2005 Supreme(SC) 1605

2005(8) Supreme 522
Supreme Court of India
(From Allahabad High Court)
B.P. Singh and S.B. Sinha, JJ.
M/s. Dhodha House —Appellant
versus
S.K. Maingi —Respondent
Civil Appeal No. 6248 of 1998
With
Civil Appeal No. 16 of 1999
Decided on 15-12-2005
Counsel for the Parties :
For the Appellant in C.A.No. 6248/97 : S.K. Bansal, S. Rajan, Ajay Amitabh, Mrs. Amita Gupta, Advocates.
For the Appellant in C.A.No. 16/99 : Shailen Bhatia, Balraj Dewan and Rishi Kesh, Advocates.
For the Respondent in C.A.No. 6248/97 : Laxman Singh and Ranbir Singh Yadav, Advocates (NP), Advocate.
For the Respondent in C.A.No. 16/99 : R.K. Aggarwal and Tarun Johri, Advocates.

Important point
The jurisdiction of the District Court to determine a lis under the Copyright Act, 1957 as also the Trade and Merchandise Act, 1958 must be instituted where the whole or a part of cause of action arises.

Headnote:(i) Copyright Act, 1957—Section 62—Trade and Merchandise Act, 1958—Section 2(m)—Extent of jurisdiction of a Civil Court to determine a dispute as regard infringement of provisions of these Acts—Forum where such suit can be instituted—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—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—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—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.

       (ii) Copyright Act, 1957—Section 62—Trade and Merchandise Act, 1958—Section 2(m)—Civil Procedure Code, 1908—Sections 16 to 20—Jurisdiction of Civil Court—Expressions ‘carries on business’ and ‘personally works for gain’—Meanings.

       Held : 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. (Para 42)

       (iii) Trade and Merchandise Act, 1958—Sections 2(m) and 45—Infringement of trade mark—Jurisdiction of Civil Court—Appellant plaintiff carries on business of sweet meats in the district of Ghaziabad whereas respondent defendant carries on similar business in district of Faridkot—Appellant filed a suit before the District Judge, Ghaziabad praying for an order of injunction—Whether District Court, Ghaziabad had territorial jurisdiction to try the suit—(No).

       Held : 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. (Para 41)

       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. (Para 44)

       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. (Paras 45 to 47)

       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 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. (Para 48)