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CASE NO.:

Appeal (civil) 6248 of 1997

PETITIONER:

M/s. Dhodha House

RESPONDENT:

S.K. Maingi

DATE OF JUDGMENT: 15/12/2005

BENCH:

B.P. Singh & S.B. Sinha

JUDGMENT:

JUDGMENT

W I T H

CIVIL APPEAL NO. 16 of 1999

S.B. SINHA, J :

Extent of jurisdiction of a civil court to determine a lis as regard

infringement of the provision of the Copyright Act, 1957 (for short "the

1957 Act") and the Trade and Merchandise Marks Act, 1958 (for short "the

1958 Act") is in question in these appeals.

We would notice the fact of the matters separately.

Civil Appeal No. 6248 of 1997 :

The Appellant herein filed a suit against the Respondent to protect his

copyright, trade marks and common law rights as regard his art work/ label/

trade mark and wrapper contained in Annexure A to the memo of appeal

which the Respondent had allegedly infringed by using the impugned trade

mark/ art work/ label/ wrapper contained in Annexure B thereto.

According to the Appellant, the said art work/ label/ trade mark/

wrapper infringes the Appellant's trade mark registration 'Dhodha House'

under Registration No. 277714-B in class 30 under the 1958 Act, as also

copyright registered under the 1957 Act being registration No. A-5117 and

A-5330 of 1970. The Appellant also claims it to be a prior user of the said

trade mark and name and enjoys goodwill as well as reputation in respect

thereof since 1960.

It is not in dispute that the Appellant carries on business of sweet

meats in the district of Ghaziabad whereas the Respondent carries on the

similar business in the name and style of M/s. V.R.K. Todha Sweet House at

Kotkapura in the district of Faridkot. The Appellant herein filed a suit

before the District Judge, Ghaziabad wherein it also prayed for an order of

injunction. The learned 1st Addl. District Judge, Ghaziabad by an order

dated 17.1.1992 passed an order of injunction against the Respondent in the

following terms:

"Application 5-C is allowed to the extent that the

OP/defendants, their servants, dealers, stockists,

distributors, assigns, representatives and agents, are

restrained during the pendency of the suit, from

infringing the plaintiffs copyright existing in the art

work/ label and wrapper, duly registered at Nos. A-

5117/70 and A-5330/70 under the Indian Copyright Act,

1957 by using these in the art work involved in

defendant's labels, and wrappers entitled Manni's Todha

Sweet or any other labels and wrappers, confusingly

similar to the aforementioned art work, label and wrapper

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of the plaintiff. They are further restrained from passing

off their goods and business as and for the business and

goods of the plaintiff under the impugned trade mark

Todha with prefix Maingi's or its labels and wrapper

which are identical with deceptively similar to the trade

mark Dhodha with prefix Royal and its labels and

wrappers being used by the plaintiff in his distinctive get-

up, make-up, colour scheme, combination and manner of

writing."

The Respondent preferred an appeal thereagainst before the High

Court of Judicature at Allahabad which was marked as First Appeal From

Order No. 401 of 1992.

By an order dated 5.5.1997, the High Court inter alia held that the

Civil Court had no territorial jurisdiction to try the suit. The High Court was

further of the opinion that 'Dodha' is a name of a variety of sweet and it is

not a special product which is manufactured by the plaintiff alone.

The Appellant is, thus, before us.

Civil Appeal No. 16 of 1999 :

The defendant is the Appellant herein. Both the plaintiff and

Appellants carry on business in diesel engines at Rajkot in the State of

Gujarat. A suit on the original side of the Delhi High Court was filed inter

alia for perpetual injunction restraining infringement of trade mark,

copyright, trading style, passing off and for rendition of accounts. It has

been averred in the plaint that the plaintiff has registered a trade mark 'Field

Marshal'. Its label 'Field Marshal' is said to be registered also under the

Copyright Act, 1957 and it had been printing/ publishing the said purported

artistic work titled 'Field Marshal' in all its trade literatures, pamphlets,

stickers, calendars, diaries, etc. as also on the goods manufactured.

