What emerges from this discussion is this:
(a) a plaintiff suing under the Trade Marks Act or
Copyright Act can always file the suit in the jurisdiction
where he lives, works for gain or carries on business. In
the context of a company, given the view in Sanjay
Dalia, this would mean where the company has its
principal or registered office. All issues of cause of
action and situs or location of the defendant or the
cause of action are inconsequential. It makes no
difference where the defendant resides. It makes no
difference where the cause of action arose. It certainly
makes no difference that the plaintiff also happens to
have a branch office in another location where the
cause of action may have arisen or where the defendant
may reside or carries on business.
(b) Where the plaintiff has only one office, it presents no
difficulty. Where the plaintiff has multiple offices,
however, he has a limited choice. He may either bring a
Suit under Section 134(2) or Section 62(2), i.e., within
the jurisdiction where he resides; or he may invoke
Section 20 and file a suit where the Defendants reside
or work for gain or where the cause of action arose
wholly or in part. The fact that the Plaintiff has the
choice of bringing a suit based on Section 20 of the
CPC does not mean that his rights under Section
134(2) or Section 62(2) are in any way eroded, curtailed
or restricted.
(c) However, where the plaintiff chooses not to file a Suit
at his or its principal business or where his registered
office is located, and also chooses not to file a suit in a
jurisdiction covered by Section 20 of the CPC but
instead attempts to file the suit at some other location
where the plaintiff happens to have a subsidiary or
satellite office, but where there is absolutely nothing
else (neither cause of action nor any of the defendants)
the Plaintiff cannot invoke Section 134(2) or Section
62(2) to drag the Defendant to that distant location.
That, following the decision of the Supreme Court, is
the abuse that is required to be prevented. That is in
fact the only abuse that is required to be prevented.
(d) The Section 134(2) and Section 62(2) privilege or
advantage attaches to the registered office or principal
place of work. It is a privilege not to be used by
abandoning the registered office situs, abandoning the
Section 20 situs options, and travelling to some remote
location where there is neither defendant nor cause of
action. That is the mischief addressed in Sanjay Dalia.
To illustrate: the plaintiff has its registered office in
Mumbai. The defendant is in Delhi. The cause of
action arose in Delhi. The plaintiff also has another
branch office in Port Blair. A plaintiff can sue in
Mumbai or in Delhi, but not in Port Blair.
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION NO. 494 OF 2014
IN
SUIT NO. 516 OF 2013
MANUGRAPH INDIA LIMITED,
v
SIMARQ TECHNOLOGIES PVT.
LTD.,
CORAM: G.S. PATEL, J
DATED: 15th June 2016
Citation:AIR 2016 Bom 217
1. By this judgment, I propose to dispose of the preliminary
issue of jurisdiction under Section 9A of the Code of Civil
Procedure, 1908 (“CPC”) raised by the Defendants in both suits.
2. In Suit No. 632 of 2014, the preliminary issue was framed on
31st March 2016. Shortly stated the Defendants’ case is that while
the Plaintiffs have their registered office in Mumbai, they also have a
branch office in Delhi, where the Defendants have their place of
business and where, according to the Defendants, the cause of
action has arisen. Therefore, according to Mr. Kirpekar for the
Defendants in this Suit, this Court would not have jurisdiction. Only
the courts in Delhi would.
3. The Defendants in Suit No. 516 of 2013 take a substantially
similar plea. There, the Plaintiff has its registered office in Mumbai.
The Defendants are based in Kolhapur and they allege that the
Plaintiffs also have office in Kolhapur, and that the situs of the suit
should, therefore, be Kolhapur.
4. I have heard Dr. Saraf for the Defendants in Suit No. 516 of
2013, Mr. Kirpekar for the Defendants in Suit No. 632 of 2014, Mr.
Kadam for the Plaintiffs in Suit No. 516 of 2013 and Mr. Kane for
the Plaintiffs in Suit No. 632 of 2014 at some length.
5. Dr. Saraf and Mr. Kirpekar base their submissions on a
reading of the decision of the Supreme Court in Indian Performing
Rights Society Limited v Sanjay Dalia & Another.
1 To put it in a
nutshell, the Defendants’ case before me is this: Neither Dr. Saraf
nor Mr. Kirpekar dispute that the Plaintiffs can file a Suit under the
Trade Marks Act, 1999 or under the Copyright Act, 1957 within the
local limits of the jurisdiction of the District Court where the
Plaintiff actually and voluntarily resides or carries on business or
works for gain. What they suggest, however, is that this right is
curtailed by the decision of the Supreme Court in Sanjay Dalia at
least to this extent: that where such a Plaintiff also has a office at
another location and the cause of action has arisen in that other
1 (2015) 10 SCC 161: AIR 2015 SC 3479
location, then the Plaintiff cannot file the Suit at the place where it
has its principal office or registered office, but must file it within the
jurisdiction of the court where both the subsidiary or branch office
and the cause of action are to be found.
