Petition No. 885 of 2011,Suit No. 2846 of 2011

13th February, 2014

Petitioner Counsel: Mr. H.W. KANE, Mr. HIREN KAMOD, W.S. KANE
Respondent Counsel: Mr. ROHIT KAPADIA, Mr. S.J. KHERA

Cases Cited:
Gold Seal Engineering Product Vs. Hindustan Manufacturers & Another, AIR 1992 Bom 144 [Para 4,21]
Dhodha House & Patel Field Marshal Industries Vs. S.K. Maingi & P.M. Diesel Ltd., 2006 (32) PTC 1 (SC) [Para 4,19]
Dabar Industries Vs. K.R. Industries, AIR 2008 SC 3123 [Para 5,19]
The Jay Engineering Works Ltd. Vs. Ramesh Aggarwal, 2006 (33) PTC 561 Del. [Para 5,19]
Indian Performing Rights Society Vs. Sanjay Dalia, LAWS (DLH) 2008-11-98 [Para 5,19]
Orissa Oil Industries Ltd. Vs. Bihar State Forest Development Corporation Ltd., AIR 1979 Cal 271 [Para 5,20]
John George Dobson Vs. The Krishna Mills Ltd., 12 Bom. L.R. 988 [Para 5,22]
Kusum Ingots & Alloys Ltd. Vs. Union of India and another, (2004) 6 SCC 254 [Para 5]
Kunj Behari Das Vs. Chanchala Das, AIR 1966 Orissa 24 [Para 5]
Kabushiki Kaisha Toshiba Vs. Tosiba Applicants & Ors., AIR 2009 SC 892 [Para 5]
State of Bihar Vs. Oriental Coal Co. Ltd., AIR 1972 SC 378 [Para 5]
Maganlal Kuberdas Kapadia Vs. Themis Chemicals Ltd. and M/s. Orgachem Enterprises & Ors., Appeal No. 332 of 1991 dated 22nd April, 1991 [Para 5]
Mohan Meakin Ltd. Vs. Pravara Sahkari Sakhar Karkhana, 1987 Mh.L.J. 503. [Para 6,14]
M/s. Arte Indiana Vs. M/s. P. Mittulaul Lalah & Sons, AIR 1999 Bom. 369 [Para 7,16,21]
Jagdish Gopal Kamath and others Vs. Lime and Chilli Hospitality Services P. Ltd., 2013 (4)Mh. L.J. 627 [Para 9,23,21]
Wipro Limited and another Vs. Oushadha Chandrika Ayurvedic India (P) Limited and others, 2008 (37) PTC 269 (Mad.) (DB) [Para 17]
Ex Phar SA Vs. Eupharma Laboratories Ltd., AIR 2004 SC 1682 [Para 17]

JUDGMENT

JUDGMENT :- The Petitioner (Original Plaintiff) has filed the above Suit inter alia for an order of perpetual injunction restraining the Respondent (Original Defendant) from infringing the registered trademarks bearing Nos. 436744 and/or 1521743 both in Class 32. Along with the Plaint, the Plaintiff filed the above Petition No. 885 of 2011 seeking leave of this Court under Clause XIV of the Letters Patent, Bombay, to combine the cause of action for passing off with cause of action for infringement of trademark. Prayer clause (a) of the above Petition is reproduced herein below:

(a) That leave be granted to the Petitioner under Clause XIV of the Letters Patent of this Court to join together the cause of action for passing off with the cause of action of infringement of trademark and for a combined trial of the said issues in the above Suit against the Respondents".

For the sake of convenience, the Petitioner shall hereinafter be referred to as "the Plaintiff" and the Respondent as "the Defendant".

2. The Defendant took a preliminary objection that this Court has no jurisdiction to try the present Suit and the Suit is also barred by the Law of Limitation. In view thereof, on 13th March, 2013, this Court framed the following two issues under Section 9A of the Code of Civil Procedure, 1908:

"(a) Whether this Court has jurisdiction to try and entertain the above Suit?

(b) Whether the Suit is barred by the Law of Limitation?"