According to the plaintiff, the First Defendant herein has been registered

under the Companies Act and it proposed to start a business in the trading

style of 'Field Marshal' for the business of the goods of same kind and

description wherefor caution notice had been issued by it. It also sent letter

to the Registrar of Companies objecting to the incorporation of the said

company containing the word 'Field Marshal' or identical or deceptively

similar thereto. It is alleged that goods manufactured by the Appellants with

the plaintiff's trade marks are being sold in Delhi.

The alleged cause of action for filing the said suit has been averred in

paragraph 30 which reads as under:

"That the goods of the parties bearing the impugned trade

marks are also sold in the Union Territory of Delhi. The

Trade Marks Journals No. 823 dt. 16.9.83 and No. 876

dt. 1.12.85 and Journal No. 933 dt. 16.4.1988 were

published in India by the Trade Marks Registry in respect

of applications of the defendants for registration of the

impugned trade marks, including the Union Territory of

Delhi. Therefore, this Hon'ble Court has jurisdiction to

entertain and try the present suit. Moreover, the

jurisdiction of this Hon'ble Court is also attracted in view

of Section 62(2) of the Copyright Act."

The value of the suit for the purposes of court fee and jurisdiction was

fixed at Rs. 200/- each in relation to reliefs (i), (ii), (iii), (iv) and (v).

An application for injunction was filed by the First Respondent and by

an order dated 28th September, 1995, the said application was rejected inter

alia on the ground that the plaintiff has failed to prima facie show that the

Delhi High Court had the territorial as also the pecuniary jurisdiction in

relation thereto. The Plaintiff-Respondent No. 1 preferred an intra-court

appeal before the Division Bench of the said Court which was marked as

FAO (OS) 270 of 1995. By reason of the impugned judgment dated 10th

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March, 1998, the said appeal was allowed.

Before the Division Bench of the High Court, three contentions as

regard the jurisdiction of the Delhi High Court were raised; firstly, under

Section 62 of the Copyright Act, 1957, secondly, in view of the fact that the

defendants had sought for registration of trade mark at Delhi, and thirdly, the

defendants are selling goods under the impugned trade mark at Delhi and,

thus, plaintiff's right thereover had been violated at Delhi.

The Division Bench negatived the contention raised on behalf of the

Appellants herein that as both the parties are resident of and working for

gain at Rajkot and no sale having been effected by them within the territorial

jurisdiction of the court, the Delhi High Court had no territorial jurisdiction

to entertain the suit.

On the first contention, the Division Bench was of the opinion that a

composite suit based on infringement of trade mark, copyright, passing off

and for rendition of accounts of profits as also injunction having been filed,

the Delhi High Court had the territorial jurisdiction to entertain the suit.

On the second contention, the Division Bench relying on or on the

basis of its earlier decision in Jawahar Engineering Co. & Ors. Vs. M/s.

Jawahar Engineering Pvt. Ltd. [AIR 1984 Delhi 166] came to the opinion

that a plaintiff can even seek a restraint order against the threat that is still to

materialize once it comes to learn that the defendants had applied for

registration of trade marks at Delhi wherefor they can pray for injunction to

prevent any sale of the infringing product in Delhi.

The Bench did not go into the third question.

The two judgments before us, thus, have taken contrary views.

Cause of action, as is well-settled, is a bundle of facts which are

necessary to be proved in a given case. Cause of action, it is trite, if arises

within the jurisdiction of the court concerned empowers the court to

entertain the matter. Determination of territorial jurisdiction of a civil court

is governed by the provisions of the Code of Civil Procedure (for short, 'the

Code'). Section 16 of the Code provides for institution of the suits where

subject-matter of the suit is situate. Section 17 of the Code refers to the suits

for immovable property within jurisdiction of different courts. Section 18

refers to place of institution of a suit where local limits of jurisdiction of

courts are uncertain; whereas Section 19 of the Code contemplates suits for

compensation for wrongs to person or movables, Section 20 of the Code,

wherewith we are concerned in this case, provides that the suits which do

not come within the purview of Sections 16 to 19 of the Code are to be

instituted where the defendants reside or cause of action arises in the

following terms :

"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\027

(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 or 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

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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."

