Issues of Jurisdiction in IP laws

Intellectual property law is the rising sun of India. Churping of birds attract the human attention in morning, like wise, issue of Jurisdiction in IP cases attract the attention of legal fraternity.The issue of Jurisdiction is Venus in the galaxy called 'IP laws'.

Let me discuss the issue of Jurisdiction in IP laws in accordance with the respective Acts.

1) TRADEMARKS ACT,1999.

(A) Suit for Infringement of Trademark 

 Illustration

Mr. A is a registered proprietor of a Trademark 'X' for goods 'Y' in Ahmedabad.  The case of Mr. A is that Mr. B carrying on business in Mumbai, is using identical and/or deceptively similar Trademark for the identical goods  and thereby Mr. B is infringing the statutory rights of Mr. A.

Mr. A is willing to file a suit for infringement of Trademark.  Which court has jurisdiction to entertain and adjudicate the case of Mr. A. ?

Answer of this question is district court of Ahmedabad has jurisdiction to entertain and adjudicate the suit for infringement of Trademark as the words " the person/s  instituting the suit,actually  and voluntarily resides or carries on businesd or personalky works for gain " are used   the provisions of section 134 (2) of the Trademarks Act,1999. Further, section 134(2) begins with the words " For the purpose of clauses (a) and (b) of sub- section (1), District Court having jurisdiction .."  Hence what section 134(1) says is  required to be seen. 

Section 134 (1) says, " No suit 

(a) for the infringement of a registered trademark ; or

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

(c) for passing off arsing out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trademark ,whether registered or unregistered. shall be instituted in any court inferior to a District Court having jurisdiction to try any suit. 

Now if the provisions of 134(1) and (2) of the Act are required to be read combinedly.  Such combined reading establishes that clause (c) of section 134 (1)  is not incorporated in  the provisions of section 134(2). Only (a) and (b) of sub section 1 are incorporated. Hence section 134 is applicable only for infringement of registered trademark and not for passing off action, hence Mr. A of the above-mentioned illustration is entitled to file a suit of infringement of his registered Trademark in Ahmedabad District Court.

(B) Suit for Passing off Action

As far as passing off action is concerned, the provisions of section 134 of the Act, is not applicable.

In that case  if Mr. A of illustration is willing to take action of passing off action in Ahmedabad, he has to establish that the goods of Mr. B under the impugned trademark is being sold in Ahmedabad at the time of file of suit for passing off action. That means his action is based on the terms " where the cause of action is arisen". It means section 20 of CPC is invoked because section 134 of Trademarks Act is silent about the terms "where the cause of action arises". Hence the help of section 20 of CPC is required to be taken for filing a suit in Ahmedabad Court by Mr. A for passing off action along with infringement action. 

Suppose the goods of Mr. B is not being sold in Ahmedabad,  then ? 

Under such circumstances, Mr. A is only entitled to file a suit for infringement action in Ahmedabad Court and not for passing off action.  A suit for passing off action is to be filed in Mumbai where Mr.B resides, carries on business or works for personal gain or cause of action arises in view of section 20 of CPC. 

(C) Suit for groundless threat u/s.142 of the Trademarks Act,1999:

The plain reading of section 134 read with 142 of the Trademarks Act, does not invoke the provisions of section 134 as it is silent about the filing of suit for groundless threat as mentioned in section 142 of the Act. Meaning thereby, suit for groundless threat can not be filed on the basis of the terms " the person/s  instituting the suit,actually  and voluntarily resides or carries on businesd or personalky works for gain " as mentioned in section 134 of the Act, but it can be filed on the basis of the (1) cause of action being arisen and (2) where the defendant resides or  carry on business or works for personal gain in accordance with the provisions of section 20 of CPC. Section 142(4) only speaks about instituting the suit in District Court but it is silent about which District Court.

2) THE COPYRIGHT ACT,1957

(A) Suit for infringement of Copyright:

Example: 

Mr. A is an author and owner of a book, residing in Ahmedabad. Mr. B, a resident of Mumbai makes a substantial and material reproduction of the book of Mr. A for sale of it in Mumbai and thereby infringes the Copyright of Mr. A. Which District Court has jurisdiction,  Ahmedabad Court or Mumbai Court ? 