The Plaintiff was directed to file its affidavit of evidence, affidavit of documents and compilation of documents, which they did. However, the Learned Senior Advocate appearing for the Defendant contended that the affidavit of documents so directed to be filed by this Court by the Plaintiff must make a full disclosure on oath of all the documents which are found in the Plaintiff's possession or power relating to any matter in question in the Suit. On the other hand, the Plaintiff contended that such disclosure be limited to the documents only in relation to the preliminary issues viz. jurisdiction and limitation. The Learned Advocates for the parties were therefore heard in the matter and by a detailed order dated 22nd May, 2013, this Court rejected the contention of the Defendant by inter alia holding as follows:

"15. It is difficult to see how the Defendant can claim to be prejudiced or impaired in his right to seek complete candour or full and complete disclosure of documents, if such discovery is not ordered at this stage. All documents relevant to the preliminary issue will have to be discovered, and evidence led at this stage. If the trial has to proceed to the next stage, the Plaintiff will have to discover, and lead evidence of all other documents which are relevant to the merits of the case, and the Defendant will definitely have the advantage of having an affidavit of such documents before the trial of the other issues, after they are framed."

3. Thereafter the Learned Senior Advocate appearing for the Defendant cross-examined the Plaintiff's witness and the matter was placed for arguments on 7th October, 2013. At the time of oral arguments, the Learned Senior Advocate appearing for the Defendant submitted that he is not pressing the issue of limitation. The Learned Senior Advocate for the Defendant while dealing with the issue of jurisdiction of this Court to try and entertain this Suit so far as it relates to infringement of trade marks, which was framed by the Court under Section 9A of the Code of Civil Procedure, 1908, conceded that this Court has jurisdiction to try and entertain the Suit for infringement of the Plaintiff's registered trade marks. However, he submitted that this Court does not have jurisdiction to try the issue of passing off.

4. It is further submitted on behalf of the Defendant that as the Plaintiff "has attempted to raise all the three issues in one Suit", the Plaint filed by the Petitioner is liable to be rejected as this Court does not have jurisdiction to try and entertain the above Suit and no cause of action therefore has arisen for the said Suit. It is further submitted on behalf of the Defendant that in the present case since the original jurisdiction for trying and entertaining the Suit in respect of the cause of action for infringement of the Plaintiff's registered trade mark has not been conferred upon this Court under Clause XII of the Letters Patent, Bombay, but under Section 134 of the Trade Marks Act, 1999 ("the Act"), this Court cannot combine the cause of action for passing off with the cause of action for infringement of trade mark under Clause XIV of the Letters Patent, Bombay. It is submitted that this Court will have the power to combine the two causes of action under Clause XIV of the Letters Patent, Bombay, only when this Court is exercising its Ordinary Original Civil Jurisdiction to try and entertain one cause of action under Clause XII of the Letters Patent, Bombay. It is further submitted that Clause XIV of the Letters Patent being any other law for the time being in force is excluded by the operation of the non-obstante clause in Section 134 (2) of the Act. It is submitted that the provisions of Clause XIV of the Letters Patent are not applicable under the Act. It is therefore submitted that the application of the Plaintiff seeking leave under Clause XIV of the Letters Patent, Bombay, be dismissed. In support of his submission, the Learned Senior Advocate appearing for the Defendant relied on the following judgments:

(i) Gold Seal Engineering Product vs. Hindustan Manufacturers & Another AIR 1992 Bom 144;

(ii) Dhodha House & Patel Field Marshal Industries vs. S.K. Maingi & P.M. Diesel Ltd.2006 (32) PTC 1 (SC).

5. Mr. Khera, the Advocate on record for the Defendant has on 13th December, 2013, filed written submissions of more than 300 pages and has recorded submissions therein which were not at all made at the time of oral arguments by the Learned Senior Advocate appearing for the Defendant. In the written submissions, it is alleged that the Plaintiff is guilty of delay, laches and acquiescence; the Defendant is the honest concurrent user of the mark PRESTIGE 5000 and the numeral 5000 is common to the trade and is descriptive. In the written submissions for the first time the following decisions of the Hon'ble Supreme Court and other High Courts are relied upon:

(i) Dabar Industries vs. K.R. Industries AIR 2008 SC 3123;

(ii) The Jay Engineering Works Ltd. vs. Ramesh Aggarwal 2006 (33) PTC 561 Del.