The jurisdiction of the District Court to determine a lis under the 1957

Act as also the 1958 Act must, thus, be instituted where the whole or a part

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

provides for an additional forum therefor in the following terms :

"(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."

Admittedly, no such additional forum had been created in terms of

the provisions of the 1958 Act.

The objects and reasons for engrafting the said provision show that

the same was done to enable the authors to file a suit for violation of the

1957 Act at the place where they reside. Submission made at the Bar,

however, is that there may be cases which give a composite cause of action

for initiating action both under the 1957 Act as also under the 1958 Act.

Reliance, in this behalf, has been placed on a definition of "mark" as

contained in Section 2(j) of the 1958 Act, to urge that artistic work within

the meaning of the 1957 Act is also a 'mark' within the meaning thereof and,

thus, different causes of action arising under both the Acts can be combined.

Reference, furthermore, has been made to Section 105 of the 1958 Act to

show that reclassification in respect of existing registration is permissible.

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

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

mattes 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.

Order II Rule 3 of the Code provides that the plaintiff may unite in

the same suit several causes of action against the same defendant, or the

same defendants jointly. The said order contemplates uniting of several

causes of action in the same suit. By necessary implication, a cause of

action for infringement of Copyright and a cause of action for infringement

of Trade Mark or a cause of action of passing off would be different. Even

if one cause of action has no nexus with another, indisputably Order II Rule

3 may apply. However, by reason of application of Order II Rule 3 of the

Code ipso facto would not confer jurisdiction upon a court which had none

so as to enable it to consider infringement of trade mark under the 1957 Act

as also the 1958 Act.

It is trite law that a judgment and order passed by the court having no

territorial jurisdiction would be nullity.

In Kiran Singh and Others vs. Chaman Paswan and Others [AIR 1954

SC 340], this Court observed :

"\005It is a fundamental principle well-established that a

decree passed by a court without jurisdiction is a nullity,

and that its invalidity could be set up whenever and

wherever it is sought to be enforced or relied upon, even

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at the stage of execution and even in collateral

proceedings. A defect of jurisdiction, whether it is

pecuniary or territorial, or whether it is in respect of the

subject-matter of the action, strikes at the very authority

of the court to pass any decree, and such a defect cannot

be cured even by consent of parties\005

A judgment or order passed by a court lacking territorial jurisdiction,

thus, would be coram non judice. Thus, if a district court, where the

plaintiff resides but where no cause of action arose otherwise, adjudicates a

matter relating to infringement of trade mark under the 1958 Act, its

judgment would be a nullity.

Mr. S.K. Bansal, the learned counsel appearing for the Appellants,

however, placed strong reliance on a decision of the Delhi High Court in

M/s Jawahar Engineering Company and Others, Ghaziabad v. M/s Jawahar

Engineers Pvt. Ltd., Sri Rampur, Dist. Ahmednagar, Maharashtra [1983 \026

PTC 207], wherein the question involved for determination was as to

whether the plaint filed therein should be returned in terms of Order VII

Rule 10 of the Code. In that case, the plaintiff had a registered trade mark

'Javahar' in respect of diesel oil engines whereas the defendant had applied

for registration of the trade mark 'Jawahar' in respect of diesel oil engines

for the States of Uttar Pradesh, Punjab, Haryana, Bihar, Rajasthan and the

Union Territories of Delhi and Chandigarh.