The wordings of the provisions of section 134 of Trademarks Act, 1999 are similar to that of the provisions of Section 62 of the Copyright Act,1957. Meaning thereby, whenever there is infringement of Copyright, suit is filed in the court where plaintiff resides or carries on business or works for personal gain. Hence, the answer is Ahmedabad District court has jurisdiction as per section 62 of Copyright Act, of course, Mumbai Court has also jurisdiction to entertain and adjudicate the suit on the basis of ' cause of action being arisen' as per section 20 of CPC.

(B) Suit for groundless threat:

Section 60 of the Cooyright Act,1957 talks about the legal proceedings for groundless threats. The question is arisen that  whether the term " or the infringement of any other right " as mentioned in section 62(1) includes the right to file a suit for groundless threat? If yes, then ,as per  section 62 (2), the suit for groundless threat can be filed where the plaintiff of that suit actually or voluntarily resides or carries on business or personally works for gain. The proceeding of groundless threat is considered as civil proceeding arising under chapter 12 I.e. civil remedies of the Copyright Act.

3) The Designs Act, 2000

A) Suit for infringement of Copyright in Design:

Illustration:

Mr. A, being situated in Ahmedabad, is a registered proprietor of a design of an article and has copyright in design of that article.  The design of that article  is infringed by B who is situated in Kolkatta. 

Which court has jurisdiction to entertain and adjudicate the suit for infringement of registered design in this case ? 

Answering this question, let the second proviso of provisions of section 22 (2) of the Designs Act,2000 be referred. This second proviso says that suit seeking relief under S. 22(2) shall be insituted in the court of District Judge. This provision is client about the institution of the suit of which court, either the court where plaintiff is situated or the court where the defendant is situated or the court where the cause of action is arisen. Section 22 of the Act has no such wordings as  "the person/s  instituting the suit,actually  and voluntarily resides or carries on businesd or personalky works for gain "  which are provided in section 134 of the Trademarks Act,1999 and in section 62 of the Copyright Act, 1957. 

Hence, it is established that the intention of legislature is very clear that suit for infringement of design is not filed in the District Court where the plaintiff is situated or is residing or carrying on businesd or is working for personal gain, otherwise the above mentioned terms should have been mentioned in section 22 of the Designs Act. 

Under such circumstances, the person, who is registered proprietor of a design, has two options for  instituting a suit for infringement of registered design against the defendant in the District Court  (1) where a defendant resides or carries on business or personally works for gain or (2) where the cause of action arises in view of provisions of section 20 of CPC.

(B) Suit for groundless threat:

Section 23 of The Designs Act,2000 is related to the issue of groundless threat. This provision is based on the provision of section 106 of the Patents Act, 1970 as per the provisions of secrion 23 itself.  Further, section 23 is silent for issue of instituting the suit for groundless threat in respect of jurisdiction. In other words, which District court has jurisdiction for filing suit of groundless threat is not mentioned in the entire Act.  As section 23 is based on section 106 of the Patents Act, it is required to be read with section 104 of the Patents Act, for issue of jurisdiction which says that District Court has jurisdiction for  a suit for declaration under section 105 or for any relief under section 106 or for infringement of a patent. Further, here in this provision of 104, the word 'district court' is used, hence we need to reply upon the definition of 'district court' defined in section 2(e) of the Patents Act. This definition says, " district court has the meaning assigned to that expression by the Code of Civil Procedure, 1908." Meaning thereby the provisison of CPC which enlightens the definition of district court is required to be seen. It is provided in definition clause  section 2(4 )of CPC. I.e. "district" means the local limits of the jurisdiction of a principal Civil Court of original jurisdiction (hereinafter called a "District Court"), and includes the local limits of the ordinary original civil jurisdiction of a High Court.

4) The Patents Act, 1970

(A) Suit for infringement of Patent:

The Patents Act is silent about filing of a suit of infringement of Patent either in a court where pantee is situated or in a court where the defendant is situated. Section 104 of the Patents Act only speaks that suits for declaration or for infringement of Patent shall be insituted in District Court. Hence, such suit can be filed with the help of the provisions of CPC as the special statute is silent about the fact that which District Court has jurisdiction to entertain and adjudicate the suit for infringement of Patent.