(iii) Indian Performing Rights Society vs. Sanjay Dalia LAWS (DLH) 2008-11-98;

(iv) Orissa Oil Industries Ltd. vs. Bihar State Forest Development Corporation Ltd. AIR 1979 Cal 271;

(v) John George Dobson vs. The Krishna Mills Ltd.12 Bom. L.R. 988;

(vi) Kusum Ingots & Alloys Ltd. vs. Union of India and another (2004) 6 SCC 254;

(vii) Kunj Behari Das vs. Chanchala Das AIR 1966 Orissa 24;

(viii) Kabushiki Kaisha Toshiba vs. Tosiba Applicants & Ors. AIR 2009 SC 892

(ix) State of Bihar vs. Oriental Coal Co. Ltd.AIR 1972 SC 378; and

(x) Maganlal Kuberdas Kapadia vs. Themis Chemicals Ltd. and M/s. Orgachem Enterprises & Ors. Unreported judgment of Bombay High Court in Appeal No. 332 of 1991 dated 22nd April, 1991.

6. The Learned Advocate appearing on behalf of the Plaintiff denied and disputed the submissions advanced on behalf of the Defendant. He has submitted that at the time of institution of the Suit, the Plaintiff's registered office was situated within the local limits of the jurisdiction of this Court and this Court being the District Court for the purpose of Section 134 of the Act has original jurisdiction to try and entertain the Suit in respect of the cause of action for infringement. In support of his contention, he has relied on the decision of the Division Bench of this Court in the case of Mohan Meakin Ltd. vs. Pravara Sahkari Sakhar Karkhana 1987 Mh.L.J. 503.

7. The Learned Advocate appearing for the Plaintiff has further submitted that Clause XIV of the Letters Patent, Bombay, does not contemplate accrual of the cause of action within the territorial jurisdiction of this Court to permit joinder of causes of action. It is therefore submitted that to combine two causes of action under Clause XIV of the Letters Patent, Bombay, this Court need not have territorial jurisdiction to try and entertain the first cause of action under Clause XII of the Letters Patent, Bombay. In support of this submission, the Learned Advocate appearing for the Plaintiff has relied on the decision of the Division Bench of this Court in the case of M/s. Arte Indiana vs. M/s. P. Mittulaul Lalah & Sons AIR 1999 Bom. 369.

8. The Learned Advocate appearing for the Plaintiff also submitted that there is a complete fallacy in the argument that Clause XIV of the Letters Patent, Bombay, being any other law for the time being in force is excluded by the operation of non-obstante clause in Section 134 (2) of the Act or that the provisions of Clause XIV of the Letters Patent, Bombay are not applicable under the Act. It is submitted that the scope of Section 134 (2) of the Act cannot be curtailed by reference to Section 20 of the Code of Civil Procedure, 1908 or Clause XII of the Letters Patent, due to the non-obstante clause. Therefore, in a case of infringement of trademark covered by Section 134 (2) of the Act, the question of the Plaintiff taking prior leave under Clause XII of the Letters Patent does not arise and the Plaintiff need not take leave of the Court under Clause XII of the Letters Patent even if only a part of the cause of action or no part of 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. It is also submitted that the power to combine the several causes of action is conferred upon this Court by virtue of Clause XIV of the Letters Patent, Bombay and Section 134 (2) of the Act has no role to play while considering the aspect of leave under Clause XIV of the Letters Patent, Bombay. It is not necessary that the words "jurisdiction in respect of one such causes of action" used in Clause XIV of the Letters Patent, Bombay, implies that such jurisdiction should be available only under Clause XII of the Letters Patent. The High Court may have jurisdiction to try and entertain a cause of action either under the Letters Patent (Clause XII) or under any other special statute and once it is clear that the High Court has such jurisdiction in respect of one such cause of action either under Clause XII of the Letters Patent or under the provisions of any other special statute, the High Court shall have the power under Clause XIV of the Letters Patent to combine the several causes of action.