6. Almost the entirety of the discussion before me has been on a
reading of Sanjay Dalia’s case. Before proceeding to a consideration
of the rival submissions on that decision, it is perhaps more
appropriate to set out my understanding of the pre- and post-Sanjay
Dalia jurisdictional regimes. Section 134(2) of the Trade Marks Act,
1999 (“TMA 1999”) parallels Section 62(2) of the Copyright Act,
1957 (“CA 1957”). Both depart from the usual jurisdictional
provision we find in Section 20 of the Code of Civil Procedure, 1908
(“CPC”). Under the CPC, a suit must be brought (a) where all the
defendants reside or work; or (b) where any of several defendants
live or reside provided there is either prior leave or the others
acquiesce in the jurisdiction; or (c) where the cause of action arises
wholly or in part. Sections 134(2) and 62(2), on the other hand, do
not have any such requirement. They simply say that a suit in
infringement or passing off can be brought where the plaintiff
resides or works. In the case of a corporate, this could be where it
has its office or offices. In the pre-Sanjay Dalia era, this often
resulted in much mischief: a corporate would have several satellite
offices scattered around the country. Using these provisions, it
would bring infringement and passing off suits in the courts in
whose jurisdiction those satellite or field offices were located, even
though the defendants were not there and no cause of action arose
there. This was precisely the mischief the Sanjay Dalia court
addressed. It did so not in the manner the Defendants suggest today,
i.e., by a wholesale rewriting of Sections 134(2) and 62(2), for that
could never have been the Supreme Court’s intention or purpose.
There is also no indication, as we shall see, of any kind of ‘reading
down’ or‘imputing in’ to the words of intellectual property statutes.
To the contrary: the Sanjay Dalia decision closely interwove the
special provisions of those two statutes with the regular
jurisdictional provisions in the CPC, retaining the integrity and
structure of each. Keeping in mind that the discussion (and the
preceding discord) is largely about corporate Plaintiffs, what
emerges, in my view, is this:
(a) A Plaintiff can always file a suit in a court within the
local jurisdiction of which its registered office or
principal office is located. This is a ‘pure’ Section
134(2) or Section 62(2) invocation of jurisdiction. The
location of the defendants and the place of accrual of
the cause of action is inconsequential. Sections 134(2)
and 62(2) do not refer to the situs of the cause of action
or the situs of the defendants’ location at all.
(b) Where a Plaintiff also has a satellite or field office
elsewhere, it may bring suit in a court in that location,
but this is no longer a Section 134(2) or Section 62(2)
jurisdictional invocation. The jurisdiction is governed
by Section 20 of the CPC; and hence, one of the
defendants must be found there; or leave must be
obtained there if some of the defendants are within that
jurisdiction and some outside it; or it must be shown
that the cause of action has arisen, wholly or in part, in
that jurisdiction. This option does not oust or limit the
plaintiff’s right to move under Section 134(2) or
Section 62(2).
(c) A plaintiff can always travel to where the defendant is
located2
or where the cause of action arises and bring
suit there. This again is purely a Section 20 CPC
invocation of jurisdiction. It has nothing at all to do
with Section 134(2) or Section 62(2). The plaintiff
need not have any office in that location.
7. From this, it will be seen that the first ‘route’ — the one I
describe as ‘pure’ Section 134(2) or 62(2) — is untouched by the
others; and the others are only relatable to Section 20, not to the
special provisions in the two intellectual property statutes.
8. At the cost of repetition, what was the mischief that was
addressed in Sanjay Dalia? It was this: Section 134(2) of the TMA
1999 and Section 62(2) of the CA 1957 borrow the defendantspecific
phraseology of Section 20(a) and (b) of the CPC but apply it
to a plaintiff. The difficulty then arises with the phrase ‘carries on
business’
, especially as applied to a corporate plaintiff. Corporates
have branch, field or satellite offices throughout the country. Only
one of them is the registered or principal place of business. If the
two special intellectual property statutes are read broadly, it would
mean that a plaintiff can file a suit in any remote location because it
2 Or where one of several defendants is located, with leave, or if they have
acquiesced.
‘carries on business’ there. That, the Sanjay Dalia court said, was
never the legislative intent. True, an infringer should know the risk
he runs, viz., that he will be forced to go to where the plaintiff is, but
this should be read to mean the jurisdictional location of plaintiff’s
registered office or principal place of business, not its far-flung
satellite office. But this does not and cannot mean that the
plaintiff’s right to bring suit in the jurisdiction of its registered office
or principal place of business is in any way curtailed or fettered.
9. I turn now to the statutory provisions. Section 20 of the Code
of Civil Procedure, 1908 reads thus:
“20. Other suits to be instituted where Defendants
reside or cause of action arises.— Subject to the
limitations aforesaid, every suit shall be instituted in a
Court within the local limits of whose jurisdiction—
(a) the Defendant, or each of the Defendants
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 Defendants, 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 Defendants 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
India or, in respect of any cause of action arising
at any place where it has also a subordinate
office, at such place.”
10. Sections 134 of the Trade Marks Act, 1999 and Section 62 of
the Copyright Act, 1957 are in pari materia. For completeness both
are reproduced below:
“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 sub-section (1),
“person” includes the registered proprietor and the
registered user.
