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CASE NO.:

Appeal (civil) 6248 of 1997

PETITIONER:

M/s. Dhodha House

RESPONDENT:

S.K. Maingi

DATE OF JUDGMENT: 15/12/2005

BENCH:

B.P. Singh & S.B. Sinha

JUDGMENT:

JUDGMENT

W I T H

CIVIL APPEAL NO. 16 of 1999

S.B. SINHA, J :

Extent of jurisdiction of a civil court to determine a lis as regard

infringement of the provision of the Copyright Act, 1957 (for short "the

1957 Act") and the Trade and Merchandise Marks Act, 1958 (for short "the

1958 Act") is in question in these appeals.

We would notice the fact of the matters separately.

Civil Appeal No. 6248 of 1997 :

The Appellant herein filed a suit against the Respondent to protect his

copyright, trade marks and common law rights as regard his art work/ label/

trade mark and wrapper contained in Annexure A to the memo of appeal

which the Respondent had allegedly infringed by using the impugned trade

mark/ art work/ label/ wrapper contained in Annexure B thereto.

According to the Appellant, the said art work/ label/ trade mark/

wrapper infringes the Appellant’s trade mark registration ’Dhodha House’

under Registration No. 277714-B in class 30 under the 1958 Act, as also

copyright registered under the 1957 Act being registration No. A-5117 and

A-5330 of 1970. The Appellant also claims it to be a prior user of the said

trade mark and name and enjoys goodwill as well as reputation in respect

thereof since 1960.

It is not in dispute that the Appellant carries on business of sweet

meats in the district of Ghaziabad whereas the Respondent carries on the

similar business in the name and style of M/s. V.R.K. Todha Sweet House at

Kotkapura in the district of Faridkot. The Appellant herein filed a suit

before the District Judge, Ghaziabad wherein it also prayed for an order of

injunction. The learned 1st Addl. District Judge, Ghaziabad by an order

dated 17.1.1992 passed an order of injunction against the Respondent in the

following terms:

"Application 5-C is allowed to the extent that the

OP/defendants, their servants, dealers, stockists,

distributors, assigns, representatives and agents, are

restrained during the pendency of the suit, from

infringing the plaintiffs copyright existing in the art

work/ label and wrapper, duly registered at Nos. A-

5117/70 and A-5330/70 under the Indian Copyright Act,

1957 by using these in the art work involved in

defendant’s labels, and wrappers entitled Manni’s Todha

Sweet or any other labels and wrappers, confusingly

similar to the aforementioned art work, label and wrapper

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of the plaintiff. They are further restrained from passing

off their goods and business as and for the business and

goods of the plaintiff under the impugned trade mark

Todha with prefix Maingi’s or its labels and wrapper

which are identical with deceptively similar to the trade

mark Dhodha with prefix Royal and its labels and

wrappers being used by the plaintiff in his distinctive get-

up, make-up, colour scheme, combination and manner of

writing."

The Respondent preferred an appeal thereagainst before the High

Court of Judicature at Allahabad which was marked as First Appeal From

Order No. 401 of 1992.

By an order dated 5.5.1997, the High Court inter alia held that the

Civil Court had no territorial jurisdiction to try the suit. The High Court was

further of the opinion that ’Dodha’ is a name of a variety of sweet and it is

not a special product which is manufactured by the plaintiff alone.

The Appellant is, thus, before us.

Civil Appeal No. 16 of 1999 :

The defendant is the Appellant herein. Both the plaintiff and

Appellants carry on business in diesel engines at Rajkot in the State of

Gujarat. A suit on the original side of the Delhi High Court was filed inter

alia for perpetual injunction restraining infringement of trade mark,

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