9. The Learned Advocate appearing for the Plaintiff has submitted that the submissions made on behalf of the Defendant of delay, laches, acquiescence on the part of the Plaintiff; Defendant's alleged honest concurrent user and that numeral 5000 is common to the trade and is descriptive are not only incorrect but also not germane to the issue involved in the above Petition which is filed for obtaining leave under Clause XIV of the Letters Patent, Bombay. In support of this submission, the Learned Advocate appearing for the Plaintiff has relied on the observations in the judgment of this Court in Jagdish Gopal Kamath and others vs. Lime and Chilli Hospitality Services P. Ltd.2013 (4)Mh. L.J. 627. Again, relying on the said decision, the Learned Advocate appearing for the Plaintiff has submitted that the Plaintiff ought to be granted leave as the interest of justice would be subserved by avoiding multiplicity of proceedings. The Learned Advocate appearing for the Plaintiff has further submitted that the decisions relied on by the Defendant are of no assistance to the Defendant in view of the facts and circumstances as well as the issue involved in the above Petition. It is therefore submitted on behalf of the Plaintiff that the Plaintiff be granted leave under Clause XIV of the Letters Patent, Bombay, as sought.

10. I have considered the submissions advanced on behalf of the Plaintiff and the Defendant.

11. The Suit has been filed by the Plaintiff, inter alia, on the ground that the Defendant is guilty of infringing the Plaintiff's registered trademark HAYWARDS 5000 by using a deceptively similar mark viz. PRESIDENT 5000. As correctly submitted by the Plaintiff, under the provisions of Section 134 (2) of the Act, this Court has jurisdiction to entertain and try the Suit so far as it relates to infringement of the Plaintiff's registered trademark Nos. 436744 and/or 1521743, both in Class 32 since the Plaintiff has its registered office in Mumbai from where it is carrying on its business. As set out hereinabove, the Learned Senior Advocate appearing for the Defendant, while dealing with the issue of jurisdiction of this Court to try and entertain the Suit, so far it relates to infringement of trademarks which was framed by the Court under Section 9A of the Code of Civil Procedure, 1908, has conceded that this Court has jurisdiction to try and entertain the Suit for infringement of the Plaintiff's registered trademark. The Plaintiff has submitted that the same set of facts have given rise to the cause of action for infringement of trademarks and for passing off and it is therefore in the interest of justice and equity and to avoid multiplicity of proceedings that the two causes of action be allowed to be combined by granting Leave under Clause XIV of the Letters Patent, Bombay.

12. As set out hereinabove, the Defendant has submitted that as the Plaintiff "has attempted to raise all the three issues in one Suit", this Court does not have jurisdiction to try and entertain the above Suit and no cause of action therefore has arisen for the said Suit; that in the present case since the original jurisdiction of this Court for trying and entertaining the Suit in respect of the cause of action for infringement of the Plaintiff's registered trademark has not been conferred upon this Court under Clause XII of the Letters Patent, Bombay, but under Section 134 (2) of the Act, this Court cannot combine the cause of action for passing off with the cause of action for infringement of trademark under Clause XIV of the Letters Patent, Bombay; that this Court will have the power to combine the two causes of action under Clause XIV of the Letters Patent, Bombay, only when this Court is exercising its ordinary original civil jurisdiction to try and entertain one cause of action under Clause XII of the Letters Patent, Bombay; that Clause XIV of the Letters Patent, Bombay, being any other law for the time being in force is excluded by the operation of the non-obstante clause in Section 134 (2) of the Act and the provisions of Clause XIV of the Letters Patent are not applicable under the Act.

13. The relevant provisions under the Letters Patent, Bombay and the Trade Marks Act referred to by the parties are reproduced hereunder:

"Clause XII of the Letters Patent, Bombay:

Original jurisdiction as to SuitsAnd we do further ordain that the said High Court of Judicature at Bombay, in the exercise of its Ordinary Original Civil Jurisdiction, shall be empowered to receive, try, and determine Suits of every description, if, in the case of Suits for land or other immovable property such land or property shall be situated, or in all other cases if the cause of action shall have arisen, either wholly, or, in case the leave of the Court shall have been first obtained, in part, within the local limits of the ordinary original civil jurisdiction of the said High Court or if the defendant at the time of the commencement of the Suit shall dwell or carry on business, or personally work for gain, within such limits; except that the said High Court shall not have such original jurisdiction in cases falling within the jurisdiction of the Small Cause Court at Bombay, or the Bombay City Civil Court."

