REPORTABLE

IN THE SUPREME COURT OF INDIA

CIVIL APPELLATE JURISDICTION

CIVIL APPEAL NO. 3637 OF 2008

(Arising out of SLP (C) No.20941 of 2006)

Dabur India Ltd. … Appellant

Versus

K.R. Industries … Respondent

J U D G M E N T

S.B. SINHA, J.

1.Leave granted.

2.Appellant is a manufacturer of a product known as ‘Dabur Red Tooth

Powder’ or ‘Dabur Lal Dant Manjan’. In the year 1993, it had allegedly

adopted a unique colour combination and arrangement of features which

was subsequently changed in December 1999.

3.Respondent herein is also said to be manufacturer of a tooth powder

known as ‘Sujata’. It is said to have infringed the copy right of the

appellant. A suit was filed by the appellant against the respondent in the

Delhi High Court. Paragraph 7 of the plaint reads thus :

“7.In December 1999, the plaintiff adopted a

new carton while retaining the conical shape and

white cap for their product which is described

hereinbelow :

·On one column has the words RED TOOTH POWDER

within a yellow blurb.

·Immediately below the blurb is an oval shaped picture of a

family with a yellow background.

·Above these two features there is a legend within a blurb

mentioning the fact that this is a new pack.

·The column immediately next to it contain the same features

in the Devnagri script.

·A third column sets out the details including Composition,

Weight, MRP and Manufacturers Name etc.

·The top half of the third column contains an oval shaped

device containing a diagrammatic representation of the

herbs that constitute the ingredients of Plaintiffs product.”

4.It was alleged that the said carton constituted an ‘artistic work’ within

the meaning of Section 25-C of the Copyright Act, 1957 (the 1957 Act).

Respondent is said to have been using an identical colour scheme lay out,

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arrangement of features and get up as that of the plaintiffs, the essential

features whereof are :

·“One column has the words RED TOOTH POWDER within

a yellow blurb.

·A column which contains the representation of a family in

an oval shape picture.

·There is a similar representation in the Devnagri script in

another column.

·The details of the product are set out in another column.

·Above the details of the product there is advice of a lotus,

similar to the positioning of the plaintiff’s herbs in the

plaintiff’s carton.”

5.The reliefs claimed for by the plaintiff in the said suit, inter alia, are :

“(A)An order of permanent injunction

restraining the defendant, their partners,

proprietors and/or promoters, as the case may be,

their servants and agents, representatives, dealers

and all others acting for and on their behalf from

reproducing any of the artistic features of the

plaintiff’s DABUR RED TOOTH POWDER

container/ packaging/pouch, including its colour

combination, get up, layout or arrangement of

features, printing, publishing, using or otherwise

reproducing any of the artistic features thereof in

any material from amounting to an infringement of

copyright.

(B)An order of permanent injunction

restraining the defendants, their partners,

proprietors and/or promoters, as the case may be,

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their servants and agents, representatives, dealers

and all others acting for and on their behalf from

manufacturing, selling, offering for sale or

otherwise directly or indirectly dealing in tooth

powder packed in the impugned packaging or any

other packaging as may be a slavish imitation

and/or a substantial reproduction of the DABUR

RED TOOTH POWDER

container/packaging/pouch or from committing

any other act as is likely to cause confusion and

deception amounting to passing off.”

6.Respondent filed an application in the suit purported to be under

Order 7 Rule 11 of the Code of Civil Procedure, 1908 (hereinafter referred

to as ‘the Code’) contending that as the defendant is resident of Andhra

Pradesh, the Delhi High Court had no jurisdiction.

7.By reason of the impugned judgment and order dated 22.5.2006, a

learned Single Judge of the High Court accepted the said contention of the

respondent.

8.An intra court appeal preferred thereagainst has been dismissed by a

Division Bench of the said Court holding that the matter is covered by the

decision of this Court in Dhodha House v. S.K. Maingi, [(2006) 9 SCC 41].

It was stated :

“The learned Single Judge has also held that so far

as the aforesaid relief relating to passing off is

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concerned, Delhi court does not have any

territorial jurisdiction as the respondent/defendant

is from Andhra Pradesh and there is no

documentary evidence to show that the respondent

was selling goods in Delhi. We agree with the

aforesaid findings and conclusions recorded by the

learned Single Judge. Accordingly, we find no

merit in the submissions of the counsel appearing

for the appellant that the composite suit of

infringement of copyright and passing off would

lie in the same forum. We also do not find any

error in the judgment of the learned Single Judge

as in our considered opinion so far the relief for

passing off is concerned, the same is covered by

the decision of the Supreme Court in Dhodha

House case.”

