) 3 SCC 137 [Para 8,18]
Exphar SA & Anr. Vs. Eupharma Laboratories Ltd., (2004) 3 SCC 688 [Para 8,19,21]
Dhodha House Vs. S.K. Maingi, (2006) 9 SCC 41 : 2006 (32) PTC 1 (SC) [Para 8,21]
State of Kerala Vs. Mathai Verghese, AIR 1987 SC 33 [Para 9,25]
M/s. Arte Indiana Vs. M/s. P. Mittulaul Lalah & Sons, 1999(3) ALL MR 320=AIR 1999 Bom. 369 [Para 12,27,29]
Pratap Singh Vs. The Bank of America, 78 BLR 549 [Para 12,27,28,29]
Wipro Limited Vs. Oushadha Chandrika Ayurvedic India (P) Ltd. & Ors., 2008 (37) PTC 269 (Mad.) (DB) [Para 12,29]
UltraTech Cement Ltd. Vs. Shree Balaji Cement Industries, W.P./369/2013, Dt.18/01/2014 [Para 12]


JUDGMENT

JUDGMENT :- The Defendant has filed the present Notice of Motion asserting that the Plaint is liable to be rejected as "barred by law'' under Order VII Rule 11 (2) of the Code of Civil Procedure, 1908 (''Code'').

2. It is submitted on behalf of the Defendant that the present Suit is for infringement and passing off. Leave under Clause XIV of the Letters Patent has not been granted till date. Hence, in law, there is presently no action for passing off. The action before this Court is for infringement alone. It is submitted that jurisdiction for the action for infringement has not been invoked with reference to the 'cause of action'. In fact, it is an admitted position that no part of the cause of action (infringement or passing off) has arisen within the jurisdiction of this Court. The Plaintiffs have sought to sustain jurisdiction, in so far as the plea of infringement is concerned, solely by relying upon Section 134 of the Trademarks Act, 1999 ("the Act"). If this requirement is not met, the action must forthwith fail.

3. It is further submitted on behalf of the Defendant that admittedly it is the Plaintiff No. 2 who is the owner of the marks which are allegedly infringed by the Defendant and that the Plaintiff No.1 is a licensee/licensed user of the marks. Relying on Sections 28, 52 and 53 of the Act, it is submitted that the said Sections make it absolutely clear that only a registered proprietor or a registered user can institute/maintain an action for infringement. It is submitted that Section 53 of the Act in fact prohibits a permitted user (example Licensee) from instituting a suit for infringement. It is submitted that therefore the expression ''person instituting the suit'' means and must mean "a person, who under the Act, is entitled to institute a suit". The person instituting the suit must either be a registered proprietor or a registered user. It cannot include a permitted user (licensee). The Plaintiff No.1 therefore cannot be joined in this Suit. The joinder of Plaintiff No.1 is barred/prohibited in law. The present Suit could therefore have been maintained by Plaintiff No.2 alone. There was no legal necessity to join Plaintiff No.1. The Plaint therefore is an attempt to artificially provide jurisdiction by joining Plaintiff No. 1 to the action. The endeavor clearly appears to be an attempt to form what can be described as a "jurisdictional joint venture".

4. It is next submitted on behalf of the Defendant that the only question therefore which falls/remains for consideration is whether this Suit, by Plaintiff No.2, satisfies the test of Section 134 (2) of the Act, when no part of the cause of action has arisen within the jurisdiction of this Court. It is submitted that the Defendant sells its products only in the State of Karnataka. Assuming that Plaintiff No.2's allegations (on merits) are correct, the cause of action for infringement arises in Karnataka. Significantly both the Plaintiffs and in particular Plaintiff No.2 have a subordinate office within the jurisdiction of the Courts in Karnataka. Hence, in Karnataka not only has the cause of action (allegedly) arisen but both the second Plaintiff and the Defendant have a physical presence (situs) in the said State. However, the Plaintiffs purely by reason of the artful pleading in paragraph 44 of the Plaint that, "The 1st Plaintiff has its Registered Office in Mumbai and Plaintiff No.2 has its Corporate Office in Mumbai from where the Plaintiffs are carrying on business in Mumbai'', have wrongly contended that the Suit as framed, attracts Section 134 of the Act. Relying on Section 20 of the Code, it is submitted on behalf of the Defendant that assuming that paragraph 44 can be read as stating that Plaintiff No.2 carries on business from its Corporate Office and thus within the jurisdiction of this Court, this still does not attract Section 134 of the Act. It is submitted that the scope of the words ''carry on business'' in explanation to Section 20 of the Code in relation to Corporations having multiple offices fell for consideration before the Hon'ble Supreme Court of India in the case of M/s. Patel Roadways vs. M/s. Prasad Trading Company, 1991 (4) SCC 270. In that case, the Hon'ble Supreme Court interpreted the words ''carry on business'' (in relation to Corporations having multiple offices at different locations) to mean either the registered office or such subordinate office where the cause of action arises. It is submitted that this judgment is an authority for the proposition (ratio) that (for the purposes of invoking the jurisdiction of Courts) a Corporation having multiple offices ''carries on business'' only at (i) its registered office; or (ii) such subordinate office (s) where the cause of action arises and at no other place.