11. Section 62 of the Copyright Act, 1957:
“62. Jurisdiction of Court over matters arising under
this Chapter.—
(1) Every suit or other civil proceeding arising under
this Chapter in respect of the infringement of
copyright in any work or the infringement of any
other right conferred by this Act shall be
instituted in the district Court having jurisdiction.
(2) For the purpose 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 other proceeding or, where there are
more than one such persons, any of them
actually and voluntarily resides or carries on
business or personally works for gain.
12. First as to a plain reading Sections 134(2) and 62(2). These
sections have, to begin with, a non obstante clause that refers to the
CPC. However, the important word in those sections is “include”.
This suggests that the jurisdictional benefit of Sections 134(2) and
62(2) is not exclusive or exclusionary. It is an additional benefit or an
additional provision, and, as we shall see, this is precisely the finding
of the Supreme Court in Sanjay Dalia.
13. As I have noted, Section 20 of the CPC deals with the
‘ordinary’ jurisdictional situs. There is then the explanation to
Section 20(c). This is a very interesting explanation. It tells us that
when it comes to defendant companies, these are deemed to ‘carry
on business’ at their sole or principal office in India; or if they have a
subordinate office where the cause of action, then in that place. The
important thing about this explanation is that it relates to defendant
corporations, not plaintiffs.
14. Both Dr. Saraf and Mr. Kirpekar suggest that the law under
Section 134(2) of the TMA 1999 and Section 62(2) of the CA 1957
was ‘changed’ by the Supreme Court in Sanjay Dalia. Referring to
the ‘mischief’ I have described above — dishonest plaintiffs
bringing suit in remote locations where there was neither defendant
nor cause of action — they say that it was to prevent this abuse that
the Supreme Court interpreted Sections 134(2) and 62(2) as it did.
According to them, a plaintiff can no longer file a suit in the District
Court within the jurisdiction of which the plaintiff has its registered
or principal office, if the plaintiff also has another (satellite) office at
another location, and which is the situs of either the defendant or
the cause of action (or both). In short, their submission is that no
plaintiff can bring suit under section 134(2) or 62(2) at the place
where it has its cause of action with nothing further. That privilege
is now constrained. If it is shown that the plaintiff has another office
where the defendant carries or business or resides, or where the
cause of action has arisen, then the plaintiff must file the suit in that
other location; the Section 134(2) and 62(2) routes are shut to such
a plaintiff.
15. Both Dr. Saraf and Mr. Kirpekar rely extensively on the
Supreme Court’s decision in Sanjay Dalia in support of this
proposition. They have also referred to the two decisions of the
Delhi High Court, one of a learned Single Judge and the second of a
Division Bench in Appeal. I will consider both these decisions
presently.
16. It is necessary, I think, to first understand the circumstances
in which the Supreme Court was required to decide the Sanjay
Dalia’s case. The Supreme Court had before it two matters. The
first, Civil Appeal Nos. 10643-10644 of 2010, arose from suits filed
by the Indian Performing Rights Society Limited (“IPRS”) to
prevent copyright infringement by Sanjay Dalia, i.e., to restrain him
from using the copyright work without license. Mr. Sanjay Dalia
owned (or owns) cinema halls in Maharashtra and Mumbai where
infringement was alleged. The entire cause of action arose in
Mumbai. Yet IPRS brought suits in Delhi where it also happened to
have an office. The second matter before the Supreme Court, Civil
Suit FAO (OS) No. 359 of 2007 was filed in the Delhi High Court
on the basis that the Plaintiff in that suit had a branch office in
Delhi. The Plaintiff’s head office, however, was in Mumbai and the
Defendant objected to jurisdiction being exercised by the Delhi High
Court, saying that the suit should have been filed in the Mumbai
High Court. The third matter appears to have been Civil Appeal
arising out of SLP (C) No. 8253 of 2013 for trade mark
infringement. The Plaintiff, a corporate proprietor of the magazine
“Vogue India” has its registered office in Mumbai, where the
magazine was processed and published. The Plaintiff also had a
branch office in Delhi and on that basis sought to file the suit within
the jurisdiction of that Court.
17. This was the factual conspectus before the Supreme Court.
The rival contentions on behalf of the Appellants are set out in
paragraphs 5, 6 and 7 of the SCC report. On behalf of the
respondents, it was submitted inter alia that the mischief rule of
Heydon’s case3
ought to be invoked to prevent harassment of the
defendants and abuse of statutory provisions, i.e., forcing them to
travel to distant locations where absolutely nothing had happened
only because the Plaintiff had a satellite or branch office there. After
setting out the necessary statutory provisions, the Supreme Court
also had occasion to note certain portions of the Parliamentary
Debates on the Copyright Act, 1957. These are debates of the
Copyright Committee. They are most instructive. Paragraph 13 of
the SCC report reads:
“13. The following portion of the Parliamentary
Debates as to the Copyright Act has been relied upon:
3 (1584) 3 Co Rep 7a : 76 ER 637
‘Shri P. Trikamdas: Ordinarily it should fall within the
jurisdiction of the court where the infringing copy was
published. But there is nothing to prevent Parliament
from making a law, as for instance in the case of
divorce, and saying that the cause of action may also
arise at any place where the author resides or where
the original publication took place, so that you could
drag the infringer to that court. Instead of making the
another run all over the country facing the infringer,
the right may be given to the injured party — the
author — to sue the man in the place where the
author resides or where the first copy was published.