9.Mr. Fali S. Nariman, learned senior counsel appearing on behalf of

the appellant, submits that the Division Bench of the High Court committed

a serious error in passing the impugned judgment in so far as it failed to take

into consideration the effect of a consolidated suit under the 1957 Act as

also the Trade Marks Act, 1958 (for short ‘the 1958 Act’), as would be

evident from the following excerpts of Dhodha House (supra) :

“22. We are not concerned in this case with the

maintainability of a composite suit both under the

1957 Act and the 1958 Act. Indisputably, if such a

situation arises, the same would be permissible;

but the same may not be relevant for the purpose

of determining the question of a forum where such

suit can be instituted. Sub-section (2) of Section

62 of the 1957 Act provides for a non obstante

clause conferring jurisdiction upon the District

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Court within the local limits of whose jurisdiction,

at the time of the institution of the suit or other

proceeding, the persons instituting the suit or other

proceedings have been residing. In terms of sub-

section (1) of Section 62, suit can be instituted and

the proceedings can be initiated in respect of

matters arising under the said chapter for

infringement of the copyright in any work or the

infringement of any other right conferred

thereunder. It does not confer jurisdiction upon a

District Court where the plaintiff resides, if a

cause of action arises under the 1958 Act.

XXX XXX XXX

43. The short question which arises for

consideration is as to whether causes of action in

terms of both the 1957 Act and the 1958 Act

although may be different, would a suit be

maintainable in a court only because it has the

jurisdiction to entertain the same in terms of

Section 62(2) of the 1957 Act?

44. A cause of action in a given case both under

the 1957 Act as also under the 1958 Act may be

overlapping to some extent. The territorial

jurisdiction conferred upon the court in terms of

the provisions of the Code of Civil Procedure

indisputably shall apply to a suit or proceeding

under the 1957 Act as also the 1958 Act. Sub-

section (2) of Section 62 of the 1957 Act provides

for an additional forum. Such additional forum

was provided so as to enable the author to file a

suit who may not otherwise be in a position to file

a suit at different places where his copyright was

violated. Parliament while enacting the Trade and

Merchandise Marks Act in the year 1958 was

aware of the provisions of the 1957 Act. It still did

not choose to make a similar provision therein.

Such an omission may be held to be a conscious

action on the part of Parliament. The intention of

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Parliament in not providing for an additional

forum in relation to the violation of the 1958 Act

is, therefore, clear and explicit. Parliament while

enacting the Trade Marks Act, 1999 provided for

such an additional forum by enacting sub-section

(2) of Section 134 of the Trade Marks Act. The

court shall not, it is well settled, readily presume

the existence of jurisdiction of a court which was

not conferred by the statute. For the purpose of

attracting the jurisdiction of a court in terms of

sub-section (2) of Section 62 of the 1957 Act, the

conditions precedent specified therein must be

fulfilled, the requisites wherefor are that the

plaintiff must actually and voluntarily reside to

carry on business or personally work for gain.”

10.Learned counsel would contend that the jurisdiction of the court to

entertain a composite suit under the 1957 Act and the 1958 Act should be

determined having regard to the provisions of Section 55 of the former.

Then term ‘Law’ within the meaning of the said provision, it was submitted,

would not only include a statute law but also the common law and, thus,

viewed from that perspective a composite suit for infringement of a

copyright as also passing of shall be maintainable. Strong reliance in this

behalf has also been placed on Exphar Sa & Anr. v. Eupharma Laboratories

Ltd. & Anr. [(2004) 3 SCC 688].

11.Mr. Shailen Bhatia, learned counsel appearing on behalf of the

respondent, on the other hand, would submit that this Court in Dhondha

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House (supra) categorically held that the cause of action for infringement of

the 1957 Act and that of the 1958 Act are distinct and separate.

12.Order II Rule 3 of the Code, it was submitted, deals with pecuniary

jurisdiction and not the territorial jurisdiction of the Court.

Drawing our attention to the provisions contained in Section 134 of

the Trade Marks Act, 1999, the learned counsel would contend that in

relation to a passing off the action, even the Parliament did not think it

expedient that any provision giving an option to the plaintiff to file a suit

where it resides and not the defendant.