5. It is submitted on behalf of the Defendant that the Legislature intended to give the expression ''carries on business'' in Section 134 of the Act, the same meaning attributed to them in Section 20 of the Code. It is submitted that similarly, in so far as the expression ''carries on business'' is concerned, there is no radical departure in the scheme of Clause XII of the Letters Patent from Section 20 of the Code. In support of its contentions, the Defendant has relied on the decisions in the case of Indian Performing Rights Society vs. Sanjay Dalia and another, 2009 (39) PTC 1; World Wide Wrestling Entertainment vs. M/s. Reshma Collections and others, CS (OS) 1801/2014 and I.A. Nos. 14958-59/2013; Archie Comic Publications Inc vs. Purple Creations Pvt. Ltd., (2009) 39 PTC 1 (Del) DB. It is submitted that assuming that the order dated 27th January, 2009 in SLP No. 980 and 981/2009, filed before the Hon'ble Supreme Court in the matter of Indian Performing Rights Society (supra) amounts to a stay of the said judgment, it does not mean that the Supreme Court has set aside the same. This Court is therefore entitled to take the same view. It is submitted that paragraphs 7, 8 and 11 of the said decision be treated as submissions advanced by the Defendant before this Court.

6. It is further submitted on behalf of the Defendant that the construction put forth by the Plaintiffs will turn Section 134 of the Act into an instrument of oppression and/or abuse. Any registered proprietor will become entitled to pick and choose a Court of its choice anywhere across the length and breadth of this Country by the simple expedient of either joining to the action, a co-Plaintiff who has a presence within the jurisdiction of the chosen Court or at a place where the registered proprietor has a subordinate office (though the Defendant is not selling his goods and/or no part of the cause of action has arisen). It is submitted that the words ''a person instituting the suit" must therefore be given an informed construction and/or meaning. They cannot be made an instrument of oppression in the hands of the Corporations with multiple subordinate offices. Referring to the statement of objects and reasons of the Copyright Act, 1957, regarding Section 62 (2) of the Copyrights Act, it is submitted on behalf of the Defendant that clearly these provisions were inserted with a view to protect authors unable to file actions in far away places where the cause accrued and not for corporations or persons with considerable resources to drag defendants to far off forums. The ameliorative provisions of Section 134 of the Act cannot be misused to drag the defendants to a forum that is completely alien to the actual place where the cause of action, if any, has accrued. The Defendant has further submitted that each of the judgments cited by the Plaintiffs are either ex facie inapplicable or distinguishable or do not, when properly read and understood, support the case of the Plaintiffs. Some of the cases relied upon by the Plaintiff in fact support the case of the Defendant.

7. The Defendant has submitted that from their submissions the clear position that emerges is as under:

(i) Firstly, Plaintiff No.1 cannot be a Plaintiff in an infringement suit. The joinder of Plaintiff No.1 is not only not necessary to found/maintain an infringement action, but is expressly barred under Section 53 of the Act;

(ii) Secondly, independently thereof, the Suit as framed is barred under Section 134 of the Act. Plaintiff No.2 does not answer the description of ''carries on business'' within jurisdiction;

(iii) Thirdly, were the two Plaintiffs to independently institute individual suits, these suits would be barred by law, for the submissions advanced on behalf of the Defendant;

(iv) Fourthly, the bar cannot be unlawfully evaded by the expedient of artfully joining to one suit two Plaintiffs (each of whom cannot maintain an independent action); and

(v) Fifthly, the Plaintiffs are not remediless. They can, if they so desire, sue the Defendant in Courts where the cause of action has arisen and where they (the Plaintiffs) have a presence (situs).

It is therefore submitted on behalf of the Defendant that the present Suit is liable to be dismissed as 'barred by law' under Order VII Rule 11 (d) of the Code. It is therefore submitted that the Notice of Motion be made absolute with costs.

8. The Learned Senior Advocate appearing for the Plaintiffs has submitted that in an application taken out under Order VII Rule 11, the Court has to proceed only on the basis that the averments made in the Plaint are true and correct. The Court cannot look into the defence of the Defendant. It is submitted that therefore in the present case, the Defendant is not entitled to resort to the provisions of Order VII Rule 11 (d) of the Code on a specious plea that the entire Plaint is liable to be rejected because Plaintiff No.1 as a licensee is not entitled to file a suit for infringement. Relying on the decision of the Hon'ble Supreme Court in Sopan Sukhdeo Sable and others vs. Assistant Charity Commissioner and others, (2004) 3 SCC 137 : [2004(5) ALL MR 360 (S.C.)] (Paragraph 10) it is submitted that whilst considering an application under Order VII Rule 11 of the Code the averments in the Plaint are germane, and the pleas taken by the Defendant in the Written Statement would be wholly irrelevant at that stage. It is submitted that the use of the marks by the first Plaintiff is for and on behalf of the second Plaintiff and the goodwill and reputation of the marks by such use is owned by the second Plaintiff. Any use made by Plaintiff No. 1 enures to the benefit of Plaintiff No.2. In any case the Plaint cannot be rejected because the Suit for infringement is maintainable, inasmuch as the Plaintiff No. 2 is the registered proprietor and is entitled to file a suit for the relief for infringement. In any case the first Plaintiff is a proper and necessary party for the causes of action in the present Suit. Relying on the decision of the Hon'ble Supreme Court in the case of Exphar SA & Anr. Vs. Eupharma Laboratories Ltd., (2004) 3 SCC 688, it is submitted that the question that is required to be considered under Section 134 of the Act is whether any of the Plaintiffs, who is one of the parties having instituted the Suit, carries on business within the jurisdiction of this Court. The question whether one of such persons is not entitled to the reliefs claimed in the Suit is irrelevant in view of the categorical statement of law laid down in the said case namely that a party may not be entitled to the relief claimed in the Suit, but that is no reason for holding that it was not a person who had instituted the Suit within the meaning of Section 62 (2) of the Act. The Plaintiff No.1 deals as a licensee only in respect of goods manufactured by Plaintiff No.2 and none other. In view thereof the decision of the Hon'ble Supreme Court in the case of Dhodha House vs. S.K. Maingi, (2006) 9 SCC 41 has no application to the facts of this case. It is further submitted that reference to the provisions of the Act requiring only a registered proprietor or a registered user being entitled to file a suit for infringement is irrelevant. It is submitted that the contentions raised by the Defendant that under sub-Section (2) of Section 134 of the Act, the word 'person' includes the registered proprietor or the registered user only, is irrelevant. The word used in the explanation is ''includes'' and therefore the definition is inclusive. The Legislature has purposely not restricted the meaning of the word ''person'' only to registered proprietor and the registered user, otherwise the Legislature would have used the word ''means''. It is therefore submitted that the allegation of the Defendant that the Plaintiff is attempting to form a ''jurisdictional joint venture'' is totally unsustainable.