(B) Suit for groundless threat:

Section 106 of the Patent Act is invoked for instituting the suit for groundless threat. This section is to be read with section 104 of the Act for issue of Jurisdiction as the provision of section 104 is for Jurisdiction as discussed in earlier paragraph.

So neither the designs Act or the Patents Act says about the intitution the suit likewise the provisions of section 134 of the Trademarks Act or the provisions of 62 of the Copyright Act.  In otherwords, both the designs Act and patents Act are silent about such terms which have been provided in s.134 (2) of the Trademarks Act and S.62(2) of the Copyright Act. 

5) The Geographical Indications of Goods (Registration and Protection) Act, 1999:

(A) Suit for infringement and Passing Off Action:

The provisions of Section 66 of this Act is as equal as the provisions of Section 134 of the Trademarks Act,1999. Hence the same rule of jurisdiction  is applicable what has been stated earlier for infringement of trademarks and for passing off action. 

(B) Suit for Groundless threat: 

Section 73 of the Act deals the the provisions of groundless. S. 73(4) says that a suit for groundless threat is insituted in District Court. Hence S.73(4) is read with the definition of district court defined in S.2(d) of the Act. We find approximately the same wordings of definition clause as are provided in S. 2(e) of the Patents Act.

6) The Protection of Plat Varieties and Farmers' Rights Act, 2001: 

Infringement of a registered variety:

Section 65(2)  of this Act clearly establishes that suit for infringement a variety registered under this Act is insituted in a District Court within the local limits of whose jurisdiction the cause of action arises. In this section there is omission  of the term the person/s  instituting the suit,actually  and voluntarily resides or carries on businesd or personalky works for gain "  or  "where the defendant resides or carries on business or personally works for gain". 

It is found that this section gives important to the cause of action being arisen, irrespective of place of plaintiff or defendant.  The term ' passing off action ' is not mentioned in the Act.

7) The Semiconductor Integrated Circuits Layout-Design Act,2000

There is no civil remedy available under this Act. A complaint in writing by registered proprietor or the registered user of a layout design for infringement is filed in competent criminal court. Section 56 read with S.18 of the Act.

8) The Biological Diversity Act, 2002:

There is no role of civil court  as no civil remedy is available in this Act. 

9) OTHER ISSUES PERTAINING TO JURISDICTION IN IP LAWS: 

a) Whether a jurisdiction of a court can be invoked on the basis of accessibility of website ? 

The asnwer of such question is in negative. Because internet can be accessed from any corner of the world, so the plaintiff can not invoke the jurisdiction of any court, provided that substantial sale transaction of infringing goods is being sold through website. For answering this issue i am quoting  the following paragraph.

"Para no. 58 of the judgement of Hon'ble Delhi High Court (DB) in the case of Banyan Tree Holding (P) Ltd. Vs. A. Murali Krishna Reddy & Anr. Question (i): For the purposes of a passing off action, or an infringement action where the Plaintiff is not carrying on business within the jurisdiction of a court, in what circumstances can it be said that the hosting of a universally accessible website by the Defendants lends jurisdiction to such Court where such suit is filed ("the forum court")?

Answer: For the purposes of a passing off action, or an infringement action where the Plaintiff is not carrying on business within the jurisdiction of a court, and in the absence of a long-arm statute, in order to satisfy the forum court that it has jurisdiction to entertain the suit, the Plaintiff would have to show that the Defendant "purposefully availed" itself of the jurisdiction of the forum court. For this it would have to be prima facie shown that the nature of the activity indulged in by the Defendant by the use of the website was with an intention to conclude a commercial transaction with the website user and that the specific targeting of the forum state by the Defendant resulted in an injury or harm to the Plaintiff within the forum state."

b) Whether a court has jurisdiction on the basis of establishment of  Trademark Registry ?

If the TM Registery is situated in Ahmedabad, and the defendant has applied his trademark before Ahmedabad TM Registey, can the jurisdiction of Ahmedabad Dist Court invoke on the basis of establishment of TM Registey in Ahmedabad ? 

