The situs of the trade mark gives a cause of action for the party complaining infringement to go before the court within whose jurisdiction the situs is situated.

1. In the former application, this court granted leave on 23.06.2004 under Clause 12 of the Letters Patent to the plaintiff to file the suit before this court. In the latter application, the defendants are before this court to have the relief already granted revoked. Heard the learned counsel on either side.

2. The plaintiff is before this on its original side complaining infringement of the plaintiffs registered trade mark and for consequential reliefs. To bring the suit before this court, the plaintiff relies upon the following causes of action:

“The plaintiff has its liaison office in India at Chennai and as they are carrying on business at Chennai within the jurisdiction of this court, under section 134(2) of the Trade Marks Act, 1999 and under section 62(2) of the Copy Right Act, 1957, a suit can be instituted where the plaintiff actually or voluntarily resides or carries on business; the plaintiff is located at and carries on business at Chennai within the jurisdiction of this court and therefore entitled to file the suit before this court; the plaintiffs trade mark is registered at the Trade Marks Registry at Chennai with Chennai as the appropriate office of jurisdiction; thus, the situs of the plaintiffs property in the trade mark is situated in Chennai and the infringement of the trade mark having arisen within the jurisdiction of this court, the material part of cause of action has arisen at Chennai.”

The defendants in their application to revoke the leave would contend as here-under:

“The defendants are admittedly situated outside the territorial jurisdiction of this court; the goods are not sold within the territorial jurisdiction of this court; the plaintiffs liaison office is permitted to act as a communication channel between the head office in Italy and various parties in India; such activities would not amount to the plaintiff actually or voluntarily residing or carrying on business or personally working for gain at the said liaison office and such stand taken by the plaintiff is in violation of the provisions of the Foreign Exchange Management Act.”

In addition to the above, the defendants would state before the court during the submissions that the Trade Marks Registry is situated at Mumbai and the register of trade marks is available only there; therefore the registered trade mark is deemed to be situated only at Mumbai; as such the suit can be filed only there; the plaintiff is a foreign company; it has to comply with sections 592 to 597 of the Companies Act; since those provisions have not been complied with, under section 599 of the Companies Act the plaintiff would be disabled from bringing any action in a court of law.

3. Having regard to the arguments advanced before this court as indicated above, let me now proceed to analyse the case. Under section 105 of the Trade Marks Act, 1958, a suit for infringement of a registered trade mark shall not be instituted in any court inferior to a District Court having jurisdiction to try the suit. The 1958 Act stands repealed by the Trade Marks Act. 1999. Therefore the new Act alone governs the situation. Section 105 in the old Act stands re-drafted as section 134

(1) of the new Act. Sub section (2) of section 134 is a new provision. Under that sub section, for the purposes of clauses (a) and (b) of sub section (1), a “District Court having jurisdiction” is stated to mean, notwithstanding anything contained in the Code of Civil Procedure or any other law for the time being in force to include a District Court within the local limits of whose jurisdiction, at the time of institution of the suit or other proceedings, person instituting the suit or proceeding or where there are more than one such persons, any of them, actually or voluntarily resides or carries on business or personally works for gain. Therefore under section 134(2 ) of the new Act, notwithstanding anything contained in the Code of Civil Procedure or any other law for the time being in force, the