9. It is next submitted on behalf of the Plaintiffs that the Defendant's argument that this Court has no jurisdiction to entertain the Suit for infringement on the ground that no cause of action has arisen within the jurisdiction of this Court is also inapplicable. It is submitted that the submission of the Defendant that the explanation to Section 20 of the Code is required to be read into Section 134 of the Act is totally untenable, firstly on interpretation of Section 134 of the Act and secondly on the decisions of this Court. In view of the clear provisions of Section 134 of the Act, there is no question of interpreting the provisions of / considerations under Section 20 of the Code or even Clause XII of the Letters Patent while considering jurisdiction under Section 134 (2) of the Act. Section 134 creates/confers jurisdiction in addition to and independent of Section 20 of the Code and Clause XII of the Letters Patent. Therefore even if the requirement of Clause XII of the Letters Patent are not satisfied, or in a given case Section 20 of the Code is not satisfied, Section 134 (2) of the Act will still confer jurisdiction in its own turn. If the Plaintiff resides and/or carries on business within the jurisdiction of this Court, there is no further requirement in the said Section. The provisions of Section 20 of the Code are not applicable to this Court. Even if the said provisions were applicable, there is no question of the issue being decided by making reference to Section 20 of the Code, since there is no ambiguity in Section 134 of the Act. Relying on the decision of the Hon'ble Supreme Court in the case of State of Kerala vs. Mathai Verghese, AIR 1987 SC 33, it is submitted that it is impermissible to read any additional requirement in Section 134 of the Act.

10. It is submitted on behalf of the Plaintiffs that if the interpretation placed by the Defendant is accepted viz. to read the requirement of explanation (ii) to Section 20 of the Code into Section 134 of the Act, such interpretation will result in a hostile discrimination. The Defendant's interpretation will make a distinction between an individual carrying on business and a Corporation carrying on business, because in case of a Corporation, according to Defendant's interpretation, the Corporation as plaintiff will be required to file a suit only at a place where the cause of action has arisen. This will be discriminatory, unreasonable, and arbitrary as two similarly situated Plaintiffs are being treated differently.

11. It is further submitted on behalf of the Plaintiff that the submission of the Defendant viz. to read the requirement of Section 20 of the Code into Section 134 of the Act, also goes contrary to the clear intention of the Legislature. If the Legislature wanted to put any limitation in case of a Corporation, which wanted to file a suit as in Section 20 of the Code, then Section 134 of the Act would have been worded accordingly whilst repealing the Trade & Merchandise Act, 1958 by the Trade Marks Act, 1999. It is submitted that therefore the decision of the Hon'ble Supreme Court in Patel Roadways vs. Prasad Trading Co., (1991) 4 SCC 270 will not assist the Defendant's contention raised herein since the observations made in that case are required to be confined to a case under Section 20 of the Code which is not applicable to this Court. It is therefore submitted on behalf of the Plaintiffs that the Defendant's interpretation of Section 134 of the Act that the cause of action must arise at the corporate office of the Plaintiffs is liable to be rejected.

12. It is further submitted on behalf of the Plaintiffs that the law on this aspect has been settled by two decisions of the Division Bench of this Court in M/s. Arte Indiana vs. M/s. P. Mittulaul Lalah & Sons, AIR 1999 Bom. 369 : [1999(3) ALL MR 320] and Pratap Singh vs. The Bank of America, 78 BLR 549. It is submitted that the decisions of the Hon'ble Delhi High Court relied upon by the Defendant are contrary to the said binding decisions of this Court. It is further submitted that the Madras High Court in the case of Wipro Limited vs. Oushadha Chandrika Ayurvedic India (P) Ltd. and others, 2008 (37) PTC 269 (Mad.) (DB) has clearly held that by virtue of Section 120 of the Code, the provisions of Section 20 of the Code are not applicable as far as the Chartered High Court is concerned and the scope of Section 134 of the Act cannot be curtailed by reference to Section 20 of the Code or Clause XII of the Letters Patent. The Plaintiffs have also relied upon the decision of this Court in Petition No. 369 of 2013 in Suit No. 37 of 2014 - UltraTech Cement Ltd. vs. Shree Balaji Cement Industries in its judgment dated 18th January, 2014, wherein this Court has held that there is no requirement in Clause XIV of the Letters Patent that the cause of action must have arisen within the jurisdiction of this Court.