The answer is in negative. There is no such provision available in IP Acts. 

c) Whether jurisdiction of Court can be invoked on the basis of IP lawyer is practising in particular court ?

The answer is in negative. 

d) Whether Court has jurisdiction for composite suit ?

Yes composite suit is maintainable if all cause of action occure at one place. 

e) Whether both the parties to the suit are situated in Ahmedabad, can the jurisdiction of Delhi Court be invoked by the plaintiff in that suit ? 

The answer is in negative, provided that goods of the defendant ought to be sold in substantial and material form in Delhi for invoking the jurisdiction of Delhi Court.

f) Whether a court, having jurisdiction for infringement of Trademark can have jurisdiction for passing off action? 

Yes. 

g) Whether the provisions of Order 7 Rule 11 of CPC are applicable to  IP statutes? 

Yes they can be. For adjudication of an application u/O7.R.11, only averments made in the plaint are required to be considered. 

Chirag Bhatt

Advocate 

Whether the registration of a trademark of the defendant is a relevant factor to decide the case of passing off action?

Let me begin this article by way of giving an illustration.

Mr. A is a plaintiff who is a registered proprietor of a trademark X and Mr. B is a defendant who is also a registered proprietor of a trademark X1. Both Mr. A and Mr. B are engaged in the identical business under the above mentioned trademark X and X1 respectively.

Mr. A has filed a suit for passing off action against Mr. B seeking relief to restrain the defendant i.e. Mr. B from using the registered trademark i.e. X1. 

Mr. A is a prior user of the trademark X. Mr. A being plaintiff has fulfilled all the criterias of passing off action.

Under such circumstances whether Mr. A is entitled for injunction against Mr. B who is a registered proprietor of the trademark X1 in a case of passing off action.

When the case is for passing off action and not for infringement action, under such circumstances whether section 28(3) is applicable? Whether registration of the defendant’s trademark has relevancy in a case of passing off action? Whether the defence of registration of the trademark X1 taken by the defendant is sustainable or maintainable?

Answering the above mentioned question in respect of  passing off action first of all it is required to be considered what is passing off action. Passing off action is a common law remedy. It is not a statutory remedy and the ingredients of passing off action are required to be considered. They are (1) Goodwill and reputation established by the plaintiff under The Trademark Acts, (2) Misrepresentation made by the defendant under the trademark X1 in the course of trade, (3) occurrence of damage in the part of plaintiff, (4) prior use of the trademark by the trademark by the plaintiff.

If above mentioned criterias or ingredients are satisfied by the plaintiff in the case of passing off action the plaintiff is entitled for the relief of injunction against the defendant. Now the question as mentioned hereinabove whether registration of a trademark of the defendant is a relevant factor to adjudicate the case of passing off action.

Answering the same question I’d like to rely upon the judgement of Hon’ble Delhi HC(DB) in the case of

1. Century Traders vs Roshan Lal Duggar Co. reported in AIR 1978, Delhi 250(15).

1. In para no. 9 of the said judgement was held by Hon’ble DB, “In a passing off action registration of the trade mark is immaterial.” “.............it is clear that registration of the mark in the trade mark registry would be irrelevant in an action for passing off. Furthermore, it will be clear that in deciding whether a particular mark is common to the trade use of that mark would be extremely relevant. Mere registration would not be enough.”

2. In para no. 11 of the said judgement the case of Consolidated Foods Corporation v. Brandon and Co., Private Ltd. was cited wherein it was held that, “Registration itself does not create a trade mark. The trademark exists independently of the registration which merely affords further protection under the Statute. Common law rights are left wholly unaffected. Priority in adoption and use of a trade mark is superior to priority in registration.” 

3. In para no. 14 of the said judgement. “Thus, the law is pretty well-settled that in order to succeed at this stage the appellant had to establish use of the aforesaid mark prior in point of time than the impugned user by the respondents. The registration of the said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action passing off and the mere presence of the mark in the register maintained by the trade mark registry did not prove its user by the persons in whose names the mark was registered and was irrelevant for the purposes of deciding the application for interim injunction unless evidence had been led or was available of user of the registered trademarks.”