Although it was held that as diesel engines were not sold in Delhi, no

cause of action arose within the jurisdiction of Delhi High Court; nor the

advertisement published in a journal "Parwez" published from Ludhiana

would confer such jurisdiction. But it was opined that having regard to the

fact that an advertisement had appeared in the Trade Marks Journal as regard

application for registration of the trade mark of the defendant therein, the

Delhi High Court would have jurisdiction in the matter.

A Letters Patent Appeal was preferred thereagainst, wherein the

Division Bench of the High Court held :

"\005Section 20 of the Code of Civil Procedure

shows that a suit like the present can be filed wherever

the cause of action wholly or partly arises. The plaintiff

has prayed for an injunction regarding a threatened

breach of a registered trade mark. The learned single

Judge held that the Delhi Court does not have jurisdiction

on the ground of any sale having been made in Delhi, but

does have jurisdiction on account of the advertisement

having appeared in the Trade Marks Journal. The real

point which gives the Court jurisdiction is not the place

where the advertisement has appeared, but the fact that

the trade mark is sought for sale in Delhi amongst other

places. Furthermore, when an injunction is sought, it is

not necessary that the threat should have become a reality

before the injunction and it can even be sought for a

threat that is still to materialize."

The said decision has no application in the instant case for more than

one reason. For the purpose of registration of a trade mark, an application

must be filed in the branch office of the Registrar of Trade Marks. It is not

in dispute that under Section 5(3) of the 1958 Act, the Central Government

has issued a notification in the official gazette defining the territorial limits

within which an office of the Trade Marks Registry may exercise its

functions. The office of the Trade Marks Registry at New Delhi exercises

jurisdiction over the States of Haryana, Himachal Pradesh, Jammu &

Kashmir, Punjab, Rajasthan and Uttar Pradesh and the Union Territory of

Chandigarh and National Capital Territory of Delhi. Whereas in M/s.

Dhodha House v. S.K. Maingi, no such application has been filed,

admittedly in M/s Patel Field Marshal Industries & Ors. v. M/s P.M. Diesels

Ltd, the Delhi office has no jurisdiction as parties are residents of Rajkot and

an application was filed by the Appellant for registration of its trade mark at

Bombay. If an objection is to be filed, the same has to be filed at Bombay.

An advertisement by itself in a journal or a paper would not confer

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jurisdiction upon a court, as would be evident from the following

observations of this Court in Oil and Natural Gas Commission v. Utpal

Kumar Basu and Others [(1994) 4 SCC 711] :

"\005Therefore, broadly speaking, NICCO claims that a

part of the cause of action arose within the jurisdiction of

the Calcutta High Court because it became aware of the

advertisement in Calcutta, it submitted its bid or tender

from Calcutta and made representations demanding

justice from Calcutta on learning about the rejection of its

offer. The advertisement itself mentioned that the tenders

should be submitted to EIL at New Delhi; that those

would be scrutinised at New Delhi and that a final

decision whether or not to award the contract to the

tenderer would be taken at New Delhi. Of course, the

execution of the contract work was to be carried out at

Hazira in Gujarat. Therefore, merely because it read the

advertisement at Calcutta and submitted the offer from

Calcutta and made representations from Calcutta would

not, in our opinion, constitute facts forming an integral

part of the cause of action. So also the mere fact that it

sent fax messages from Calcutta and received a reply

thereto at Calcutta would not constitute an integral part of

the cause of action\005"

A cause of action will arise only when a registered trade mark is used

and not when an application is filed for registration of the trade mark. In a

given case, an application for grant of registration certificate may or may not

be allowed. The person in whose favour, a registration certificate has

already been granted indisputably will have an opportunity to oppose the

same by filing an application before the Registrar, who has the requisite

jurisdiction to determine the said question. In other words, a suit may lie

where an infringement of trade mark or copyright takes place but a cause of

action for filing the suit would not arise within the jurisdiction of the court

only because an advertisement has been issued in the Trade Marks Journal

or any other journal, notifying the factum of filing of such an application.