13. In conclusion, it is submitted on behalf of the Plaintiffs as follows:

(i) Once the Court has jurisdiction to try a suit for one of the causes of action, Clause XIV of the Letters Patent allows the joinder of another cause of action in that suit;

(ii) For the Court to have jurisdiction under Section 134 (2) of the Act, only the place of the Plaintiff's residence/business is sufficient, and it is not necessary that the cause of action should also have arisen at that place.

(iii) In this case, this Court has jurisdiction to try the Suit for infringement under Section 134 (2) of the Act as the Plaintiff carries on business within the territorial jurisdiction of this Court, and thus the requirements of Section 134 (2) of the Act are fully satisfied.

(iv) Cause of action or the place where it arose, it is not relevant under Section 134 (2) to determine the jurisdiction of this Court under Section 134 (2) of the Act.

(v) Even if the Plaintiff is a Corporation and even if the cause of action for infringement arose wholly outside the territorial jurisdiction of this Court, this Court would still have jurisdiction under Section 134 (2) of the Act, since the Plaintiffs carry on business within the local limits of this Court.

14. I have considered the submissions advanced on behalf of the Plaintiffs as well as the Defendant. I have also considered the decisions relied upon by the Learned Advocates for the parties.

15. Section 134 of the Act is reproduced hereunder:

"134. Suit for infringement, etc. to be instituted before District Court.

(1) No suit -

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

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

(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,

shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.

(2) For the purpose of clauses (a) and (b) of sub-section (1) a ''District court having jurisdiction'' shall notwithstanding anything contained in the 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 proceedings, the person instituting the suit or proceeding or where there are more than one such persons any of them, actually and voluntarily resides or carries or personally works for gain on business.

Explanation - For the purposes of sub-section (2) ''person'' includes the registered proprietor and the registered user.

16. The first submission raised by the Defendant in the present Notice of Motion is that the expression, ''person instituting the suit'' used in Section 134 (2) of the Act means a person who, under the Act, is entitled to institute a suit. Sections 28, 52 and 53 of the Act make it absolutely clear that only a registered proprietor or a registered user can institute/maintain an action for infringement. Section 53 of the Act in fact prohibits a permitted user (e.g. a licensee) from instituting a suit for infringement. To put it differently, the person instituting the suit must be either a registered proprietor or a registered user. It cannot include a permitted user (licensee). The Plaintiff No. 1 who is therefore a licensee cannot be joined as a Party to the Suit. The joinder of Plaintiff No.1 is barred/prohibited in law.

17. The clause pertaining to jurisdiction in the Plaint filed in the above Suit, is paragraph 44 and the averments made by the Plaintiffs in the said paragraph are reproduced hereunder:

"44. The Plaintiffs carries on business in Mumbai. The 1st Plaintiff has its registered office in Mumbai and the Plaintiff No.2 has its corporate office in Mumbai from where the Plaintiffs are carrying on business in Mumbai. The person who has instituted the suit is voluntarily residing in Mumbai and/or working for personal gain in Mumbai. Therefore, under Section 134 of the Trademarks Act, 1999 this Hon'ble Court has jurisdiction to try, entertain and dispose off the present suit in respect of the cause of action of infringement of the trade mark. The Defendant is carrying on business outside Mumbai and selling goods under the mark ''ULTRA"outside Mumbai therefore this Hon'ble Court has no jurisdiction to try, entertain and dispose off the present suit in respect of the cause of action of passing off. Therefore, the Plaintiffs are seeking Leave under Clause XIV of the Letters Patent against Defendant to combine the cause of action of passing off along with the cause of action of infringement and submit that with such leave granted this Hon'ble Court will have jurisdiction to try, entertain and dispose off the present suit in respect of the cause of action of passing off. A separate petition is being filed for obtaining Leave under Clause XIV of the Letters Patent.

18. It is a settled position in law that while considering the plea under Order VII Rule 11, the averments in the Plaint are required to be treated as true. While considering an application under Order VII Rule 11, the Court cannot look into the defence of the Defendant. The Court has to proceed on the footing that on the averments made in the Plaint, whether an order can be passed under Order VII Rule 11 of the Code. In Sopan Sukhdeo Sable and others vs. Assistant Charity Commissioner and others, [2004(5) ALL MR 360 (S.C.)] (supra) the Hon'ble Supreme Court has held that for the purposes of deciding an application under clauses (a) and (d) of Order VII Rule 11 of the Code, the averments in the Plaint are germane, the pleas taken by the Defendant in the Written Statement would be wholly irrelevant at that stage. Therefore, the Plaintiffs are correct in its contention that the Defendant is not entitled to resort to the provisions of Order VII Rule 11 (d) on the ground that the entire Plaint is liable to be rejected, because Plaintiff No. 1 as a licensee is not entitled to file a suit for infringement. It is an admitted position that Plaintiff No.2 is the registered proprietor and has permitted Plaintiff No.1 to use the marks. The Plaintiffs have stated in the Plaint that the first Plaintiff is a licensee and the use of the marks by the first Plaintiff is for and on behalf of the second Plaintiff and the goodwill and reputation of the marks by such use is owned by the second Plaintiff. Any use made by Plaintiff No. 1 enures to the benefit of Plaintiff No.2. The Plaint cannot be rejected because the Suit for infringement is in any event maintainable, inasmuch as Plaintiff No.2 is the registered proprietor and is entitled to file the Suit for the relief for infringement. In any case, the first Plaintiff is a proper and necessary party for the causes of action in the present Suit. Further the Suit is a composite suit for the causes of action of infringement and passing off and therefore the presence of the first Plaintiff to the Suit is proper and necessary.