13.Before adverting to the rival contentions of the parties, as noticed

hereinbefore, we may notice the provision of sub-section (1) of Section 55

and sub-section (2) of Section 62 of 1957 Act, which read :-

“Section 55. Civil remedies for infringement of

copyright—(1) Where copyright in any work has

been infringed, the owner of the copyright shall,

except as otherwise provided by this Act, be

entitled to all such remedies by way of injunction,

damages, accounts and otherwise as are or may be

conferred by law for the infringement of a right;

Section 62—Jurisdiction of court over matters

arising under this Chapter

(1) … ….

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(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

institution of the suit or other proceeding, the

person instituting the suit or 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.”

Sub-section (2) of Section 27 of the 1958 Act reads :-

“27.No action for infringement of unregistered

trade mark. –

(1)…. ….

“(2) Nothing in this Act shall be deemed to affect

rights of action against any person for passing

off goods as the goods of another person or the

remedies in respect thereof.”

Sub-section 2 of Section 106 of 1958 Act reads :-

“Section 106 - Reliefs in suits for infringement or

for passing off.-

(1)….. ……

(2) Notwithstanding anything contained in sub-

section (1), the court shall not grant relief by way

of damages (other than nominal damages) or an

account of profits in any case--

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(a) where in a suit for infringement of a

trade mark, the infringement complained of

is in relation to a certification trade mark; or

(b) where in a suit for infringement the

defendant satisfies the court--

(i) that at the time he commenced to use the

trade mark complained of in the suit he was

unaware and had no reasonable ground for

believing that the trade mark of the plaintiff

was on the register or that the plaintiff was

registered user using by way of permitted

use; and

(ii) that when he became aware of the

existence and nature of the plaintiffs right in

the trade mark, he forthwith ceased to use

the trade mark in relation to goods in

respect of which it was registered; or

(c) where in a suit for passing off the

defendant satisfies the court--

(i) that at the time he commenced to use the

trade mark complained of in the suit he was

unaware and had no reasonable ground for

believing that the trade mark of the plaintiff

was in use; and

(ii) that when he became aware of the

existence and nature of the plaintiffs trade

mark, he forthwith ceased to use the trade

mark complained of.”

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14.We may also at this stage notice the provisions of the Trade Marks

Act, 1999, (for short, ‘1999 Act’), Section 134 whereof reads :-

“Section 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 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 (2),

"person" includes the registered proprietor and the

registered user.”

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Sub-section (1) of Section 135 of the 1999 Act reads :-

“Section 135.Relief in suits for infringement or for

passing off.—(1) The relief which a court may

grant in any suit for infringement or for passing

off referred to in section 134 includes injunction

(subject to such terms, if any, as the court thinks

fit) and at the option of the plaintiff, either

damages or an account of profits, together with or

without any order for the delivery-up of the

infringing labels and marks for destruction or

erasure.”

15.The question which was posed by the learned Single Judge is as

under:-

“The next question, however, which is more

important is whether the plaintiff can combine the

two causes of action one under the Copyright Act

and the second under the Act of 1958 in a situation

where this court has the jurisdiction in so far as

cause of action under the Copyright Act is

concerned but has no territorial jurisdiction to

entertain the cause of action relating to Act of

1958.”

16.Noticing the provisions of Order II Rule 2 and 3 of the Code of Civil

Procedure enabling the plaintiff to combine more than one cause of actions,

it was opined that the said provisions relate to pecuniary jurisdiction. The

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said jurisdiction, however, can be exercised only in the event the court has

otherwise jurisdiction in respect of the cause of action wherefor the action

has been brought.

17.The learned Single Judge noticed some precedents and opined :-

“13.Normally, I would have felt myself bound

by the aforesaid two judgments which are not only

of this court but relate to same subject matter,

namely, joining of two causes of action under

trademark and copyright law. Even if I hold

different opinion, the normal course of action

would have been to refer the matter to the Division

Bench. However, this is not necessary in the

instant case in view of the fact that the controversy

now stands settled by the Supreme Court in

Dhodha House (supra).”

18.The Division Bench of the High Court on the other hand while

holding that the High Court has jurisdiction to adjudicate and decide upon

the relief of infringement of copyright observed that it would be open to the

appellant to file a fresh suit in the court of competent jurisdiction in respect

of its action for passing off and thus the plaint is required to be returned for

filing in the court of competent jurisdiction only in relation thereto.