Dr. Raghubir Sinh: So you agree to that?
Shri P. Trikamdas: Yes, and I am obliged to you for
asking me that question.
Dr. Raghubir Sinh: Does Mr. Masani too approve of it?
Shri Masani: Yes.
Shri P. Trikamdas: It is desirable also because it may
act as a deterrent on the infringer when he knows
that he may have to go a few hundred miles off to a
High Court where the author lives or where the book
got published first.”
(Emphasis added)
18. Both sides have referred extensively to the observations of the
Supreme Court in paragraphs 14 to 22, 38, 40 and 52 of the SCC
report. Dr. Saraf and Mr. Kirpekar lay particular emphasis on the
observations of the Supreme Court in paragraph 14. But in this
paragraph the Supreme Court itself accepted that Sections 62(2)
134(2) created an additional forum by including a District Court
within whose limit the plaintiff actually and voluntarily resides.
Clearly this is as it must be, for Section 20 does not contemplate the
location or situs of the plaintiff as a criterion for jurisdiction
selection. Just as Section 20 of the CPC is plaintiff-independent,
Sections 134(2) and 62(2) are defendant-independent (and cause of
action-independent as well). Thus, Section 134(2) and 62(2) reverse
the ordinary law governing jurisdiction.
19. In the cases before the Supreme Court, the entire cause of
action had arisen within the jurisdiction of the court where the
principal place of business of the Plaintiff was situated; yet the
Plaintiffs all sought to sue elsewhere. I find that the portions that Dr.
Saraf and Mr. Kirpekar highlight do not support their propositions.
For instance, the last sentence of paragraph 14 and the whole of
paragraph 15 relate to corporate defendants (covered by the
explanation to Section 20 of the CPC), and not to plaintiffs in a
trade mark or a copyright action at all.
“14. ... Thus, ‘corporation’ can be sued at a place
having its sole or principal office and where cause of
action wholly or in part, arises at a place where it has
also a subordinate office at such place.
15. Learned author Mulla in the Code of Civil
Procedure, 18th Edn., has observed that under clauses
(a) to (c) of section 20, Plaintiff has a choice of forum to
institute a suit. The intendment of the Explanation to
section 20 of the Code of Civil Procedure is that once
the corporation has a subordinate office in the place
where the cause of action arises wholly or in part, it
cannot be heard to say that it cannot be sued there
because it did not carry on business at that place. The
linking of the place with the cause of action in the
Explanation where subordinate office of the corporation
is situated is reflective of the intention of the
Legislature and such a place has to be the place of the
filing of the suit and not the principal place of business.
Ordinarily the suit has to be filed at the place where
there is principal place of business of the corporation.
(Emphasis added)
20. The emphasized portions make it clear that the reference
here was to a corporate defendant, not a corporate plaintiff. If there
was any doubt about what the Supreme Court intended, I imagine it
is put to rest by paragraph 18:
18. On a due and anxious consideration of the
provisions contained in section 20 of the CPC, section
62 of the Copyright Act and section 134 of the Trade
Marks Act, and the object with which the latter
provisions have been enacted, it is clear that if a cause
of action has arisen wholly or in part where the
Plaintiff is residing or having its principal
office/carries on business or personally works for
gain, the suit can be filed at such place/s. Plaintiff(s)
can also institute a suit at a place where he is
residing, carrying on business or personally works for
gain de hors the fact that the cause of action has not
arisen at a place where he/they are residing or any
one of them is residing, carries on business or
personally works for gain. However, this right to
institute suit at such a place has to be read subject to
certain restrictions, such as in case Plaintiff is residing
or carrying on business at a particular place/having
its head office and at such place cause of action has
also arisen wholly or in part, Plaintiff cannot ignore
such a place under the guise that he is carrying on
business at other far flung places also. The very
intendment of the insertion of provision in the
Copyright Act and Trade Marks Act is the convenience
of the Plaintiff. The rule of convenience of the parties
has been given a statutory expression in section 20 of
the CPC as well. The interpretation of provisions has to
be such which prevents the mischief of causing
inconvenience to parties.
21. Now this paragraph shows that there were four distinct
scenarios.
(a) The first portion is in the words “it is clear that if a
cause of action has arisen wholly or in part where the
Plaintiff is residing or having its principal office/carries
on business or personally works for gain, the suit can be
filed at such place/s”. This is a pure Section 20(c)
jurisdictional choice. It also says can, not must. There is
the element of choice.
(b) That choice finds recognition in the second portion,
with the words “Plaintiff(s) can also institute a suit at a
place where he is residing, carrying on business or
personally works for gain de hors the fact that the cause
of action has not arisen at a place where he/they are
residing or any one of them is residing, carries on
business or personally works for gain.” This is a
reference to a pure Section 134(2) or 62(2)
jurisdictional choice of forum — entirely de hors the
cause of action or the situs of the defendant.