2. S. Syed Mohideed vs P. Sulochana Bai

1. In this case Hon’ble SC in para no. 23 held that “the registration is no defence to a passing off action and nor the Trade Marks Act, 1999 affords any bar to a passing off action.”

2. Further in para no. 23 of the said judgement Hon’ble SC held “that registration is merely a recognition of the rights pre-existing in common law and in case of conflict between the two registered proprietors, the evaluation of the better rights in common law is essential as the common law rights would enable the court to determine whose rights between the two registered proprietors are better and superior in common law which have been recognized in the form of the registration by the Act.”

3. Intex Technologies (India) Ltd & others vs M/S Az Tech (India) & Another, Delhi HC

In para no. 18 it was held that, “It is also evident that insofar as a registered trade mark is concerned, the property exists in the mark, but in the case of passing off, the property is not in the mark but in the goodwill.” 

4. Geoscope Exim Pvt. Ltd. vs SNJ Distillers Pvt. Ltd., Madras HC dated 08/06/2022

In this case both the plaintiff and the defendant are the registered proprietor and they are engaged in the identical business. The plaintiff has filed the suit for passing off action seeking relief to restrain the defendant from using identical and/or deceptively similar trademark HOBBS to that of plaintiff’s trademark HOBSONS. Hon’ble Madras HC in para no. 10 of the order held that “there is some similarity between the two registered word marks HOBSONS and HOBBS but such similarity should be balanced against the fact that the wordmark HOBBS is registered. Even in a passing off action, in my view, this is a relevant though not controlling criterion and should be reckoned along with other aspects.” Hence, injunction is not granted to the  plaintiff.

5. Ranjit hosiery mills vs MANOHAR C MURJANI TRADING AS V M HOSIERY(AO no. 101/2022 Gujarat HC(DB))

The plaintiff has filed the suit for passing off action before Commercial Court Ahmedabad against the defendant. The plaintiff’s trademark is Ranjit Rocky and the defendant trademark is Rockley. Both are engaged in the hosiery business. Plaintiff is a prior user of the trademark Ranjit Rocky then that of the defendants trademark Rockley. The defendant is a registered proprietor of the trademark/word Rockley. Hon’ble Commercial Court has not granted injunction hence, plaintiff has preferred appeal from order before Hon’ble Gujarat HC as it is the order of Commercial Court appeal was heard by DB as commercial appellate court. Having heard both the advocates of the respective parties at length, Hon’ble Gujarat HC has restrained the respondent/defendant from using the label containing the word Rockley but not from using the word Rockley as the word Rockley is registered in the favour of the defendant.

Author’s Opinion:

In passing off action registration of the trademark has no relevance, neither can the defendant take the defence of the registration of his trademark as it is settled principle laid down by Hon’ble SC and Hon’ble Delhi HC(DB) in the above mentioned judgements in view of the judgement of Hon’ble SC and Hon’ble Delhi HC(DB) whether the order passed by Madras HC and the order passed by Gujarat HC(DB) respectively are contrary to the settled principle of law. In para no. 10 of the order passed by the Madras HC though it was a case of passing off action registration of the defendant’s trademark has been considered a relevant factor for not granting an injunction to the plaintiff. With profound respect to the Hon’ble Madras HC whether this view taken by it can’t be contrary to the principle laid down by the apex court and Hon’ble Delhi HC(DB) that in passing off action registration has no relevance and registration is not a defence? Further when the plaintiff before Madras HC is prior user and when the plaintiff and the defendant both are engaged in the similar business and when the Madras HC has observed the similarity between the two trademarks HOBSONS and HOBBS, is it not the case where the injunction ought to be granted at the stage of adjudication of injunction application filed under Order 39 Rule 1 and 2 of CPC?

As far as the order of Gujarat HC(DB) is concerned there is a case of passing off action, plaintiff is a prior user, plaintiff has established ingredients of passing off action, defendant is admittedly a subsequent user, defendant has taken the defence of registration of his trademark Rockley. With immense respect to Hon’ble DB of Gujarat HC, Hon’ble Gujarat HC has considered the registration of the defendant in the case of passing off action, is it true justification in the case of passing off action. As the registration of the trademark doesn’t give any new right to the registered proprietor. The registration gives proprietary right to the trademark but in passing off action the property is not in the mark but in the goodwill. So when the goodwill has been established by the plaintiff, prior use has been established along with all ingredients of passing off action as well as Order 39 Rule 1 and 2, should the Hon’ble DB have considered the registration of the trademark of the defendant in passing off action which is otherwise contrary to the settled principle of law and the said registration has already been challenged by the plaintiff therein?

