2017 Supreme(Bom) 1256

IN THE HIGH COURT OF JUDICATURE AT BOMBAY
A.S. OKA, ANUJA PRABHUDESSAI, JJ.
M/s. Harman Overseas, a Partnership Firm & Others - Appellants
Versus
Dongguan TR Bearing Company Limited & Others - Respondents
Appeal Nos. 340, 95, 387 of 2015, in Leave Petition Nos. 286, 320 of 2013, in Suit Nos. 674, 42 of 2014, in Letters Patent Leave Petition No. 306 of 2014 in Suit (Lodging) No. 1067 of 2014
Decided On : 04-08-2017

The Court's discretion to grant leave under Clause XIV of the Letters Patent is discretionary and the grant of leave does not conclude the issue of jurisdiction, which can be decided at an appropriate stage.

Headnote:

A brief reference to the facts of the case will be necessary. For the sake of convenience, we are referring to the parties to the Appeals according to their status before the learned Single Judge. In Appeal No.340 of 2015, by the Judgment and Order impugned, the learned Single Judge has permitted joinder of cause of action of passing off of the trade mark with the cause of action for infringement of a registered trade mark. The cause of action of passing off of the trade mark has arisen outside the limits of Mumbai. The first Plaintiff claims to be a registered Proprietor of the trade mark “TR” in respect of the goods specified in Clause 7 of Schedule IV to the Trade Mark Rules, 2002. The first Plaintiff has claimed in the suit that it has been extensively using trade mark since the year 1980 in India in respect of its products. According to the case of the Plaintiffs, the second Plaintiff is the sole Distributor of the first Plaintiff for its goods bearing the mark “TR”. According to the case of the Plaintiffs, the first Plaintiff has duly authorized the second Plaintiff to use the trade mark TR in India. It is stated in the Plaint that some time in the beginning of January 2013, they became aware about the activity of the Defendants of manufacturing, marketing, selling or distributing comparable goods under the mark/label TR which is identical or deceptively similar to the registered trade mark of the Plaintiffs. The case made out in the Plaint is that the action of the Defendants of adoption and use of the mark/label TR is dishonest. It is their case that such adoption and use of the mark/label TR by the Defendants constitutes not only an infringement of the Plaintiffs' trade mark but also amounts to passing off of the Defendants' goods as those of the Plaintiffs. According to the case made out in the Plaint, the first Plaintiff is based in China but carries on business in Mumbai through its exclusive distributorthe second Plaintiff. It is stated that the second Plaintiff has its address within the Original Jurisdiction of this Court and the second Plaintiff has been authorized by the first Plaintiff to use its registered trade mark. Therefore, the Plaintiffs have brought the suit on the Original Side of this Court seeking an infringement action in respect of their registered trade mark. The Plaintiffs prayed for grant of a leave under Clause XIV of the Letter Patent to permit them to combine the cause of action of passing off with the causes of action for infringement. A separate leave Petition was filed by the Plaintiffs in which it was contended that though the Defendants carry on business and sell the alleged offending goods outside the Original Jurisdiction of this Court, the evidence relating to the cause of action of passing off and the evidence relating to the causes of action for infringement would be common. That is the reason why a leave was claimed under Clause XIV of the Letters Patent. There were separate affidavits-in-reply filed by the Defendants. A detailed affidavit-in-reply was filed by the fourth Defendant which was adopted by the other three Defendants by filing their affidavit-in-reply. The fourth Defendant denied the factual contentions raised by the Plaintiffs. It was contended that there is no material placed on record to show that the second Plaintiff is a Distributor much less an exclusive Distributor of the first Plaintiff. It was submitted that the first Plaintiff and the second Plaintiff have failed to prove the nexus with each other. It was submitted that mere alleged fact of distributorship is not sufficient for the Plaintiffs to invoke the Original Jurisdiction of this Court under Section 134 of the Trade Marks Act, 1999 (for short “the Trade Marks Act”). It was submitted that the cause of action for filing an action for infringement has not arisen within the Ordinary Original Civil Jurisdiction of this Court and, therefore, a leave under Clause XII of the Letter Patent cannot be granted.