19.In Dhodha House (supra) this Court was concerned with the

correctness of judgments of the Allahabad High Court in Surendra Kumar

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Maingi v. M/s. Dodha House, [AIR 1998 Allahabad 43] and the decision

of the Delhi High Court in : P.M. Diesels Ltd. v. M/s. Patel Field Marshal,

[ AIR 1998 Delhi 225 ]

20.It was clearly held that a judgment passed by a court having no

territorial jurisdiction is a nullity. As regards the cause of action under the

1957 Act and a cause of action under the 1958 Act and or a passing off

action, it was held that sub-section (2) of Section 62 would confer

jurisdiction on a court where the plaintiff resides. The cause of action in

respect of others was stated to be where the defendant resides.

It was also noticed that in a given case the petition under the 1957

Act or 1958 Act may be overlapping, holding :-

“44. The territorial jurisdiction conferred upon

the court in terms of the provisions of the Code of

Civil Procedure indisputably shall apply to a suit

or proceeding under the 1957 Act as also the 1958

Act. Sub-section (2) of Section 62 of the 1957 Act

provides for an additional forum. Such additional

forum was provided so as to enable the author to

file a suit who may not otherwise be in a position

to file a suit at different places where his copyright

was violated. Parliament while enacting the Trade

and Merchandise Marks Act in the year 1958 was

aware of the provisions of the 1957 Act. It still did

not choose to make a similar provision therein.

Such an omission may be held to be a conscious

action on the part of Parliament. The intention of

Parliament in not providing for an additional

forum in relation to the violation of the 1958 Act

is, therefore, clear and explicit.”

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21.Noticing that whereas in Dhoda House (supra) the infringement

complained of primarily was that of 1958 Act and not under the 1957 Act,

in Patel Field Marshal (supra) the thrust was on the sale of products and/or

advertisement by the appellant for registration of trade marks in the Trade

Marks Journal and other local papers.

The law was stated in the following terms :-

“54. For the purpose of invoking the jurisdiction

of a court only because two causes of action joined

in terms of the provisions of the Code of Civil

Procedure, the same would not mean that thereby

the jurisdiction can be conferred upon a court

which had jurisdiction to try only the suit in

respect of one cause of action and not the other.

Recourse to the additional forum, however, in a

given case, may be taken if both the causes of

action arise within the jurisdiction of the court

which otherwise had the necessary jurisdiction to

decide all the issues.”

22.What would, however, be the nature of composite suit, was also be

taken note of. The Court observed :-

“55. In this case we have not examined the

question as to whether if a cause of action arises

under the 1957 Act and the violation of the

provisions of the Trade Marks Act is only

incidental, a composite suit will lie or not, as such

a question does not arise in this case.”

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It is in the aforementioned context, submission of Mr. Nariman that a

composite suit would be maintainable having regard to sub-section (1) of

Section 55 of the 1957 Act must be considered.

23.Sub-section (1) of Section 55 of 1957 Act provides for the remedies

in terms whereof the plaintiff shall be entitled to all reliefs by way of

injunction, damages, accounts and otherwise as are or may be conferred by

law for the infringement of a right. It must be read as ‘ejusdem generis’. It

must take its colour from the words, ‘any proceeding’ namely the right to

obtain a decree by way of injunction, decree for damages, accounts or other

incidental reliefs which can be granted by a civil court. Such a provision

can be found in the Code of Civil Procedure also, namely Order VII Rule 7

thereof. It is, therefore, in our opinion, would not be correct to read the

word “as are or may be conferred by law” to mean, any other law, violation

whereof although would give rise to separate and distinct cause of action.

Under the Code claims arising under a statutes governing substantive or

procedural law, a number of remedies may be combined. The Court may

grant an order of injunction even in a passing off action. It is trite that

where the court has the jurisdiction/power to adjudicate, it will necessarily

have the incidental power therefor. It may, however, be different if the

Court may have exercised a power which is not provided for as a

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supplemental proceeding e.g. Section 94 of the Code. {[See State of Punjab

and Anr. v. Devans Modern Brewaries Ltd. and Anr [(2004) 11 SCC 26]}.

24.Thus, whereas an incidental power is inherent in the court, a

supplemental power may also be exercised, keeping in view the ultimate

relief which may be granted by it. We may notice that this Court in Sakiri

Vasu v. State of U.P. and others, [ (2008) 2 SCC 409 ] held that the

Magistrate will have power to grant interim maintenance, although no such

provision existed in Section 125 of the Code of Criminal Procedure, 1973.

Similarly in Hindustan Lever Ltd. v. Ashok Vishnu Kate, [ (1995) 6

SCC 326 ] this Court has held that the Labour Court will have the power to

grant injunction as an incidental power.