19. The Defendant's contention that the Plaintiff No.1 has no right to file the suit is also incorrect in view of the decision of the Hon'ble Supreme Court in Exphar SA & Anr. Vs. Eupharma Laboratories Ltd., (2004) 3 SCC 688 relied upon by the Defendant, wherein the Hon'ble Supreme Court, while considering various alternate pleas in paragraph 14 clearly held that though Appellant No. 2 had not claimed ownership of copyright, or the trademark and that he will not be entitled to the relief claimed in the suit, but that was no reason for holding that it was not a person who had instituted the suit within the meaning of Section 62 (2) of the Copyright Act. Therefore, as correctly submitted by the Plaintiffs, the question that is required to be considered under Section 134 of the Act is whether any of the Plaintiffs who is one of the parties having instituted the Suit, carries on business within the jurisdiction of this Court. The question whether one of such persons is not entitled to the reliefs claimed in the Suit is irrelevant in view of the categorical statement of law laid down in the said case by the Hon'ble Supreme Court in paragraph 14 which is reproduced herein below for the sake of convenience:

"14. Even if the jurisdiction of the Court were restricted in the manner construed by the Division Bench, it is evident not only from the cause title but also from the body of the plaint that the appellant No.2 carries on business within the jurisdiction of the Delhi High Court. The appellant No. 2 is certainly ''a person instituting the suit''. The Division Bench went beyond the express words of the statute and negatived the jurisdiction of the Court because it found that the appellant No.2 had not claimed ownership of the copyright of the trademark infringement of which was claimed in the suit. The appellant No.2 may not be entitled to the relief claimed in the suit but that is no reason for holding that it was not a person who had instituted the suit within the meaning of Section 62 (2) of the Act."

20. The attempt on the part of the Defendant to distinguish the above judgment of the Hon'ble Supreme Court lends no assistance to the Defendants. Section 62 (2) of the Copyright Act, 1957, is on the same lines as Section 134 (2) of the Act and confers jurisdiction on Courts at the place where the Plaintiff resides or carries on business. Again, the aforesaid observations of the Supreme Court are independent of any other facts such as the suit having been filed for wrongful threat and Appellant No. 2 carrying on business in Delhi. The observations are clear, that if any person suing carries on business within the jurisdiction of a Court, then whether he is entitled to the reliefs or not, the Court will have jurisdiction if such person carries on business within the jurisdiction of such Court.

21. The Defendant's contention that the Plaintiff is attempting to form a ''jurisdictional joint venture'' cannot be accepted. As set out hereinabove, Plaintiff No.2 is the proprietor of the mark and Plaintiff No.1 which is the subsidiary of Plaintiff No.2 is a licensee. Plaintiff No.1 deal under the registered trademark of Plaintiff No.2 in goods manufactured by it as a licensee and does not deal with any third party goods at all. In view of the decision of the Hon'ble Supreme Court in the case of Exphar SA and another vs. Eupharma Laboratories Ltd. and another (supra), referred to hereinabove, the Hon'ble Supreme Court clearly negated a similar contention as raised by the Defendant in this matter and held that the fact that a licensee was a party to the suit and was carrying on business within the jurisdiction of the Court, there was no question of the contention of the Defendant in that case being accepted. The decision of the Hon'ble Supreme Court in the case of Dhodha House vs. S.K. Maingi, (2006) 9 SCC 41 : 2006 (32) PTC 1 (SC) at page 12 paragraph 49 states to the effect that the distributor must be the sole distributor and must not be dealing in the goods of some other party, has no application to the facts of this case. Plaintiff No.1 is not a distributor but is a licensee of Plaintiff No.2. Plaintiff No. 1 uses the mark in respect of goods manufactured by it under the license from Plaintiff No.2 and does not deal in any goods belonging to any other party. The decision in the case must be confined to the facts of that case and cannot be applied to the present case. The present case is clearly covered by the dicta of the Supreme Court in the case of Exphar SA and another (supra) and hence the Defendant's contention that the joinder of Plaintiff No.1 is barred by law is untenable. Further, and in any event, such a contention cannot be countenanced in an application under order VII Rule 11 of the Code. Plaintiff No.1 is a person instituting the Suit and therefore the Defendant's contention that first Plaintiff's presence should be ignored and only the presence of Plaintiff No.2 should be considered is totally devoid of merit. In any event, Plaintiff No.2 also carries on business in Mumbai. It is categorically stated in paragraph 44 of the Plaint that Plaintiff No. 1 has its Registered Office in Mumbai and Plaintiff No.2 has its Corporate Office in Mumbai from where the Plaintiffs are carrying on business in Mumbai. As already held herein while considering an application under Order VII Rule 11, this Court is required to proceed on the pleadings in the Plaint and not on any dispute raised by the Defendant as to the facts or averments made in the Plaint.