Considering the above mentioned judgements of various courts, my opinion is that in passing of action registration of the trademark has no relevance and the same is not a valid defence in the eyes of law.

Chirag Bhatt
Advocate

   

Trademark AMUL is protected

There is a slap on the face of infringers who are using the trademark AMUL with or without knowledge  by  way of the judgement delivered by Honb'le Kolkata High Court on 1st September,2022 in the case of Kaira District Cooperative Milk Producers Union Ltd. & Anr.Vs. Maa Tara Trading Co. & Ors. (CS no..107 / 2020).

The plaintiff has filed a commercial suit for infringement and passing off action for its registered trademark AMUL  against the defendants as the defendant is using the trademark AMUL for candle. 

None appeared on behalf of the defendants. The defendants were engaged in different business. The defendants were using the trademark AMUL for different goods i.e. Candle. The plaintiff was engaged in the business of milk and dairy products at national and international markets. The trademark AMUL is registered since 1958 in favour of the plaintiff. 

 Two issues of law are involved in this judgement.

Issue no. 1 :  Whether the plaintiff is entitled to restrain the defendants for the identical trademark which is being used by the defendants for different goods.i.e.the goods for which the trademark AMUL has not been used by the plaintiff?

Issue no. 2 :  Whether the Courts should grant judgement and decree invoking the provisions of Order 8 Rule 10 of Code of Civil Procedure, 1908(CPC)?

Let me discuss these issues here.

Issue No.1: Issue number one is related to the infringement of The trademark for the goods for which the plaintiff is not the registered proprietor. In other words the defendant is using the Trademark for different goods under such circumstances whether the plaintiff is entitled to be protected if his registered trademark is being used by the defendant for the different goods or services and such goods or services have not been used by the plaintiff.

Section 29(4) of The Trademarks Act plays very important role in this regard which says that A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which— (a) is identical with or similar to the registered trademark; and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or reputation of the registered trademark.

For better understanding of this section, I have made a specific video on my youtube channel C.Bhatt-law study which is titled as Infringement of Trademark for dissimilar goods or services. In the provision of section 29(4) three criterias are provided by the legislature for invoking section 29(4) for the protection of registered trademarks in the case of infringement for dissimilarity of goods and services. The three criterias as mentioned in section 29(4) must be satisfied wholly unless they are satisfied wholly, section 29(4) is not applicable. Further if either of such criteria or conditions is satisfied, section 29(4) is not applicable.

Section 29(4)(a) says that the infringing mark must be identical with or similar to the registered trademark.

29(4)(b) says that the infringing mark must be used in relation to the goods or services which are not similar to the registered trademark.

29(4)(c) is very important which says that

(i)  The registered trade mark has a reputation in India;

(ii)and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or reputation of the registered trademark.

The above mentioned criterias mentioned in provisions of section 29(4)(c) must be satisfied by the plaintiff along with the criterias mentioned in 29(4) (a) and (b).

In the present case before Hon’ble Calcutta HC whether the plaintiff has satisfied the criterias of section 29(4)?

Replying to this question first of all the trademark Amul used by the defendant is identical with or similar to the registered trademark is required to be considered. The answer is in affirmative because the word Amul has been used by the defendant in exactly the same fonts as is used by the plaintiff.

Secondly the defendant has used the registered trademark Amul of the plaintiff in relation to different goods i.e. candles.

The third criteria has also been satisfied by the plaintiff as the registered trademark Amul of plaintiff has a reputation in India and thus use of the said mark without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of registered trademark.

Hence, the criterias mentioned in section 29(4) have been satisfied by the plaintiff. It is pertinent to note that the trademark Amul of plaintiff has been listed at number 66 in the list of well known trademark by trademark registry in the year 2013 IPAB has considered the trademark Amul as well known in the case of M/s. Kaira District Co-Operative Milk Producers Union Limited v/s Deputy Registrar of Trade Marks & Others OA/56/2011/TM/KOL and Miscellaneous Petition No. 150 of 2011 decided on 7th march 2013.