Strong reliance has also been placed on a recent decision of this Court

in Exphar SA and Another v. Eupharma Laboratories Ltd. and Another

[(2004) 3 SCC 688], wherein it was held :

"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."

In that case an allegation of violation of copyright was made,

wherefor the jurisdiction of the court was sought to be attracted stating :

"(a) the copyright of the plaintiffs (appellants) in the

"Maloxine" carton was being infringed by the

respondents; (b) the plaintiffs (appellants) carry on

business in Delhi and one of them has a registered office

in New Delhi. It was also stated that the defendants carry

on business for profit in New Delhi within the

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jurisdiction of the High Court."

No infringement of the trade mark as such was, thus, in question in

that case.

In any event, the questions which have been raised herein had not

been raised in Exphar SA (supra).

It is well-settled that a decision is an authority what it decides and not

what can logically be deduced therefrom. [See Bharat Forge Co. Ltd. v.

Utam Manohar Nakate (2005) 2 SCC 489; M.P. Gopalakrishnan Nair and

Anr. V. State of Kerala and Ors. (JT 2005 (4) SC 436) & Haryana State

Coop. Land Development Bank v. Neelam (2005) 5 SCC 91].

In Premier Distilleries Pvt. Ltd. v. Shashi Distilleries [2001 PTC 907

(Mad)], a Division Bench of the Madras High Court in a matter involving a

passing off action, was of the view :

"The cause of action in a suit for passing off, on

the other hand and as already observed, has nothing at all

to do with the location of the Registrar's office or the

factum of applying or not applying for registration. It is

wholly unnecessary for the plaintiff to prove that he had

applied for registration. The fact that the plaintiff had not

applied for registration will not improve the case of the

defendant either. Filing of an application for registration

of a trade mark, therefore, does not constitute a part of

cause of action where the suit is one for passing off."

It was further observed :

"The argument advanced that registration if

granted would date back to the date of application and

that the plaintiff would have the right to seek amendment

of the plaint to seek relief on the ground of infringement

as well, is wholly irrelevant so far as the cause of action

for bringing a suit for passing off is concerned. While it

may be convenient to the plaintiff to institute a suit in a

court where he may later on be able to bring a suit for

infringement of the trade mark, that convenience of the

plaintiff is in no way relevant for deciding as to whether

a cause of action for filing a suit for passing off can be

said to have arisen in a place where, the deceit alleged to

have been practised by the defendant had in fact, not

been practised within the jurisdiction of the court in

which the suit is brought."

The views expressed therein have our concurrence.

[See also Gold Seal Engineering Product Pvt. Ltd. & Ors. v.

Hindusthan Manufacturers and Ors. AIR 1992 (Bombay) 144]

The Allahabad High Court in the impugned judgment held :

"\005In the present case a bare perusal of the plaint would

show that the suit is based upon alleged infringement of

registered trade mark or relating to any right in a

registered trade mark or for passing off by the defendant

of any trade mark which is identical with or deceptively

similar to the plaintiff's trade mark. Such a suit cannot

be entertained by the Court at Ghaziabad in view of

Section 105 of the Trade and Merchandise Marks Act.

The mere fact that the Court may have jurisdiction to

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entertain the suit with respect to a cause of action under

the Copyright Act under Section 62 of the Act can be of

no avail. I am therefore of the opinion that the Court at

Ghaziabad has no territorial jurisdiction to try the suit."

In the event, the averments in the plaint disclose a cause of action

under the Copyright Act, indisputably, the same would survive but if the

cause of action disclosed is confined only to infringement of Trade and

Merchandise Act, or of passing off an action, the suit would not be

maintainable.