(c) The third portion deals with the mischief that faced the
Supreme Court: “Plaintiff is residing or carrying on
business at a particular place/having its head office and
at such place cause of action has also arisen wholly or
in part, Plaintiff cannot ignore such a place under the
guise that he is carrying on business at other far flung
places also.” This was therefore a situation where the
plaintiff had its head office or registered office at a
place where the cause of action also arose but it chose
to ignore all that and brought suit at the situs of a
satellite office where nothing at all had happened and
where none of the defendants resided or worked. That,
the Supreme Court said, was not the legislative
mandate of Section 62(2) or 134(2).
22. Dr. Saraf’s and Mr. Kirpekar’s arguments also overlook the
Supreme Court’s finding that “the very intendment of the insertion
of provision in the Copyright Act and Trade Marks Act is the
convenience of the Plaintiff”
, a matter that is reflected in the
Copyright Committee debates. It is therefore in this background that
we must see paragraphs 19, 20 and 21 of Sanjay Dalia.
19. The intendment of the aforesaid provisions
inserted in the Copyright Act and the Trade Marks Act
is to provide a forum to the Plaintiff where he is
residing, carrying on business or personally works for
gain. The object is to ensure that the Plaintiff is not
deterred from instituting infringement proceedings
“because the court in which proceedings are to be
instituted is at a considerable distance from the place
of their ordinary residence”. The impediment created
to the Plaintiff by section 20 C.P.C. of going to a place
where it was not having ordinary residence or
principal place of business was sought to be removed
by virtue of the aforesaid provisions of the Copyright
Act and the Trade Marks Act. Where the Corporation is
having ordinary residence/principal place of business
and cause of action has also arisen at that place, it has
to institute a suit at the said place and not at other
places. The provisions of section 62 of the Copyright
Act and section 134 of the Trade Marks Act never
intended to operate in the field where the Plaintiff is
having its principal place of business at a particular
place and the cause of action has also arisen at that
place so as to enable it to file a suit at a distant place
where its subordinate office is situated though at
such place no cause of action has arisen. Such
interpretation would cause great harm and would be
juxtaposed to the very legislative intendment of the
provisions so enacted.
20. In our opinion, in a case where cause of action has
arisen at a place where the Plaintiff is residing or where
there are more than one such persons, any of them
actually or voluntarily resides or carries on business or
personally works for gain would oust the jurisdiction of
other place where the cause of action has not arisen
though at such a place, by virtue of having
subordinate office, the Plaintiff instituting a suit or
other proceedings might be carrying on business or
personally works for gain.
21. At the same time, the provisions of section 62 of the
Copyright Act and section 134 of the Trade Marks Act
have removed the embargo of suing at place of
accrual of cause of action wholly or in part, with
regard to a place where the Plaintiff or any of them
ordinarily resides, carries on business or personally
works for gain. We agree to the aforesaid extent the
impediment imposed under section 20 of the CPC to a
Plaintiff to institute a suit in a court where the
Defendant resides or carries on business or where the
cause of action wholly or in part arises, has been
removed. But the right is subject to the rider in case
Plaintiff resides or has its principal place of
business/carries on business or personally works for gain
at a place where cause of action has also arisen, suit
should be filed at that place not at other places where
Plaintiff is having branch offices etc.
(Emphasis added)
23. Dr. Saraf and Mr. Kirpekar read the italicized portions as
being a Supreme Court-mandated curtailing of Sections 134(2) and
62(2). I cannot agree with this. In paragraph 19, the italicized
portion is to be read with the next sentence, not plucked out in
isolation. The sentence “Where the Corporation is having ordinary
residence/principal place of business and cause of action has also
arisen at that place, it has to institute a suit at the said place and not
at other places” is followed by this: “The provisions of section 62 of
the Copyright Act and section 134 of the Trade Marks Act never
intended to operate in the field where the Plaintiff is having its
principal place of business at a particular place and the cause of
action has also arisen at that place so as to enable it to file a suit at a
distant place where its subordinate office is situated though at such
place no cause of action has arisen.” Reading only the first renders
the second entirely otiose. No judgment can or should be read like
this. Similarly, the italicized portion of paragraph 21, it must be read
in context too of what it was the Supreme Court was addressing. “in
case Plaintiff resides or has its principal place of business/carries on
business or personally works for gain at a place where cause of
action has also arisen, suit should be filed at that place not at other
places where Plaintiff is having branch offices etc.” only means that
no suit can be filed at a site office, one that is not the registered or
principal office, and at the location of which there is neither
defendant nor cause of action. That, the Supreme Court said, is an
abuse of the provision.
24. Mr. Kadam and Mr. Kane are, for their part, correct in also
pointing out that the interpretation canvassed by Dr. Saraf and Mr.
Kirpekar introduces multiple ambiguities where there are none. For
instance, paragraph 23 says in terms that the judgments in appeal
did not take away the additional forum and fundamental basis of
conferring the right and advantage provided by Sections 62(2) and
134(2).
25. Then come paragraphs 25 and 26 and these, to my mind, put
the matter beyond all doubt.
25. Considering the first aspect of aforesaid
principle, the common law which was existing before
the provisions of law were passed was section 20 of
the CPC. It did not provide for the Plaintiff to institute a
suit except in accordance with the provisions contained
in section 20. The defect in existing law was
inconvenience/deterrence caused to the authors
suffering from financial constraints on account of
having to vindicate their intellectual property rights at a
place far away from their residence or the place of their
business. The said mischief or defect in the existing law
which did not provide for the Plaintiff to sue at a place
where he ordinarily resides or carries on business or
personally works for gain, was sought to be removed.