25.If a person is found to be guilty of violation of copyright he will be

bound to pay damages. For the purpose of quantification of damages,

taking of the accounts may be necessary and it is in this behalf the

Parliament thought it fit to use the word “otherwise”. Thus the power

conferred by law within the meaning of sub-section (1) of Section 55 of

1957 Act qualifies the power of the court to grant remedies as envisaged

thereunder if any other cause of action arose under a different Act. An

action for passing off is common law right but the same does not determine

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the jurisdiction of the court. For exercising such jurisdiction, the provisions

of the Code would be applicable. 1957 Act being a special law would, thus,

prevail over the general law, viz., the Code.

26.Exphar Sa (supra) cannot be said to have any application in the

instant case. The question which arose for consideration therein was as to

whether the jurisdiction of a court under sub-section (2) of Section 62 of the

1957 Act is wider than that of the court specified under the Code of Civil

Procedure and thus a person instituting a suit having any claim on the

ownership of the copy right which has been infringed, would not be a

ground for holding that he would not come within the purview of sub-

section (2) Section 62 of the 1957 Act, as he had been served with a ‘cease

and desist’ notice, opining :-

“13. It is, therefore, clear that the object and

reason for the introduction of sub-section (2) of

Section 62 was not to restrict the owners of the

copyright to exercise their rights but to remove

any impediment from their doing so. Section 62(2)

cannot be read as limiting the jurisdiction of the

District Court only to cases where the person

instituting the suit or other proceeding, or where

there are more than one such persons, any of them

actually and voluntarily resides or carries on

business or presently works for gain. It prescribes

an additional ground for attracting the jurisdiction

of a court over and above the “normal” grounds as

laid down in Section 20 of the Code.”

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27.There cannot be any doubt whatsoever that the Parliament having

inserted sub-section (2) in Section 62 of the 1957 Act, the jurisdiction of the

Court thereunder would be wider than the one under Section 20 of the Code.

The object and reasons for enactment of sub-section (2) of Section 62 would

also appear from the report of the Committee, as has been noticed by this

Court being a provision which has been specially designed to confer an

extra benefit upon the authors who were not in a position to instate

copyright infringement proceeding before the Courts. It is in the

aforementioned context the law laid down by this Court in paragraph 13 of

Dhonda House (Supra) must be understood.

28.If the impediment is sought to be removed by inserting an incidental

provision, there cannot be any doubt the court could be entitled to pass an

interim order, but the same by no stretch of imagination can be extended to

a cause of action which is founded on separate set of facts as also rights and

liabilities of a party under, a different Act. In Dhoda House (supra),

although Exphar Sa (supra) was not noticed, the distinction would be

apparent from the following :-

“50. In this case, the Delhi High Court could not

have invoked its jurisdiction in terms of the 1957

Act. The primary ground upon which the

jurisdiction of the original side of the High Court

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was invoked was the violation of the 1958 Act, but

in relation thereto, the provisions of sub-section

(2) of Section 62 of the 1957 Act could not be

invoked.

51. The plaintiff was not a resident of Delhi. It has

not been able to establish that it carries on any

business at Delhi. For our purpose, the question as

to whether the defendant had been selling its

produce in Delhi or not is wholly irrelevant (sic).

It is possible that the goods manufactured by the

plaintiff are available in the market of Delhi or

they are sold in Delhi but that by itself would not

mean that the plaintiff carries on any business in

Delhi.”

29.What then would be meant by a composite suit? A composite suit

would not entitle a court to entertain a suit in respect whereof it has no

jurisdiction, territorial or otherwise. Order II Rule 3 of the Code

specifically states so and, thus, there is no reason as to why the same should

be ignored. A composite suit within the provisions of the 1957 Act as

considered in Dhoda House (supra), therefore, would mean the suit which is

founded on infringement of a copy right and wherein the incidental power

of the Court is required to be invoked. A plaintiff may seek a remedy which

can otherwise be granted by the court. It was that aspect of the matter

which had not been considered in Dhoda House (supra) but it never meant

that two suits having different causes of actions can be clubbed together as a

composite suit.

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30.For the reasons aforementioned we do not find any merit in this

appeal which fails and is dismissed with costs. Counsel’s fee assessed at

Rs.50,000/-.

………………………….J.

[S.B. Sinha]

..…………………………J.

[Lokeshwar Singh Panta]

New Delhi;

May 16, 2008

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