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IN THE HIGH COURT OF JUDICATURE AT MADRAS
G. JAYACHANDRAN, J.
M/s. Simpson and Company Limited – Plaintiff
Versus
Rhythm Agarwal, Trading as Radisson Paints, Uttar Pradesh – Defendant
C.S. No. 162 of 2019, A. No. 3185 of 2021
Decided On : 21-10-2021
Civil Procedure Code, 1908 - Section 20, 117, 116 to 120, 16, 17 and 20 - Order IV, Rule 1, Order VII Rule 1, 10, Order 49 Rule (3), (3) (1), Order XLIX Rule (3) (1) - Trade Marks Act, 1999 - Sections 27, 53, 134, 134(2) and 135 - Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 - Section 7, 2(1)(c)(xvii) - Copy right Act, 1957 - Section 62 - Business - Trademark - Damages For Acts of Infringement of Trademark - Whether a Chartered High Court has not got inherent powers under Section 151, C.P.C. to return a plaint entertained by it in exercise of its ordinary or extraordinary original jurisdiction for presentation to proper court for ends of justice despite provisions of Order 49, Rule 3, C.P.C - Whether suit for infringement can be filed at place of registration of trademark - Whether application under Order VII rule 10 of C.P.C., is maintainable - Whether Section 151 of Code can be invoked - Whether it, can be held that this court has inherent power to make an order directing return of a plaint if it is necessary for ends of justice or to prevent abuse of process of court - Whether plaintiff place of business and registered office falling within territorial jurisdiction of this Court is suffice to confer jurisdiction to this Court – Held, In case any suit without jurisdiction is instituted before ordinary original side jurisdiction of Madras High Court, dehors of specific exclusion of Order VII Rule (10) CPC, under Order 49 (3) (1) of Code, to meet ends of justice and to prevent abuse of process of court, High Court can exercise its inherent power under Section 151 C.P.C. to return plaint for to be presented before court having jurisdiction - In this case, plaint states that substantial cause of action had arisen within jurisdiction of this Court - It is not plaintiff’s assertion that whole cause of action arisen within local limits of this Court - Expression ‘substantially’ and ‘wholly’ are not interchangeable or synonyms - They mean different state of affairs - Admittedly, defendant is not carrying on his business within jurisdiction of this Court - Irregularity in taking suit on file contrary to law is not a condonable action - Law does not even postulate post-grant of leave - Further, leave to sue is not an absolute right, it may either be refused or may be revoked at later point of time, if it is found balance of convenience is otherwise - Court is of view that suit is to be dismissed for lapse/omission to follow mandatory procedure laid under Clause 12 of Letters Patent - However, remedy of plaintiff for enforcing his lawful right cannot be taken away for said reason - Hence, plaintiff is given liberty to file fresh suit for same cause of action before appropriate court following appropriate procedure - On application, parties are permitted to get back original documents - Certified copies of original document to be retained for record - Suit dismissed.
JUDGMENT :
G. JAYACHANDRAN, J.
Prayer: Civil Suit has been filed under Order IV, Rule 1 of the Original Side rules read with Order VII Rule 1 of C.P.C. Rules read with Sections 27, 134 and 135 of the Trade Marks Act, 1999 and proviso 1 to Section 7 of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015, praying for:
(a) Permanent injunction restraining the defendant themselves, their partners, successors-in-business, servants, agents, distributors, dealers, stockists, wholesalers, retailers, shop keepers, representatives, assigns and all other persons claiming through them from manufacturing, selling and distributing, advertising paints and other products falling under class 2 using the ‘Radisson’ trademark which is deceptively similar to the plaintiff's ‘Addisons’ trademark amounting to infringement of the plaintiff's registered trademark ‘Addisons’ in any manner whatsoever.
(b) Permanent injunction restraining the defendants by themselves, their directors, legal representatives, successors-in-business, assigns, servants, agents, transporters, distributors, printers, dealers, stockists, wholesalers, retailers, advertisers or any one claiming through or under them from committing acts of passing off and enabling others to pass off by manufacturing, distributing, marketing, selling, offering for sale, advertising or in any other manner dealing in paints or any other product bearing the deceptively similar mark ‘Radisson’ using any similar label, get-up, or packaging, which in any manner whatsoever would be considered to be similar to the plaintiff's mark, get up or packaging.
(c) The defendant be ordered to pay to the plaintiff a sum of Rs. 10,00,000/- as damages for committing acts of infringement of trademark and passing off.
(d) The defendant be ordered to surrender to the plaintiff for destruction all goods, advertisement materials, packing materials, cartons, wrappers, labels in respect of paints and other allied/cognate goods containing the offending mark/label or any other mark/label similar to plaintiff's trademark/labels Addisons.
(e) Preliminary decree be passed in favour of the plaintiff directing the defendants to render true and faithful account of profits earned by them by use of offending trademark for paints or other allied and cognate goods and a final decree be passed in favour of the plaintiff for the amount of profits thus found to have been made by the defendant after the latter have rendered accounts.
(f) for entire costs of the suit.
1. A. No. 3185 of 2021 is the defendant's application to return the plaint in C.S. No. 162 of 2019 to Hon’ble High Court of Allahabad, within whose territorial jurisdiction both the plaintiff and the defendant are carrying on business, besides the alleged cause of action viz. infringement of trademark and passing off had arisen.
2. The subject plaint presented before the Registry of the Original side of Madras High Court on 26.02.2019, disclosing the plaintiff registered office at Chennai and the defendant’s place of business at Agra, U.P. The suit was admitted on the next day assigning Civil Suit (Commercial) No. 162 of 2019.
3. The plaint averments in short is that, M/s. Addisons Paints and Chemicals Limited, which was incorporated in the year 1948 for manufacturing a range of special paints and chemical products, on merger, vide order dated 20.01.2002 passed by BIFR became a fully owned subsidiary of M/s. Simpson and Company, having its registered office at Anna Salai, Chennai (plaintiff). During the course of the trade, the mark ‘Addisons’ is honestly adopted and used by the plaintiff without any interruption. Registration obtained for the mark ‘Addisons’ under various classes including class 2 with respect to paints, lacquers, primers, varnish etc. The said registration is valid and in force till date. While so, around May 201
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