Hence, the remedy was provided incorporating the
provisions of section 62 of the Copyright Act. The
provisions enabled the Plaintiff or any of them to file a
suit at the aforesaid places. But if they were residing
or carrying on business or personally worked for gain
already at such place, where cause of action has
arisen, wholly or in part, the said provisions have not
provided additional remedy to them to file a suit at a
different place. The said provisions never intended to
operate in that field. The operation of the provisions
was limited and their objective was clearly to enable
the Plaintiff to file a suit at the place where he is
ordinarily residing or carrying on business etc., as
enumerated above, not to go away from such places.
The Legislature has never intended that the Plaintiff
should not institute the suit where he ordinarily
resides or at its Head Office or registered office or
where he otherwise carries on business or personally
works for gain where the cause of action too has
arisen and should drag the Defendant to a
subordinate office or other place of business which is
at a far distant place under the guise of the fact that
the Plaintiff/corporation is carrying on business
through branch or otherwise at such other place also.
If such an interpretation is permitted, as rightly
submitted on behalf of the Respondents, the abuse of
the provision will take place. Corporations and big
conglomerates etc. might be having several
subordinate offices throughout the country.
Interpretation otherwise would permit them to institute
infringement proceedings at a far flung place and at
unconnected place as compared to a place where
Plaintiff is carrying on their business, and at such place,
cause of action too has arisen. In the instant cases, the
principal place of business is, admittedly, in Mumbai
and the cause of action has also arisen in Mumbai.
Thus, the provisions of section 62 of the Copyright Act
and section 134 of the Trade Marks Act cannot be
interpreted in a manner so as to confer jurisdiction on
the Delhi court in the aforesaid circumstances to
entertain such suits. The Delhi court would have no
territorial jurisdiction to entertain it.
26. The avoidance of counter mischief to the
Defendant is also necessary while giving the remedy to
the Plaintiff under the provisions in question. It was
never visualised by the law makers that both the parties
would be made to travel to a distant place in spite of
the fact that the Plaintiff has a remedy of suing at the
place where the cause of action has arisen where he is
having head office/carrying on business etc. The
provisions of the Copyright Act and the Trade Marks
Act provide for the authors/trade marks holders to
sue at their ordinary residence or where they carry on
their business. The said provisions of law never
intended to be oppressive to the Defendant. The
Parliamentary Debate quoted above has to be
understood in the manner that suit can be filed where
the Plaintiff ordinarily resides or carries on business
or personally works for gain. Discussion was to
provide remedy to Plaintiff at convenient place; he is
not to travel away. Debate was not to enable Plaintiff
to take Defendant to farther place, leaving behind his
place of residence/business etc. The right to remedy
given is not unbridled and is subject to the prevention
of abuse of the aforesaid provisions, as discussed
above. Parliament never intended that the subject
provisions to be abused by the Plaintiff by instituting
suit in wholly unconnected jurisdiction. In the instant
cases, as the principal place of business is at Mumbai
the cause of action is also at Mumbai but still the place
for suing has been chosen at Delhi. There may be a
case where Plaintiff is carrying on the business at
Mumbai and cause of action has arisen in Mumbai.
Plaintiff is having branch offices at Kanyakumari and
also at Port Blair, if interpretation suggested by
Appellants is acceptable, mischief may be caused by
such Plaintiff to drag a Defendant to Port Blair or
Kanyakumari. The provisions cannot be interpreted in
the said manner devoid of the object of the Act.”
26. The illustration in paragraph 26 entirely sums up the finding.
27. In addition to this the Supreme Court has specifically noted
the impact of the word “include” in paragraph 40 of the SCC
report. It did so while referencing the decision in Exphar Sa v.
Eupharma Laboratories Limited.
4 This decision makes it clear that
the introduction of Section 62(2) was not to place any restriction on
copyright owners, but quite reverse, i.e., to remove any
impediments in their way. Any limitations or restrictions in the
jurisdictional powers of the District Court were removed and were
expanded to include in addition suits brought by person/s whose
offices were within the jurisdiction of that Court irrespective of
4 (2004) 3 SCC 688
whether the defendants were within that jurisdiction or whether the
cause of action arose within that jurisdiction.
28. This is in fact the basis and substratum of the decision of the
Supreme Court in Sanjay Dalia too. For here, the Supreme Court
has emphasized that these two special statutes provide an additional
remedy to the Plaintiff. This is the only plausible way to reconcile
the non obstante clause with the word “include”.
29. It is also correct that while interpreting or construing a
judgment, one must read it in its factual conspectus and see it as an
authority what it actually decides. There are several consequences
to accepting Dr. Saraf and Mr. Kirpekar’s argument, none of them
very good. The first of these suggest that in Sanjay Dalia the
Supreme Court engineered a wholesale rewriting of Sections 134(2)
and Section 62(2) by inserting in each of these sections additional
qualifications that we do not find there or requiring the reading
down of these provisions. It did not, and nothing in the decision
suggests that it did or intended to.
