1. The Defendant has filed the present Notice of Motion asserting that the Plaint is liable to be rejected as “barred by law’’ under Order VII Rule 11 (2) of the Code of Civil Procedure, 1908 (‘’Code’’).

2. It is submitted on behalf of the Defendant that the present Suit is for infringement and passing off. Leave under Clause XIV of the Letters Patent has not been granted till date. Hence, in law, there is presently no action for passing off. The action before this Court is for infringement alone. It is submitted that jurisdiction for the action for infringement has not been invoked with reference to the ‘cause of action’. In fact, it is an admitted position that no part of the cause of action (infringement or passing off) has arisen within the jurisdiction of this Court. The Plaintiffs have sought to sustain jurisdiction, in so far as the plea of infringement is concerned, solely by relying upon Section 134 of the Trademarks Act, 1999 (“the Act”). If this requirement is not met, the action must forthwith fail.

3. It is further submitted on behalf of the Defendant that admittedly it is the Plaintiff No. 2 who is the owner of the marks which are allegedly infringed by the Defendant and that the Plaintiff No.1 is a licensee/licensed user of the marks. Relying on Sections 28, 52 and 53 of the Act, it is submitted that the said Sections make it absolutely clear that only a registered proprietor or a registered user can institute/maintain an action for infringement. It is submitted that Section 53 of the Act in fact prohibits a permitted user (example Licensee) from instituting a suit for infringement. It is submitted that therefore the expression ‘’person instituting the suit’’ means and must mean “a person, who under the Act, is entitled to institute a suit”. The person instituting the suit must either be a registered proprietor or a registered user. It cannot include a permitted user (licensee). The Plaintiff No.1 therefore cannot be joined in this Suit. The joinder of Plaintiff No.1 is barred/prohibited in law. The present Suit could therefore have been maintained by Plaintiff No.2 alone. There was no legal necessity to join Plaintiff No.1. The Plaint therefore is an attempt to artificially provide jurisdiction by joining Plaintiff No. 1 to the action. The endeavor clearly appears to be an attempt to form what can be described as a “jurisdictional joint venture”.

4. It is next submitted on behalf of the Defendant that the only question therefore which falls/remains for consideration is whether this Suit, by Plaintiff No.2, satisfies the test of Section 134 (2) of the Act, when no part of the cause of action has arisen within the jurisdiction of this Court. It is submitted that the Defendant sells its products only in the State of Karnataka. Assuming that Plaintiff No.2’s allegations (on merits) are correct, the cause of action for infringement arises in Karnataka. Significantly both the Plaintiffs and in particular Plaintiff No.2 have a subordinate office within the jurisdiction of the Courts in Karnataka. Hence, in Karnataka not only has the cause of action (allegedly) arisen but both the second Plaintiff and the Defendant have a physical presence (situs) in the said State. However, the Plaintiffs purely by reason of the artful pleading in paragraph 44 of the Plaint that, “The 1st Plaintiff has its Registered Office in Mumbai and Plaintiff No.2 has its Corporate Office in Mumbai from where the Plaintiffs are carrying on business in Mumbai’’, have wrongly contended that the Suit as framed, attracts Section 134 of the Act. Relying on Section 20 of the Code, it is submitted on behalf of the Defendant that assuming that paragraph 44 can be read as stating that Plaintiff No.2 carries on business from its Corporate Office and thus within the jurisdiction of this Court, this still does not attract Section 134 of the Act. It is submitted that the scope of the words ‘’carry on business’’ in explanation to Section 20 of the Code