The Delhi High Court in its judgment placed strong reliance upon a

judgment of the same court in Tata Oil Mills Co. Ltd. v. Reward Soap

Works [AIR 1983 Delhi 286], wherein it was held that a composite suit

based on infringement of trade mark, copyright, passing off and for rendition

of accounts of profits, seeking to restrain the defendants from infringing its

trade mark and wrapper claiming the same to be identical with or

deceptively similar to the wrapper of the plaintiff mark, is maintainable,

holding :

"The comparative scope of a copyright and trade

mark registration are different, even though where a

design on a wrapper is registered under the Copyright

Act, there is, to an extent, an overlapping between the

two remedies. Some controversy is no doubt possible if

the mere jurisdiction of the Court to entertain an action

for infringement of copyright would also give the court

the necessary jurisdiction to deal with the corresponding

infringement of trade mark, where both constitute part of

a composite suit. In view of the undoubted jurisdiction

of this court in relation to the infringement of copyright ,

court would be justified in granting injunction of both the

trade mark and the copyright at this stage of the

proceedings, particularly, where there is a specific

averment in the plaint, whatever it may be worth, that the

plaintiff has been selling the goods, inter alia, within

territorial jurisdiction of this Court."

It was held that although in Dodha House (supra) Tata Oil Mills

(supra) was noticed but had not been distinguished on cogent grounds, the

former was not followed.

The Delhi High Court, as noticed hereinbefore, however, did not

advert to the third contention raised therein saying that the question as to

whether the defendants had been selling its product on a commercial scale at

Delhi was a question of fact and, thus, was required to be properly

determined in case evidence is led by the parties.

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?

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.

The 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

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to be a conscious action on the part of the Parliament. The intention of the

Parliament in not providing for an additional forum in relation to the

violation of the 1958 Act is, therefore, clear and explicit. The 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 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.

In Dhodha House (supra), admittedly the plaintiff-Appellant neither

resided at Ghaziabad nor carried on any business at the place of residence of

the respondent. In Patel Field Marshal (supra), the registered office of the

plaintiff-firm was at Rajkot. Ordinarily, the residence of a company would

be where registered office is [See Morgan Stanley Mutual Fund Vs. Kartick

Das (1994) 4 SCC 225].

The expression 'carries on business' and the expression 'personally

works for gain' connotes two different meanings. For the purpose of

carrying on business only presence of a man at a place is not necessary.

Such business may be carried at a place through an agent or a manager or

through a servant. The owner may not event visit that place. The phrase

'carries on business" at a certain place would, therefore, mean having an

interest in a business at that place, a voice in what is done, a share in the gain

or loss and some control thereover. The expression is much wider than

what the expression in normal parlance connotes, because of the ambit of a

civil action within the meaning of section 9 of the Code. But it is necessary

that the following three conditions should be satisfied, namely :-

"(1) The agent must be a special agent who attends

exclusively to the business of the principal and carries it

on in the name of the principal and not a general agent

who does business for any one that pays him. Thus, a

trader in the mufassil who habitually sends grain to

Madras for sale by a firm of commission agents who

have an independent business of selling goods for others

on commission, cannot be said to "carry on business" in

Madras. So a firm in England, carrying on business in

the name of A.B. & Co., which employs upon the usual

terms a Bombay firm carrying on business in the name of

C.D. & Co., to act as the English firm's commission

agents in Bombay, does not "carry on business" in

Bombay so as to render itself liable to be sued in

Bombay.

(2) The person acting as agent must be an agent

in the strict sense of the term. The manager of a joint

Hindu family is not an "agent" within the meaning of this

condition.

(3) To constitute "carrying on business" at a

certain place, the essential part of the business must take

place in that place. Therefore, a retail dealer who sells

goods in the mufassil cannot be said to "carry on

business" in Bombay merely because he has an agent in

Bombay to import and purchase his stock for him. He

cannot be said to carry on business in Bombay unless his

agent made sales there on his behalf. A Calcutta firm

that employs an agent at Amritsar who has no power to

receive money or to enter into contracts, but only collects

orders which are forwarded to and dealt with in Calcutta,

cannot be said to do business in Amritsar. But a Bombay

firm that has a branch office at Amritsar, where orders

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are received subject to confirmation by the head office at

Bombay, and where money is paid and disbursed, is

carrying on business at Amritsar and is liable to be sued

at Amritsar. Similarly a Life Assurance Company which

carries on business in Bombay and employs an agent at

Madras who acts merely as a Post Office forwarding

proposals and sending moneys cannot be said to do

business in Madras. Where a contract of insurance was

made at place A and the insurance amount was also

payable there, a suit filed at place B where the insurance

Co. had a branch office was held not maintainable.