30. The second consequence, one that is possibly even more
dramatic, is that if the Defendants’ interpretation is to be accepted,
then Sections 134(2) and 62(2), and the special benefits or
advantages they confer, now recognized emphatically by the
Supreme Court, are rendered entirely otiose; and every plaintiff is
then left with only a Section 20 CPC route open to him. For, if a
plaintiff cannot bring suit in the situs of its registered office or
principal place of business ‘de hors’ as the Supreme Court said ‘the
fact that the cause of action has not arisen’ there, then Sections
134(2) and 62(2) have no meaning. They are not required. Section
20 of the CPC is sufficient if a plaintiff in a trade mark or copyright
action can only file suit as any other plaintiff could, i.e., where the
defendants reside or where the cause of action accrues. This
interpretation is not correct. Every plaintiff can always bring a suit
where the cause of action in whole or in part arises or where the
defendants reside or works for gain. No special dispensation was
required for this purpose at all. A plaintiff in a trade mark or
copyright action has, however, an additional option or route
available: where he has his registered office, and this has nothing to
do with the defendants’ location or that of the cause of action. This
is not fettered in any way by Sanjay Dalia. It matters not how to put
it, whether in the affirmative or the negative as Dr. Saraf does
(meaning that the Plaintiff can bring a suit where his registered
office lies unless the cause of action arises in the jurisdiction where
he has a satellite office).
31. In my view, all that the Supreme Court did in Sanjay Dalia
was to deal with the patent mischief that was placed before it:
plaintiffs filing suits in remote locations only because they happened
to have branch offices there, although the defendants were to be
found in another location and the plaintiffs themselves had their
own offices in those other locations and the entire cause of action
had also arisen in those other locations.
32. Sanjay Dalia’s case was interpreted by a Single Judge of the
Delhi High Court in Ultra Home Construction Private Limited v.
Purushottam Kumar Chaubey & Others.
5 The Single Judge of the
Delhi High Court held, in essence, that, following Sanjay Dalia, a
plaintiff could no longer bring suits where his principal office was
located if the Plaintiff also have a branch office and the cause of
action arose there. The Single Judge dismissed the Suit on this
ground. The Appellate Court upheld this view but reversed on the
limited ground that the plaint ought to have been returned for
presentation to the proper Court. The decision of the Appellate
Court in Ultra Home Construction has been extensively relied upon
by Mr. Kirpekar.6
33. I am, with regret, unable to accept the interpretation of
Sanjay Dalia in the decision of the Division Bench of the Delhi High
Court. I would ordinarily have been loathe to stray too far from the
decision of a Division Bench of another High Court; but this view
seems to me to be plainly incorrect. I believe the Division Bench of
the Delhi High Court was in error, and that error appears to me to
be in the first sentence of paragraph 12 where it said that the
deeming provision of Section 20, i.e., the explanation, had been
‘read into’ Sections 134(2) and 62(2) (for isolating the place where
the plaintiff can be said to be carrying on business). As we have
seen, that was not the issue before the Supreme Court at all, nor did
the Supreme Court read down the provisions of either of these two
sections. If we view the provisions of Section 20 as a three-tier
structure, then the provisions of Section 134(2) and Section 62(2)
5 227 (2016) DLT 320
6 Ultra Home Construction Pvt. Ltd. v Purushottam Kumar Chaubey & Ors.,
FAO (OS) 494 of 2015 and CM 17816 of 2015, decided on 20th January
2016.
must be seen as standing apart. Sanjay Dalia recognizes just this. It
does not disrupt this structure at all. There is nothing in that
judgment to suggest that the provisions of Section 134(2) or Section
62(2) are in any way curtailed by the provisions of Section 20 of the
CPC.
34. Mr. Kane draws my attention to the judgment of another
learned Single Judge (Vipin Sanghi J) of the Delhi High Court in
RSPL Limited v Mukesh Sharma & Anr.
7 Mr. Justice Sanghi was of
the view that the case before him was unaffected by the Division
Bench’s decision in Ultra Home, one he came upon after he reserved
judgment in RSPL Ltd. Yet, as a student of law, he set out his
reasons for disagreeing with the view of the Division Bench. Mr.
Justice Sanghi’s judgment sets out several passages from Sanjay
Dalia and he too concludes, as have I, that the Supreme Court
recognize that an additional forum had been provided under Section
62(2) and Section 134(2) of the Trade Marks Act, 1999 by including
the District Court within whose limits a plaintiff actually and
voluntarily resides or carries on business or personally works for
gain as a possible place for such a plaintiff to bring a trade mark or
copyright action. In paragraph 22 of his decision, Mr. Justice Sanghi
summarized the position as it emerges from Sanjay Dalia with
admirable precision and concision:
“22. From the aforesaid decision in Indian Performing
Rights Society Limited (supra), and the decision cited by
7 I.A. No. 11034 of 2015 in C.S. (OS) No. 124 of 2015, decided on 5th
April 2016.
the Supreme Court therein, in my opinion, the position
that emerges is as follows:
(a) By resort to Section 134 of the Trade
Marks Act and 62 of the Copyright Act, the
Plaintiff may institute the suit where the Plaintiff
voluntarily resides or carries on business or
personally works for gain. In the context of
corporation, which includes a company
incorporated under the Indian Companies Act,
1956, such a place would be the place where the
registered office of the company is situated.