22. I am also in agreement with the submission advanced on behalf of the Plaintiffs that the reference to the provisions of the Act requiring only a registered proprietor or a registered user being entitled to file a suit for infringement is irrelevant. The Act provides for filing of a suit for infringement and also suit relating to the registered trademark in the court within the jurisdiction of which the Plaintiff resides or carries on business. For example, a suit for specific performance of an agreement to assign a registered trademark under an agreement by which the defendant has agreed to do so, can be filed by the plaintiff where the plaintiff carries on business. Such a suit is not a suit for infringement but a suit relating to trademark mentioned in Section 134 of the Act. The contention raised by the Defendant that under sub-section (2) of Section 134 of the Act, the word ''person'' includes the registered proprietor or the registered user only is irrelevant. The word used in the explanation is ''includes'' and therefore the definition is inclusive. The Legislature has purposely not restricted the meaning of the word ''person'' only to a registered proprietor and registered user, otherwise the Legislature would have used the word ''means''. There is a difference between the scope of the definition which uses the word 'includes' and one which uses the word 'means'.

23. In view of the aforestated reasons/discussion, I am of the view that this Court in the above Notice of Motion filed under Order VII Rule 11 (d) cannot hold that the Plaintiff No. 1 cannot be joined as a Party to the present Suit or that the joinder of Plaintiff No.1 is bad/barred/prohibited in law.

24. The next contention of the Defendant is that Plaintiff No.2 does not answer the description of ''carries on business'' within jurisdiction and therefore independently of its first submission, the Suit is barred under Section 134 of the Act. In support of this contention, the Defendant has very heavily relied on the decision of the Hon'ble Supreme Court in the case of Patel Roadways (supra) wherein the Hon'ble Supreme Court interpreted the words ''carry on business'' in relation to Corporations having multiple offices at different locations to mean either the registered office or such subordinate office where the cause of action arose. The Defendant has strongly urged that the limitation contained in explanation (2) to Section 20 ought to be read whilst construing Section 134 of the Act.

25. Section 20 of the Code reads thus:

"20. Other suits to be instituted where Defendant resides or cause of action arises. Subject to the limitations aforesaid, every suit shall be instituted in Court within the local limits of whose jurisdiction.

(a) The Defendant, or each of the Defendant where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business or personally works for gain; or

(b) Any of the Defendant, where there are more than one, at the time of the commencement of the suit actually and voluntarily resides, or carries on business, or personally works for gain, provided that in such case either the leave of the Court is given, or the Defendant who do not reside, or carry on business, or personally work for gain, as aforesaid, acquiesce in such institution; or

(c) The cause of action, wholly or in part arises.

Explanation - A Corporation shall be deemed to carry on business at its sole or principal office in 3 (India) or, in respect of any cause of action arising at any place where it has also a subordinate office, at such place.

Section 20 makes a reference only to the Defendant and the explanation also refers to a Corporation which is the Defendant to the Suit. Section 20 of the Code and also Clause XII of the Letters Patent confer jurisdiction on a Court at a place only with reference to the Defendant's location / situs, and place of accrual of the cause of action. Section 134 of the Act which is a special provision conferring jurisdiction makes no reference to the Defendant or his location/situs nor to any cause of action at all or the place of the cause of action. The only reference is to the place of the Plaintiff's residence/business. Section 134 creates/confers jurisdiction in addition and independently of Section 20 of the Code and Clause XII of the Letters Patent. Therefore even if the requirement of Clause XII of the Letters Parent is not satisfied or in a given case Section 20 of the Code is not satisfied, Section 134 (2) will still confer jurisdiction on its own terms. If the Plaintiff resides and/or carries on business within the jurisdiction of this Court, there is no further requirement in the said Section. Though the provisions of Section 20 of the Code are not applicable to this Court, assuming that the said provisions were applicable, there is no question of the issue being decided by making a reference to Section 20 of the Code. The issue is required to be considered by reading the provisions of Section 134 of the Act alone, where there is no such limitation as is contained in explanation (2) to Section 20 of the Code. It is a settled position of law that no words can be added to the provisions of a statute. There is no ambiguity in Section 134 of the Act. Relying on the decision of the Hon'ble Supreme Court in the case of State of Kerala vs. Mathai Verghese, AIR 1987 SC 33 it is correctly submitted that it is impermissible to read any additional requirement in Section 134 of the Act. Therefore in view of the clear provisions of Section 134 of the Act, there is no question of interpreting the provisions of /considerations under Section 20 of the Code or even Clause XII of the Letters Patent while considering jurisdiction under Section 134 (2) of the Act.

26. I am also in agreement with the submission of the Plaintiffs that such a requirement goes contrary to the clear intention of the Legislature. The Trade & Merchandise Act, 1958 which was repealed by the Act did not contain any such provision. Infringement suits were required to be filed according to the provision of Clause XII or Section 20 of the Code (whichever applied) and this meant that the suit could be filed where the cause of action arose or where the Defendant resided or carried on business. Neither Clause XII nor Section 20 of the Code allows a suit to be filed where the Plaintiff resides or carries on business. The Parliament made a deliberate and intentional departure from that position by legislating Section 134 of the Act. The whole object of incorporating the changes in Section 134 of the Act was to allow the Plaintiff to file a suit at a place where the Plaintiff resides or carries on business without any reference to the place of business of the Defendant or to the place where the cause of action arose. It is not the argument of the Plaintiff that the place where the goods of the Plaintiff are sold, will be the place having jurisdiction. The availability of goods in a retail shop is different from the Plaintiff carrying on business. The Plaintiff carries on business where it has an office and direct nexus to the place. The explanation to Section 20 of the Code was on the statute when the Act was enacted. Thus if the Legislature wanted to put any limitation in case of a Corporation, which wanted to file a suit as in Section 20 of the Code, then Section 134 of the Act could and would have been worded accordingly. This has not happened. Thus the intention of legislature is clear that any Plaintiff, whether an individual or a partnership or a corporation can file a suit at any place where he/it carries on business and this is without any reference to any cause of action or the place where the cause of action arises. It is therefore submitted that the Defendant's interpretation of Section 134 of the Act, that the cause of action must arise at the Corporate Office of the Plaintiff, i.e. Mumbai, for the Plaintiff to be able to file this Suit in this Court, is liable to be rejected.