Section 134 of the Act reads as under:

"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 subsection (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 proceeding, 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 on business or personally works for gain.

Explanation-For the purposes of subsection (2), "person" includes the registered proprietor and the registered user."

Section 105 of the Trade and Merchandise Marks Act, 1958, corresponding to Section 134 (2) of the Trade Marks Act, 1999, reads as under:

"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".

14. Under Section 134 (2) of the Act, this Court being the District Court for the purpose of Section 134 of the Act, has original jurisdiction to try and entertain the Suit in respect of cause of action for infringement of the Plaintiff's registered trade mark by virtue of the fact that at the time of institution of the Suit, the Plaintiff's registered office was situated within the local limits of the jurisdiction of this Court. The said jurisdiction under Section 134 (2) of the Act has been conferred upon this Court notwithstanding anything contained in the Code of Civil Procedure, 1908 or any other law for the time being in force. In the case of Mohan Meakin Ltd.(supra), the Division Bench of this Court, while considering the issue whether the High Court of Judicature at Bombay is the District Court for the purpose of Section 105 of the Trade and Merchandise Marks Act, 1958 (equivalent to Section 134 of the Trade Marks Act, 1999), in paragraph 25 held as follows:

"It is well recognized that trade mark right is a property and therefore a Suit seeking reliefs for infringement of trademarks is a Suit of civil nature. If such an infringement occurs and the cause of action for a Suit based on the infringement arises within the area of Greater Bombay or District Bombay the High Court being a District Court/or principal Civil Court will alone have power to try the Suit. Consequently it will have to be held that for the purpose of the present Suit the High Court is a principal Court of Original Jurisdiction and/or the District Court as defined under subsection (4) of Section 2 of the Code of Civil Procedure. As a necessary corollary it must follow that the High Court being the principal Civil Court of original civil jurisdiction will be the District Court for the purpose of Section 105 of the Trade and Merchandise Marks Act, 1958 and as such Suits of the nature mentioned in the said Section must be filed in the High Court irrespective of the pecuniary valuation of the Suit."

This Court is therefore "the District Court" for the purposes of Section 134 of the Trade Marks Act, 1999.

15. Clause XIV of the Letters Patent, Bombay reads thus:

And we do further ordain that where plaintiff has several causes of action against a defendant, such causes of action not being for land or other immovable property, and the said High Court shall have original jurisdiction in respect of one of such causes of action, it shall be lawful for the said High Court to call on the defendant to show cause why the several causes of action should not be joined together in one Suit, and to make such order for trial of the same as to the said High Court shall seems fit".

A reading of the aforesaid Clause shows that the accrual of the cause of action within the territorial jurisdiction of this Court is not contemplated to permit joinder of causes of action. Clause XIV only contemplates that if this Court shall have original jurisdiction in respect of one of such causes of action it would be permissible to combine two separate causes of action in one Suit. It can therefore be safely concluded that for combining the two causes of action under Clause XIV of the Letters Patent, Bombay, it is not mandatory that this Court should have territorial jurisdiction to try and entertain the first cause of action under Clause XII of the Letters Patent, Bombay. So long as this Court has original jurisdiction to try and entertain the Suit in respect of the first cause of action (which this Court has in the present case under Section 134 (2) of the Act), it can combine the other cause of action under the powers conferred upon the Court under Clause XIV of the Letters Patent, Bombay.

16. The above argument of the Defendant's Counsel regarding this Court's power to combine the two causes of action under Clause XIV of the Letters Patent, Bombay, only when this Court is exercising its Ordinary Original Civil Jurisdiction to try and entertain one cause of action under Clause XII of the Letters Patent, Bombay, has not been advanced for the first time before this Court. An identical argument was advanced before the Division Bench of this Court in the case of M/s. Arte Indiana vs. M/s. P. Muttulaul Lalah and Sons (supra) wherein the Division Bench while dealing with the said issue held:

"6. In our view, when Clause 14 does not require that one of the causes of action should have risen 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 v. Mathai Verghese & ors. . The Apex Court was considering the interpretation placed on section 489A 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 provision of law cannot substitute the expression "Indian currency note" in place of the expression "currency note" as has been done by the High Court.