Thus, a company can maintain a suit under
Section 134 of the Trade marks Act, or Section 62
of the Copyright Act, at the place where its
registered office is situated, irrespective of the
fact, whether or not, cause of action has arisen
within the jurisdiction of the Court, within whose
jurisdiction the registered office of the company
is situated.
(b) Section 134 of the Trade Marks Act and
Section 62 of the Copyright Act do not take away
right of the Plaintiff to institute the suit by resort
to Section 20 of the CPC, as Section 134 of the
Trade marks Act and Section 62 of the Copyright
Act provide an additional forum to the Plaintiff
alleging infringement of the registered
trademark or copyright, as the case may be. This
is clear from the inclusive definition of the
expression, ‘District Court having jurisdiction’
contained in Section 134(2) of the Trade Marks
Act and Section 62(2) of the Copyright Act. Thus,
the Plaintiff may file a suit for infringement of
trademark/copyright either at the place where
the Plaintiff voluntarily resides or carries on
business or personally works for gain by resort
to Section 62 of the Copyright Act and Section
134 of the Trade Marks Act, or at the place where,
‘the Defendant, or each of the Defendants where
there are more than one, at the time of
commencement of the suit, actually and
voluntarily resides, or carries on business, or
personally works for gain’. [Section 20(a)]; or
where any of the Defendants, 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
Defendants who do not reside, or carry on
business, or personally work for gain, as
aforesaid, acquiesce in such institution [section
20(b)]; or the cause of action wholly or in part,
arises [section 20(c)].
(c) The Plaintiff cannot file a suit alleging
infringement of trademark/copyright at a place
where it has a subordinate office, by resort to
Section 134 of the Trade Marks Act or Section 62
of the Copyright Act, unless one of the
conditions of Section 20 CPC are satisfied.”
35. I am in most respectful agreement with the views expressed
by Mr. Justice Sanghi. In my view, his reading of Sanjay Dalia is
correct on all counts.
36. What emerges from this discussion is this:
(a) a plaintiff suing under the Trade Marks Act or
Copyright Act can always file the suit in the jurisdiction
where he lives, works for gain or carries on business. In
the context of a company, given the view in Sanjay
Dalia, this would mean where the company has its
principal or registered office. All issues of cause of
action and situs or location of the defendant or the
cause of action are inconsequential. It makes no
difference where the defendant resides. It makes no
difference where the cause of action arose. It certainly
makes no difference that the plaintiff also happens to
have a branch office in another location where the
cause of action may have arisen or where the defendant
may reside or carries on business.
(b) Where the plaintiff has only one office, it presents no
difficulty. Where the plaintiff has multiple offices,
however, he has a limited choice. He may either bring a
Suit under Section 134(2) or Section 62(2), i.e., within
the jurisdiction where he resides; or he may invoke
Section 20 and file a suit where the Defendants reside
or work for gain or where the cause of action arose
wholly or in part. The fact that the Plaintiff has the
choice of bringing a suit based on Section 20 of the
CPC does not mean that his rights under Section
134(2) or Section 62(2) are in any way eroded, curtailed
or restricted.
(c) However, where the plaintiff chooses not to file a Suit
at his or its principal business or where his registered
office is located, and also chooses not to file a suit in a
jurisdiction covered by Section 20 of the CPC but
instead attempts to file the suit at some other location
where the plaintiff happens to have a subsidiary or
satellite office, but where there is absolutely nothing
else (neither cause of action nor any of the defendants)
the Plaintiff cannot invoke Section 134(2) or Section
62(2) to drag the Defendant to that distant location.
That, following the decision of the Supreme Court, is
the abuse that is required to be prevented. That is in
fact the only abuse that is required to be prevented.
(d) The Section 134(2) and Section 62(2) privilege or
advantage attaches to the registered office or principal
place of work. It is a privilege not to be used by
abandoning the registered office situs, abandoning the
Section 20 situs options, and travelling to some remote
location where there is neither defendant nor cause of
action. That is the mischief addressed in Sanjay Dalia.
To illustrate: the plaintiff has its registered office in
Mumbai. The defendant is in Delhi. The cause of
action arose in Delhi. The plaintiff also has another
branch office in Port Blair. A plaintiff can sue in
Mumbai or in Delhi, but not in Port Blair.
37. This view is consistent with the view of Mr. Justice Sanghi in
RSPL Ltd. In my view, it is the only possible reading of Sanjay Dalia
and the provisions of Section 134(2) of the TMA 1999, Section
62(2) of the CA 1957 and Section 20 of the CPC.
38. In this view of the matter, the preliminary issues in both the
matters are answered in the negative. This Court has jurisdiction to
try and entertain both the Suits.
39. The Plaintiff’s Notices of Motions will accordingly be set
down for hearing, since the pleading in both are complete. List both
Notices of Motions in both the Suits but separately for hearing and
final disposal in the week of 11th July 2016.
(G. S. PATEL, J.)
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