Where the plaintiff instituted a suit at Kozhikode alleging

that its account with the defendant Bank at its Calcutta

branch had been wrongly debited and it was claimed that

that court had jurisdiction as the defendant had a branch

there, it was held that the existence of a branch was not

part of the cause of action and that the Kozhikode Court

therefore had no jurisdiction. But when a company

through incorporated outside India gets itself registered

in India and does business in a place in India through its

agent authorized to accept insurance proposals, and to

pay claims, and to do other business incidental to the

work of agency, the company carries on business at the

place of business in India."

[See Mulla on the Code of Civil Procedure (Act V of

1908) - Fifteenth Edition - Volume I, Pages 246-247.]

A corporation in view of Explanation appended to Section 20 of the

Code would be deemed to be carrying on business inter alia at a place where

it has a subordinate office. Only because, its goods are being sold at a place

would thus evidently not mean that it carries a business at that place.

In Dhodha House (supra), the High Court has positively arrived at a

finding that the infringement complained of primarily is that of the 1958

Act and not under Copyright Act.

In Patel Field Marshal (supra) again 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 Division

Bench of the High Court, as has been noticed hereinbefore, did not advert to

the issue as to whether the defendant had been selling its product in Delhi on

commercial scale or not. It is, therefore, not necessary for us also to dilate

further on the said question. We have furthermore noticed hereinbefore that

the advertisement appearing in a journal or newspapers by itself would not

confer any jurisdiction on the court, if it otherwise did not have any.

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 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.

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. 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.

It is not in dispute before us that the application for registration of the

trade mark was to be filed either at Bombay or at Ahmedabad. The

objections thereto by the plaintiff were also required to be filed at the said

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places. The jurisdiction of the Delhi court could not have been invoked only

on the ground that advertisement in respect thereof was published in the

Trade Marks Journal. Section 62 of the 1957 Act, therefore, will have no

application. The plaintiff has no branch office at Delhi. Its manufacturing

facilities are not available at Delhi. Both its trade mark and copyright are

also not registered at Delhi.

Our attention has been drawn to the provisions of Section 45 of the

Trade Marks Act; sub-section 2(m) whereof shows that the marks includes a

device, brand, brand, heading , label, ticket, name, signature, word, letter,

numeral, shape of goods, packaging or combination of colours or any

combination thereof. It may be so that in a given case if such label is

registered, a violation thereof may give rise to cause of action under the said

Act; but only because in a given case, the activities on the part of the

defendant may give rise to a cause of action both under the 1958 Act as also

under the 1957 Act, the same would not mean, irrespective of the nature of

violation, the plaintiff would be entitled to invoke the jurisdiction of the

court in terms of sub-section (2) of Section 62 of the 1957 Act.

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.

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.

In Patel Field Marsahal (supra), however, we may notice that a

subsequent development has taken place, namely, after the remand, a learned

Single Judge of the Delhi High Court is said to have granted an order of

injunction in favour of the plaintiff-respondent and the matter is pending

before the Division Bench. As we have not expressed our views on the

merit of the matter, it is needless to mention that the Division Bench shall

proceed to determine the questions raised before it on their own merits.

For the reasons aforementioned, Civil Appeal No. 6248 of 1997 filed

by M/s Dhodha House is dismissed and Civil Appeal No. 16 of 1999

preferred by M/s Patel Field Marshal is allowed. The parties shall pay and

bear their own costs.

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