7. Faced with the aforesaid position, as this Court has territorial jurisdiction to entertain the Suit in respect of violation of copyright, learned Counsel for the respondent contends that this Court will have original jurisdiction only in respect of cases contemplated by Clause 12 and other cases would not be within the original jurisdiction of the Court. The contention cannot be accepted on the face of the clear and unambiguous language of Clause 14.

8. We are unable to accept the contention that the Suits pertaining to infringement of copyright would not be within the original jurisdiction of this Court. The expression Ordinary Original Civil Jurisdiction came up for consideration before the Madras High Court in Munia Servai v. Hanuman Bank, . In that case, the Bank was ordered to be wound up in 1947. The appellant was indebted, to the Bank. On the application of the Liquidator, the Court determined the liability of the appellant at Rs. 4,80,000/-, which was later reduced to Rs.1,74,000/-.

The amount was not paid. The Bank moved for sale of the charged properties. The order was passed in favour of the Bank. On the application for execution having been taken out in August 1957 to execute the Decree passed in 1953, the judgment debtor objected to the execution on the ground that it is timebarred under Article 183 of the old Limitation Act. Article 183 of the old Limitation Act, inter alia, provided that the period of limitation for the application to enforce the judgment, decree or order of any Court established by Royal Charter in exercise of its Ordinary Original Civil Jurisdiction was 12 years. It was contended on behalf of the debtor that the decree passed by the Court in 1953 was an order passed by the Court under the Banking Companies Act of 1949, and it was not in exercise of Ordinary Original Civil Jurisdiction. In the light of this controversy, the Division Bench of the Madras High Court discussed the meaning of the expression "ORDINARY ORIGINAL CIVIL JURISDICTION" and the test formulated by the Division Bench of the Madras High Court is as follows :

"The expression ordinary jurisdiction embraces all such acts performed by the Court in ordinary course of law and without any special step being taken to assume the jurisdiction as opposed to extra ordinary jurisdiction which the Court may assume at its discretion upon special occasion and by special orders."

Thus, the Madras High Court held that the jurisdiction conferred in the Court by Banking Companies Act is a part of Ordinary Original Civil Jurisdiction within the meaning of Articles 183 of the Old Limitation Act.

9. In the case of Banaras Bank Limited v. Jyoti Gupta & anr., , the Allahabad High Court, after construing the provisions of Clauses 11 and 12 of the Letters Patent held that the words "ordinary jurisdiction" embraces all acts of the Court which are exercised in the ordinary course of law and that it was opposed to extra ordinary jurisdiction which the Court may assume as it's discretion upon happening of special occasions.

10. In the aforesaid two decisions, therefore, it was held that the jurisdiction under the Companies Act or under the Banking Companies Act falls within the ambit of Ordinary Original Civil Jurisdiction.

11. Applying the aforesaid test, we have no hesitation in coming to the conclusion that the Suit fell within the purview of ordinary jurisdiction and not extra ordinary jurisdiction as concluded by the learned Single Judge.

17. The Hon'ble Division Bench of the Madras High Court (Coram: A.P. Shah, C.J. & F.M. Ibrahim Kalifulla, J.) have in the case of Wipro Limited and another vs. Oushadha Chandrika Ayurvedic India (P) Limited and others 2008 (37) PTC 269 (Mad.) (DB), after referring to the findings of the Hon'ble Supreme Court qua the provisions of Section 62 of the Copyright Act in the case of Ex Phar SA vs. Eupharma Laboratories Ltd.AIR 2004 SC 1682 held in paragraph 14 of its judgment 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 nonobstante 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 Clause12 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."