27. Again, as far as this Court is concerned as correctly submitted on behalf of the Plaintiffs, the law on this aspect has been settled by two decisions of the Division Bench of this Court viz. M/s. Arte Indiana vs. M/s.. P. Mittulaul Lalah & Sons, [1999(3) ALL MR 320] (supra) and Pratap Singh vs. The Bank of America (supra). In the case of M/s. Arte Indiana, an argument was advanced that the cause of action of infringement of copyright had not arisen within the jurisdiction of this Court where the plaintiff in that case claimed to be carrying on business. In Paragraph 6, this Court rejected the said contention by holding that Clause XIV of the Letters Patent does not require that one of the causes of action should have arisen within the jurisdiction of this Court. Paragraph 6 of the said judgment is reproduced hereunder:

"6. In our view, when Clause XIV does not require that one of the causes of action should have arisen within the jurisdiction of this Court, it would not be permissible to read such a requirement in that clause. In this regard, reference may be made to the decision of the Supreme Court in State of Kerala vs. Mathai Verghese & Ors. The Apex Court was considering the interpretation placed on Section 489 of the Indian Penal Code by the High Court. The High Court had interpreted the words ''any currency note'' in the said section as ''Indian currency note''. While reversing the decision of the High Court, the Supreme Court held that when the legislature does not speak of currency notes of India, the Court interpreting the relevant provisions of law cannot substitute the expression ''Indian currency note'' in place of the expression ''currency note'' as has been done by the High Court.

28. The question whether explanation to Section 20 of the Code can be read into Clause XII of Letters Patent, came up for consideration before the Division Bench of this Court in the case of Pratap Singh vs. The Bank of America (supra). In that case, a suit was filed against a foreign Corporation on the sole ground that it had a branch office in Mumbai. Admittedly, no cause of action had arisen in the territorial jurisdiction of this Court. The Defendant raised the plea of jurisdiction saying that no part of the cause of action has arisen within the jurisdiction of this Court. The learned trial Judge accepted the said contention and held that the Court had no jurisdiction. The Division Bench reversed the said decision and allowed the Appeal by holding that there is no such requirement in Clause XII. At page 567, the Division Bench after considering Section 20 of the Code and its explanation noted that the further provision in the explanation which is found in Section 20 of the Code is not found in Clause XII of the Letters Patent. At page 570, the Court observed as follows:

"It would appear to us that in the circumstances, the question whether or not this Court has jurisdiction to entertain and try this suit would be required to be governed by considering whether it falls within the limits of jurisdiction prescribed by clause 12 of the Letters Patent....."

The Division Bench further held that the plain words of Clause XII of the Letters Patent cannot be restricted or limited by reference to principles of private international law or similar considerations. In the context of the argument that the provisions of principles of private international law required a limitation to be read in Clause XII, the Division Bench held at page 571 that if the provisions of domestic law are clear and unambiguous, then the Court must give effect to it and cannot moderate or bend legislation to render it in conformity with what the Court considers the proper rule of international law. It observed:"

"The question then arises for consideration viz. whether the defendant is liable to be sued in respect of the cause of action arising wholly outside India and for this the plaintiff would be entitled in our opinion only to rely on the third category which we have enunciated whilst analyzing Clause 12 of the Letters Patent and that part of it viz. that the suit may be filed on the Original (Side of this High Court since defendant carries on business within the limits of the ordinary original civil jurisdiction of this High Court."

The Division Bench set out the legal position at page 576 and in sub-paragraph Nos. 3, 4 and 5 held as follows:

"3. The word 'defendant' occurring in Clause 12 of the Letters Patent or in Section 20 of the Code of Civil Procedure must be given its proper meaning and would include within its compass both natural and artificial persons i.e. living beings as well as corporations and no distinction is made in law between corporations as are incorporated in India and corporations as are incorporated outside India i.e. foreign corporations.

4. Under the last part of Clause 12 of the Letters Patent a suit can be brought on the Original Side of this Court if the defendant at the time of institution of the suit dwells or carries on business or personally works for gain within the limits of such original jurisdiction of this High Court. For consideration of jurisdiction under this head, the consideration whether the cause of action has accrued wholly or in part within or without the limits of the said jurisdiction is wholly irrelevant.

5. In this part of Clause 12 of the Letters Patent a clear distinction has been made between carrying on of business and working for gain. In the latter case the legislative requirement is that the defendant should personally work for gain, whereas no such requirement is postulated for the carrying on of business. It means therefore that the defendant may carry on business himself or through an agent or agents."

The Division Bench in sub-paragraph No. 7 at page 577 observed as follows:

''All that is required is whether within the limits of jurisdiction of this Court the Defendant by itself or through its agent is carrying on all or some business which he does."

The Division Bench at page 578 further observed as follows:

"In the facts and circumstances of the case, the express words of Clause 12 of the Letters Patent confer jurisdiction on this Court and this jurisdiction cannot be refused to be exercised on the basis that any decree passed pursuant to this jurisdiction may not be given effect to or recognised as valid by foreign Courts. In the result the decision of the learned single Judge answering the preliminary issue in the negative and against the plaintiff-appellant is required to be set aside. In our view the said preliminary issue has to be answered in the affirmative. It is accordingly so answered and it is held that this Court has jurisdiction to entertain and try the suit."

