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2024 Supreme(Online)(Bom) 7912
HIGH COURT OF BOMBAY
R.I. Chagla, J
Bajaj Electricals Limited – Appellant
Versus
Electronics Mart India Limited & Ors. – Respondent
Leave Petition No. 132 of 2020 in Commercial IPR Suit No. 178 of 2022
For the Appellants/Petitioners: Dr. Virendra Tulzapurkar, Mr. Ameet Naik, Mr. Aseem Naphade, Mr. Madhu Gagodia, Mr. Sujoy Mukherji, Deveesha Tudekar
For the Respondents: Mr. Ravi Kadam, Mr. Rohan Kadam, Ms. Saloni Shah, Ms. Pranita Saboo, Ms. Rucha Vaidya
The court allows combining trademark infringement and passing off claims under Clause XIV of the Letters Patent to avoid multiplicity of proceedings.
Headnote:(A) Trademarks Act, 1999 - Sections 134(1) and 134(2) - Letters Patent Act - Clause XIV - Leave Petition seeking to combine passing off claim with trademark infringement claim - Jurisdiction over trademark infringement established as Petitioners are conducting business in Mumbai - No cause of action for passing off arose within jurisdiction - Leave granted to combine claims to avoid multiplicity of proceedings. (Paras 1-2, 6-10, 54-55)
(B) Jurisdiction - The Court addressed whether it can join actions outside jurisdiction with those it has jurisdiction over under Clause XIV of the Letters Patent to prevent numerous proceedings. (Paras 41-46)
Facts of the case:
The Petitioner, based in Mumbai, seeks to consolidate trademark infringement with passing off claims against Respondents operating outside Mumbai, citing jurisdictional grounds under the Trademarks Act.
Findings of Court:
The Court found merit in granting leave to combine claims to avoid multiplicity of litigation, asserting that such combination does not cause undue hardship to the Defendants.
Issues: The court had to ascertain if granting leave to combine claims was permissible under jurisdiction provisions of the law and whether it leads to hardship for Defendants.
Ratio Decidendi: The Court reasoned that the Petitioner’s established jurisdiction on trademark infringement allowed for the joining of the passing off claim to mitigate the risk of multiple suits, aligning with legislative intent to avoid duplicative litigation.
Result: Leave Petition No. 132 of 2020 is made absolute in terms of prayer clause (a).
| Table of Content |
|---|
| 1. scope of jurisdiction established under the trademarks act. (Para 1 , 2 , 3) |
| 2. arguments presented regarding the jurisdiction and implications of combining claims. (Para 4 , 5) |
| 3. court observations on hardship and relevance of joint claims. (Para 6 , 7 , 9) |
| 4. the court's foundational reasoning and jurisdictional considerations. (Para 10 , 41) |
| 5. final decision passed by the court. (Para 55 , 56) |
ORDER :
1. By this Leave Petition, the Petitioner seeks leave under Clause XIV of the Letters Patent Act to combine the cause of action of passing off with the cause of action of infringement of trade mark.
2. It is an admitted position that the Petitioner’s registered office is in Mumbai and the Petitioner is carrying on business in Mumbai. This Court has therefore, jurisdiction to entertain the Suit in respect of infringement of trademark under Section 134(2) of the Trademarks Act, 1999 (in short “the Act”).
3. The Respondents are carrying on business outside Mumbai and it is an admitted position that no cause of action for passing off has arisen within the jurisdiction of this Court. Accordingly, the Petitioners have filed the present Leave Petition under Clause XIV of the Letters Patent.
4. The Respondents have filed Reply to the Leave Petition raising hardship to the Respondents, if the leave is granted. The contention on behalf of the Respondents is that there being no Rejoinder, the contentions in the Affidavit in Reply to the Leave Petition are deemed to have been admitted, and therefore, leave sought for in the Leave Petition should be refused.
5. Dr. Tulzapurkar, the learned Senior Counsel appearing for the Petitioner has submitted that this Court has jurisdiction to grant relief in respect of infringement of trademark as the Petitioners are carrying on business in Mumbai and have their principal place in Mumbai. This position is not disputed by the Respondents.
6. Dr. Tulzapurkar has accordingly submitted that the Petitioners are entitled to invoke Clause XIV of the Letters Patent on the ground that this Court has jurisdiction in respect of infringement and therefore the claim for passing off be combined with the relief for infringement to avoid multiplicity of proceedings.
7. Dr. Tulzapurkar has placed reliance on Arte Indiana Vs. M/s. P. Mittulaul Lalah & Sons,
8. Dr. Tulzapurkar has also relied upon on the subsequent decision of this Court in Manugraph India Ltd. Vs. Simarq Technologies Pvt. Ltd. , [2016 SCC OnLine Bom. 5334], where this Court has interpreted the judgment of the Supreme Court in Sanjay Dalia (supra) and held that the Plaintiff can file a Suit where its registered office or principal office is situated and does not have to go to the place where its branch office is situated and where the cause of action has arisen.
9. Dr. Tulzapurkar has also relied upon the decision of this Court in Kalpataru Properties Pvt. Ltd. Vs. Sri Kalpataruvu Chits (India) Pvt. Ltd., [2017 SCC Online Bom. 4209] in support of his submission that where the Court has jurisdiction in respect of one cause of action, i.e. infringement the cause of action in respect of which does not have jurisdiction i.e. passing off ca
