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2017 Supreme(Bom) 902
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
R.D. DHANUKA, J.
M/s. Black Ticket Films - Plaintiffs
Versus
Mr. Walter Philip and Ors. - Defendants
SUIT NO. 93 OF 2016
Decided On : 12-07-2017
For the Plaintiffs : Mr. Amir Arsiwala, Ms. Malika Tally and Ms. Mansi Patel
For the Defendants : Mr. Jaideep Mitra, Mr. Virendra Kanojia
Headnote:
LEAVE TO FILE SUIT - JURISDICTION - REVOCATION OF LEAVE - QUIA TIMET ACTION - APPREHENSION OF INFRINGEMENT OF TRADEMARK - SUBSTANTIAL PART OF CAUSE OF ACTION - WEBSITE ACCESSIBLE IN MUMBAI - GOODWILL IN MUMBAI - LEAVE GRANTED UNDER CLAUSE XII OF LETTERS PATENT - SUIT MAINTAINABLE IN MUMBAI HIGH COURT.
Fact of the Case:
Plaintiff, an independent film maker and creative agency, filed a suit in the Mumbai High Court against the defendants for passing off their trade name and trademark “Black Ticket Films”. The plaintiff had obtained leave to file the suit under Clause XII of the Letters Patent. The defendants filed an affidavit in reply raising the issue of jurisdiction. The Court framed two preliminary issues under Section 9-A of the Code of Civil Procedure, 1908 to determine whether the leave granted should be revoked and whether the suit should be dismissed for want of jurisdiction or returned for being filed in an appropriate Court.
Finding of the Court:
1. The plaintiff had accessed the defendants’ website in Mumbai, which was accessible in Mumbai. 2. The plaintiff had garnered goodwill in Mumbai due to its commercial activities and had been doing business with clients based in Mumbai since 2009. 3. The defendants did not lead any evidence to challenge the plaintiff’s evidence on the issue of jurisdiction. 4. The apprehension of the plaintiff that the defendants would release a film under the infringing mark in Mumbai was proved as the film was ultimately released in Mumbai, though under a different banner. 5. The plaintiff had a reasonable apprehension of infringement of its trademark and goodwill in Mumbai, which was a substantial part of the cause of action.
Issues: 1. Whether the leave granted by the Court under Clause XII of the Letters Patent to the plaintiffs is liable to be revoked? 2. If the answer to the aforesaid issue is in the affirmative and leave is revoked, whether the suit is liable to be dismissed for want of jurisdiction or whether this plaint is liable to be returned for being filed in an appropriate Court?
Ratio Decidendi: 1. The Court has jurisdiction to entertain, try, and dispose of the suit upon the Court granting leave in favor of the plaintiff. 2. The defendants have not made out a case for revocation of the leave, dismissal of the suit, or return of the plaint to an appropriate Court. 3. The plaintiff has proved beyond a reasonable doubt that a substantial part of the cause of action in this action for Quia Timet has arisen within the territorial jurisdiction of this Court based on the apprehension of the plaintiff.
Final Decision: The Court held that it had jurisdiction to entertain, try, and dispose of the suit and that the leave granted under Clause XII of the Letters Patent should not be revoked. The Court answered the first issue in the negative and the second issue accordingly.
1. By an order dated 6th October, 2016, in view of the issue of jurisdiction raised by the defendants in the affidavit in reply to the Notice of Motion No. 1205 of 2016, this Court framed two preliminary issues under section 9-A of the Code of Civil Procedure, 1908 as under :-
(1). Whether the leave granted by this Court under Clause XII of the Letters Patent to the plaintiffs is liable to be revoked ?
(2). If the answer to the aforesaid issue is in the affirmative and leave is revoked, whether the suit is liable to be dismissed for want of jurisdiction or whether this plaint is liable to be returned for being filed in an appropriate Court ?
2. Pursuant to the liberty granted by this Court, the plaintiffs led oral as well as documentary evidence on the aforesaid issues framed by this Court. The defendants did not laid any oral evidence. Some of the relevant facts for the purpose of deciding the aforesaid issues are as under :
3. It is the case of the plaintiff that the plaintiff has been an independent film maker and creative agency focussed on presenting stories from a fresh perspective. The productions of the plaintiff have been screened in over 200 film festivals and across TV networks in North America, Europe and Asia. The plaintiff was formed on 6th May, 2009 and was registered on 26th May, 2009. The plaintiff has described in the plaint several projects undertaken by the plaintiff over the years. The plaintiff has also given details of the projects undertaken by the plaintiff during the financial year 2009-10, 2015-16 and total revenue generated out of those projects. It is the case of the plaintiff that the plaintiff and its partners have also showcased their productions at various national and international events described in paragraph 8 of the plaint.
4. It is the case of the plaintiff that the plaintiff has been continuously trading under the brand name and trademark “Black Ticket Films” and has been operating a website “www.blackticketfilms.com” since April, 2010. The said website has been continuously promoting the “Black Ticket Films” brand and has provided its clients, both present and potential, details as to its portfolio and how to contact it. The plaintiff relied upon the digital platforms for its trade and also brand name and gained many new clients through this website.
5. It is the case of the plaintiff that in the month of June, 2015, the plaintiff came to learn of a web-page being hosted using the Face-book platform under the name of “Black Ticket Films”. The said web-page however, did not give any details of the persons behind it, except an email ID, blackticketfilm@gmail.com. The plaintiff through its partners sent a letter to the said email ID informing that they have been using the trade name and brand name “Black Ticket Films” since the year 2009 and that unknown persons attached to this web-page were guilty of passing off their brand name and goodwill.
6. The plaintiff did not receive any response through the said email ID. It is the case of the plaintiff that the said web-page appeared to be promoting one Tamil language movie by the name of “Meendum Oru Kadhal Kathai” alleged to be produced by a “Black Ticket Films”. It is the case of the plaintiff that the plaintiff has no relation to that production nor was it even aware of the said film prior to describing the said web-page. The plaintiff was not able to identify those individuals behind the said film and the alleged production house of “Black Ticket Films”.
7. It is the case of the plaintiff that when the plaintiff began process of registration of its trademark “Black Ticket Films”, the plaintiff came across another application for registration of their trademark “Black Ticket Films” by the defendant no.2, which trademark the defendant no.2 had adopted only in the month of November, 2014. On 2nd September, 2015, the plaintiff through its advocate sent a legal notice to the defendant no.2 setting out the rights over the trademark “Black Tick