It therefore cannot be contended that as the Plaintiff has attempted to raise all the issues in one Suit, the Plaint is liable to be rejected or that this Court does not have jurisdiction to try and entertain the above Suit and no cause of action therefore has arisen for the said Suit or that in the present case since the original jurisdiction of this Court for trying and entertaining the Suit in respect of the cause of action for infringement of the Plaintiff's registered trademark has not been conferred upon this Court under Clause XII of the Letters Patent, Bombay, but under Section 134 of the Act, this Court cannot combine the cause of action for passing off with the cause of action for infringement of trade mark under Clause XIV of the Letters Patent, Bombay, or that this Court will have the power to combine the two causes of action under Clause XIV of the Letters Patent, Bombay, only when this Court is exercising its ordinary original civil jurisdiction to try and entertain one cause of action under Clause XII of the Letters Patent, Bombay.

18. As regards the contention of the Defendant that Clause XIV of the Letters Patent, Bombay, being any other law for the time being in force is excluded by the operation of the non-obstante clause in Section 134 (2) of the Act, a plain reading of Section 134 (2) of the Act makes it clear that the said Section only confers jurisdiction, in case of infringement of a registered trademark, upon the District Court within the local limits of whose jurisdiction at the time of institution of the Suit or other proceedings, the person instituting a Suit or proceedings actually and voluntarily resides or carries on business or personally works for gain. Section 134 (2) of the Act prescribes an additional ground for attracting the jurisdiction of the Court over and above the normal ground. The provisions contained in the non-obstante clause of Section 134 (2) of the Act by using the phrase "notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force" is made with a view to give an overriding effect to the said provision. The said provision, so far as it relates to an action for infringement of trademark (and not an action for passing off) would hold the field notwithstanding anything contained in the C.P.C. or any other law for the time being in force. The provision of the non-obstante clause in Section 134 (2) of the Act is to ensure that the scope of section 134 (2) of the Act cannot be curtailed by reference to Section 20 of the C.P.C. or Clause XII of the Letters Patent, Bombay. On the other hand, the power to combine several causes of action is conferred upon this Court by virtue of Clause XIV of the Letters Patent, Bombay. Section 134 (2) of the Act has no role to play while considering Clause XIV of the Letters Patent, Bombay. Under Clause XIV of the Letters Patent, Bombay, (i) where the Plaintiff has several causes of action against the defendants; (ii) such causes of action not being for land and/or other immovable properties; and (iii) the High Court has original jurisdiction in respect of one such causes of action, it is lawful for the High Court to combine the several causes of action. It therefore cannot be contended that leave under Clause XIV of the Letters Patent, Bombay, cannot be sought when the Plaintiff has invoked the jurisdiction of this Court under Section 134 (2) of the Act, in view of the provision contained in the non-obstante clause of Section 134 (2) of the Act.

19. As regards the judgments relied upon by the Defendant in the Dodha House case (supra), Dabur Industries case (supra), the Jay Engineering Works Ltd. case (supra) and the Indian Performing Rights Society's case (supra), the same are of no assistance to the Defendant since the issue of combining the causes of action in those cases was considered by the Courts not under the Letters Patent, Bombay, but under the Code of Civil Procedure, 1908. The cases cited therein were originally filed in the Hon'ble Delhi High Court where the provisions of Letters Patent, Bombay are not applicable. Hence, at no point of time, in those cases, did the Hon'ble Delhi High Court or the Hon'ble Supreme Court consider the issue of combining the causes of action under Clause XIV of the Letters Patent, Bombay. Further, the judgment in the case of Indian Performing Rights Society (supra) has been stayed by the Hon'ble Supreme Court vide order dated 27th January, 2009 in SLP (Civil) Nos. 980981 of 2009, thereafter numbered as Civil Appeal Nos. 1064310644 of 2010.

20. In so far as the case of Orissa Oil Industries Ltd. (supra) is concerned, the same is of no assistance to the Defendant since in that case admittedly application for obtaining leave under Clause XIV was not filed by the Plaintiff and the procedure (of issuing notice before grant of leave) provided in the said clause was not followed.