Issue No.2:

The issue no 2 is related to Order 8 Rule 10 of CPC. As the suit is filed in commercial division of Kolkata High Court, and the defendant has not remained present before the Court after being summoned, nor has he filed written statement in the case, the plaintiff has invoked the provisions of Order 8 Rule 10 of CPC which says that,

“ Procedure when party falls to present written statement called for by Court.- Where any party from whom a written statement is required under rule 1 or rule 9 fails to present the same within the time permitted or fixed by the Court, as the case may be, the Court shall pronounce judgement against him, or make such order is relating to the suit as it thinks fit and on the pronouncement of such judgement a decree shall be drawn up”.

As per the latest amendment in CPC in view of Commercial Courts Act, the defendant is not entitled to file written statement beyond the period of 120 days as per the proviso of Order VIII Rule 1. The proviso of Rule 10 of Order VIII says that “ [Provided that] no Court shall make an order to extend the time provided under Rule 1 of this Order for filing of the written statement.”.

Having read the section and proviso thereof it emerges out that

(1) It is the discretionary power of the court to pronounce the judgement against the defendant in absence of filing of written statement.

(2) The defendant is not permitted to file written statement beyond the period of 120 days in the commercial cases. ( That is not the issue in the present case).

Hon’ble Kolkata High Court has relied on the judgement of Hon’ble SC in the case of C.N. Ramappa Gowda vs. C.C. Chandergowda reported in{ (2012) 5 SCC 265 paras 25,26,27 }, has held that the present suit is a commercial suit under the Commercial Courts Act, and it it the clear intention of the legislature to dispose of the suits, having commercial nature expeditiously without being lingered. Further , The Court has also satisfied with the averments made in the plaint and the documents and affidavit produced by the plaintiff.

Hence, as per the opinion of the Court it is the fit case to invoke the provisions of Order VIII Rule 10 of CPC and accordingly the decree has been passed in terms of the prayer paras in favour of the plaintiff and against the defendant.

Author’s Opinion:

1) The protection of a well known mark is inevitable when all legal criteria are satisfied otherwise the motto of the declaration of a well known mark as mentioned in the Trademarks Act, 1999 becomes infructuous. Further in the present case the trademark AMUL has a well established reputation not only in India but beyond the border of India. Though the defendant has used the trademark AMUL for different goods, perhaps the plaintiff has not used its registered trademark for the said different goods, but non use of the plaintiff’s registered trademark, is not the criteria or defence for not satisfying the provisions section 29(4) of the Trademarks Act, 1999. When Legislature has with good intention of protection has incorporated the provisions of S. 29(4) in the Trademarks Act, 1999, the registered trademark must be protected if all the three conditions mentioned therein have been satisfied by the plaintiff. Hence, the decision of Hon’ble Kolkata High Court is just, apt and appropriate. It is noted that the trademark AMUL has satisfied all the conditions beyond the limit as it is declared as a well known mark. To be a well known mark is not the condition but a registered trademark having reputation in India is the condition. There is a difference between a well known mark and a registered trademark having reputation. The definition of a

well known trademark as provided in S.2(1) (zg) of the Trademarks Act, 1999 is silent about words used by the Legislature in Section 29 (4) ( c ) i.e. the registered trademark has a reputation in India. Hence it is possible that the well known trademark may not be registered as registration of trademark is not the criteria for being a well known trademark as per the definition of it but use of the mark is a must. In the present case AMUL is a registered and a well known trademark, hence, the

Hon’ble High Court has rightly protected it.

2) As far as Order 8 Rule 10 of CPC is concerned, in the present litigation scenario, it ought to be invoked by the Courts in the genuine cases when there is no written statement , when the defendant has never come up before the Court after the summons being served. The Courts ought to avoid pedantic approach to conduct the Trial by the plaintiff ex parte in the cases like AMUL to expedite the genuine commercial litigation with the more judicial consciousness based on the plaint and documents produced by the plaintiff.

Author

Chirag Bhatt 

Advocate.