JUDGMENT

(Prayer: Application filed under Order XIV Rule 8 of Original Side Rules r/wOrder XIV Rule 2A of CPC, 1908, praying to decide the issue of jurisdiction as the preliminary issue in C.S.No.254 of 2022.)

1. This application is filed by the first defendant in the suit seeking to decide the issue of territorial jurisdiction of this Court to entertain the present suit.

2. The first respondent herein filed the present suit seeking permanent injunction restraining the applicant herein from infringing/passing off the Registered Trademarks of the first respondent namely “RAINBOW'', RAINBOW HOSPITAL, RAINBOW CLINICS and RAINBOW HOSPITAL FOR WOMEN AND CHILDREN.

3. The first respondent/plaintiff is having chain of Pediatric multi-specialty, obstetrics and gynecology hospitals in India in the name and style of “Rainbow Children''s Hospital”. As per the plaint averments, the first hospital of the first respondent was started as a pediatric specialty hospital with total capacity of 50 beds in Hyderabad. As of today, the respondent operates 15 hospitals and 3 clinics in 6 cities across India, with a total bed capacity of 1,550 plus beds and more than 650 Doctors. The first respondent also inaugurated pediatric hospital in Chennai known as “Rainbow Children''s Hospital”. It was asserted by the first respondent/plaintiff that it was the first, honest, bonafide, prior adopter and user of the trademark “RAINBOW” in relation to various Medical/health care services in India for more than 23 years. The first respondent/plaintiff had obtained registration of its trademark “RAINBOW” and its various combination like Rainbow children Medicare Limited etc. The first respondent claimed that the applicant herein made an application for registration of his trademark Rainbow Sunshine in class 44 in the year 2016 and it was opposed by the first respondent by filing notice of opposition before the registrar of trademarks. The applicant herein failed to file a counter to the notice of opposition filed by the first respondent and abandoned his application for registration of above said similar trademark. Subsequently, the first respondent also came to know that applicant herein was carrying on business under the mark Rainbow Hospitals/ Rainbow Children''s Hospital at Salem and hence a cease and desist notice was issued by first respondent on 18.08.2022. The applicant herein came up with a reply that he was a bonafide adopter and user of the mark Rainbow and hence the first respondent was constrained to file a suit for the above said relief.

4. The first respondent herein has registered Office at Hyderabad and he is also having a branch of his Hospital at 157, Anna Salai, Little Mount, Guindy, Chennai – 15. Therefore, by invoking Section 134(2) of Trademarks Act, treating him as the one carrying on the business within territorial limits of this Court, the suit was filed by the first respondent before this Court.

5. After receiving the suit summons, the applicant herein has come up with this application by raising a specific plea that this Court has no jurisdiction to entertain the suit. It is the specific case of the applicant that the applicant hospital is situated at Salem and therefore no part of the cause of action namely infringement of trademark/passing off had arisen within the territorial limits of this Court. When no part of the cause of action had arisen within the territorial limits of this Court, the first respondent cannot maintain a suit in a place where its branch or subordinate office is situated, but it should have filed the present suit, either in the place where its registered Office is situated or in the place where the cause of action arose or defendant carries on the business.

6. The learned counsel for the applicant by drawing the attention of this Court to Section 134 of Trademarks Act and explanation to Section 20 of CPC submitted that the expression “Carries on Business” used in Section 134 of Trademarks Act shall be given a qualified m