In paragraph 11 of the said case, the Court has held:

"11. Admittedly no such application has been made by the Plaintiff in the present case. I agree with Mr. Sen and .hold that the leave obtained by the plaintiff under Clause 14 of the Letters Patent without any notice to the defendants was of no legal consequence and was a nullity. The order being null and void, it did not confer any jurisdiction on this Court to entertain the Suit on the causes of action which arose outside jurisdiction and were joined in terms of the purported order granting leave to join the same. The Plaintiff's Suit for damages in connection with the Sal seeds agreement is, therefore, misconceived and should be struck out unless a fresh leave is granted to the Plaintiff for joining the said causes of action on a properly framed application on notice to the defendant as provided in Clause 14 of the Letters Patent".

21. In so far as the case of Gold Seal Engineering Product (supra) is concerned, the reliance upon the said order passed by the Learned Single Judge of this Court, by the Defendant is misplaced since the said order was set aside by the Division Bench of this Court. The Division Bench in Appeal No. 505 of 1992, while reversing the decision of the Single Judge held that once it is found that the Plaintiffs are entitled to maintain the Suit in this Court in respect of grievance of breach of copyright, there was no reason to refuse the leave so as to drive the parties to file litigation in several Courts. It was held that it is necessary to grant leave with a view to avoid multiplicity of litigations. The Division Bench noticed that it is desirable that a practical view is taken and parties are not driven from Court to Court on technicalities. It was held that Clause XIV of the Letters Patent was enacted to sub-serve the purpose of avoidance of multiplicity of proceedings and the trial Court was entirely in error in refusing to grant leave on the assumption that the conduct of the appellant was not bona fide. Leave was accordingly granted. The decision of the Division Bench in Gold Seal Engineering Products Pvt. Ltd. (supra) was followed by the Division Bench in the case of M/s. Arte Indiana (supra) as also Jagdish Gopal Kamath and others. (supra).

22. In so far as the case of John George Dobson (supra) is concerned, the same is of no assistance to the Defendant and in fact supports the contention of the Plaintiff. In paragraph 2 of the said judgment (Page 469 of the Respondent's written submission), it has been held:

"... Now the Court has original jurisdiction in respect of a cause of action arising partly within the local limits provided the leave of the Court has first been obtained. Therefore in this case as soon as leave had been obtained the Court had original jurisdiction in respect of claims A and B. It then became lawful for the Court to call on the defendants to show cause why the cause of action in respect of claim C should not be joined in the Suit and there is nothing in Clause 14 to show that this must be done before the Plaint is filed. If no application was made under Clause 14 that part of the Plaint which related to claim C would be struck out as soon as the case came on for hearing but as far as I can see there is nothing to prevent the Plaintiff making the application at any time before the hearing. However apart from other circumstances the measure of his success would probably depend on the application being made at the earliest opportunity and it would certainly be advisable for a Plaintiff to make an application under Clause 14 at the time the plaint is presented. On the merits I see no reason why the cause of action in respect of claim C should not be tried in this Suit.

In so far as the judgments relied upon by the Defendants, the same are irrelevant to the issue in the above Petition. In so far as the judgments from (vi) to (ix) are concerned, the same are also irrelevant to the issue in the above petition.

23. As regards the submissions advanced on behalf of the Defendant that the Plaintiff is guilty of delay, laches and acquiescence; that the Defendant is honest concurrent user in respect of the impugned mark and that the numeral 5000 is common to the trade and descriptive the same are not germane to the issue involved in the above Petition. In the case of Jagdish Gopal Kamath and others (supra), this Court after considering the various judgments on the issue of grant of Leave under Clause XIV of the Letters Patent concluded inter alia in clauses (vi) and (viii) of paragraph 16 as under:

"(vi) the inquiry whether on facts the plaintiff is entitled to grant of leave as sought for or not has to be minimal and not in detail, so as to ensure that observations made do not adversely affect the parties while considering the prayers for grant of interim relief or while deciding the Suit;

.. .. ... ...

(viii) leave petitions cannot be converted into interlocutory hearings based on the initial cause of action. This will be an anathema to the object/legislative policy behind granting leave".

24. In the circumstances, the above Petition of the Plaintiff-Petitioner seeking leave under Clause XIV of the Letters Patent, Bombay, is allowed and Leave is granted accordingly.

25. Mr. Khera, the Advocate for the Defendant has applied for stay of this Judgment. The Application is rejected.

Petition allowed.