It is clear from the aforesaid judgment that there is no requirement of Clause XII that the cause of action must have arisen at the place where the Defendant carries on business. Only the Defendant carrying on business at the place is sufficient, even if the cause of action has arisen wholly elsewhere. And this position applies to individuals and corporations alike. Similarly, under Section 134 of the Act, there is no requirement of any cause of action also being required to arise at the place where the suit is filed. Only the place of the Plaintiff carrying on business is relevant and if the Plaintiff, whether an individual or a Corporation, carries on business at a particular place, Section 134 (2) vests jurisdiction in the Court at that place even if the entire cause of action has arisen elsewhere. Cause of action and the place at which it has arisen is wholly irrelevant under Section 134 of the Act. The distinction sought to be canvassed by the Defendant qua the aforesaid judgment is not at all helpful to hold otherwise.

29. The Defendant has relied on the decision in IPRS vs. Sanjay Dalia (supra). However, the said decision cited by the Defendant during the argument is stayed by the Apex Court vide its order dated 27th January, 2009 in SLP No. 980 and 981 of 2009. The Defendant has further argued that though this judgement is stayed, this Court is entitled to take the same view as has been held in the case of World Wide Wrestling Entertainment vs. Reshma Collections and others (supra). The same view cannot be taken because this Court is a Chartered High Court and by virtue of the provisions of Section 120 of the Code, the provisions of Section 20 of the Code are not applicable to this Court. Again, the view expressed in IPRS vs. Sanjay Dalia (supra) is contrary to the binding decisions of this Court viz. the two decisions referred to hereinabove viz. M/s. Arte Indiana, [1999(3) ALL MR 320] (supra) and Pratap Singh (supra). In any event, in the said decision itself in paragraph 7 at page Nos. 5 and 6, it is noted that Section 134 of the Act is not intended to allow the Plaintiff to choose a territorial forum which is not convenient to either of the parties as is demonstrated by the case in hand. In the instant case, it cannot be said that the forum viz. this Court is inconvenient to the Plaintiffs themselves. The Madras High Court in Wipro Ltd. vs. Oushadha Chandrika Ayurvedic India (P) Ltd. and others (supra) has clearly held that by virtue of Section 120 of the Code, the provisions of Section 20 of the Code are not applicable as far as the Chartered High Court is concerned and the scope of Section 134 of the Act cannot be curtailed by reference to Section 20 of the Code or Clause XII of the Letters Patent. Paragraph 14 of the said judgment reads as follows:

"14. It is, thus, seen that Section 62 of the Copyright Act and Section 134 of the Trade Marks Act prescribe an additional ground for attracting the jurisdiction of a Court over and above the normal ground, as laid down in Section 20 of the C.P.C. In other words, a special right is conferred on the proprietor of the registered trade mark to institute a suit for infringement of any trade mark or copyright in the district within whose jurisdiction he resides or carries on business. The provision contained in non-obstante clause by using the phrase "notwithstanding anything contained in the C.P.C, 1908 (5 of 1908) or any other law for the time being in force" is made with a view to give a overriding effect to the said provision. It is equivalent to saying that the provision would hold the field notwithstanding anything contained in the C.P.C or any other law for the time being force. Moreover, by virtue of Section 120 of the C.P.C, the provisions of Section 20 are not applicable as far as High Court is concerned. Therefore, the scope of this section cannot be curtailed by reference to Section 20 of the C.P.C or Clause-12 of the Letters Patent. Therefore, in a case of infringement of trade mark or copyright covered by Section 134(2) of the Trade Marks Act or Section 62(2) of the Copyright Act, the question of plaintiff taking prior leave under Clause 12 of the Letters Patent does not arise and the plaintiff need not take leave of the Court under Clause 12 of the Letters Patent even if only a part of the cause of action or no part of the cause of action arose within the jurisdiction of this Court, if the plaintiff ordinarily resides or carries on business within the jurisdiction of the Court.

30. I am in complete agreement with the view of the Madras High Court Division Bench judgment and I am not inclined to accept any of the views canvassed by the Defendant qua the said judgment.

31. The second decision relied upon by the Defendant in the case of Archie Comic Publications Inc. (Supra) is not applicable to the facts of the case. Apart from the fact that the said case pertained to an application for amendment of the plaint, for the reasons mentioned above, the said decision also is contrary to the binding decisions of this Court.

32. In the above circumstances, I hold as follows:

(i) For the Court to have jurisdiction under Section 134 (2) of the Act, only the place of the Plaintiff's residence/business is sufficient, and it is not necessary that the cause of action should also have arisen at that place.

(ii) In this case, this Court has jurisdiction to try the Suit for infringement under Section 134 (2) of the Act as the Plaintiff carries on business within the territorial jurisdiction of this Court, and thus the requirements of Section 134 (2) of the Act are fully satisfied.

(iii) The place of accrual of cause of action is not relevant to determine the jurisdiction of this Court under Section 134 (2) of the Act.

(iv) Even if the Plaintiff is a Corporation and even if the cause of action for infringement arose wholly outside the territorial jurisdiction of this Court, this Court would still have jurisdiction under Section 134 (2) of the Act, since the Plaintiffs carry on business within the local limits of this Court.

33. The above Notice of Motion is therefore dismissed with no order as to costs.

Ordered accordingly.