[2024:RJ-JP:46014]
HIGH COURT OF JUDICATURE FOR RAJASTHAN
BENCH AT JAIPUR
S.B. Civil Writ Petition No. 2301/2013
Sanskriti School Through Its Authorized Representative, Gat No.
1164, Village Lavale P.O. Mulshi District Pune 411042,
Maharashtra
----Petitioner
Versus
India International Technical Institute Through Its Alleged
Secretary Sri Gopal Krishan Agrawal, H-46 Tagore Path, Bani
Park, Jaipur, Rajasthan
----Respondent
Connected With
S.B. Civil Writ Petition No. 14500/2021
Sanskriti School, Through Its Authorized Representative G.S.
Mungali S/o Late Shri B.C. Mngali, Gate No. 1164, Village Lavale,
P.O. Mulshi District Pune-411042, Maharashtra.
----Petitioner
Versus
India International Technical Institute, Through Its Alleged
Secretary, Shri Gopal Krishan Agrawal, H-46, Tagore Path,
Banipark, Jaipur, Rajasthan.
----Respondent
For Petitioner(s) : Mr. R.K. Mathur, Senior Advocate,
assisted by Mr. Angad Mirdha
For Respondent(s) : Mr. G.D. Bansal
HON'BLE MR. JUSTICE SUDESH BANSAL
Order
06/11/2024
REPORTABLE
1. In both the writ petitions, impugned orders under challenge,
passed by the Civil Court of concerned Additional District Judge,
Jaipur, are different, but arise out of one Civil Suit bearing
No.518/2012 (C.I.S. No.1112/2014) titled as India International
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Technical Institute Versus Sanskriti School, registered before ADJ
No.4, Jaipur Metropolitan-II or Civil Suit No.446/2012 titled as
India International Technical Institute Versus Sanskriti School,
registered before ADJ (Fast Track) No.3, Jaipur Metro, hence, in
order to eschew repetition of factual matrix and with the consent
of counsel for both the parties, both the writ petitions have been
heard together and would be decided by this common order.
2. In Civil Writ Petition No.2301/2013 titled as Sanskriti School
Versus Indian International Technical Institute, filed by the
petitioner-defendant, under Article 227 of the Constitution of
India, vide impugned order dated 20.03.2010 passed by the
Additional District Judge No.4, Jaipur City, the opportunity to file
written statement of the plaint and reply of the application for
temporary injunction, by the petitioner-defendant was closed and
vide subsequent order dated 30.10.2012, application filed by the
petitioner-defendant under Section 151 CPC seeking to extend
time and take the written statement as well as reply to the
application for temporary injunction on record has been dismissed,
therefore, both orders have been challenged and the prayer of the
petitioner-defendant is to take his belated filed written statement
as also reply to the application for temporary injunction on record,
by condoning the delay.
3. In Civil Writ Petition No.14500/2021 titled as Sanskriti
School Versus Indian International Technical Institute, filed under
Article 227 of the Constitution of India, a challenge has been
made to the order dated 24.09.2021 passed by the Additional
District Judge No.4, Jaipur Metro-II, in the same Civil Suit
whereby and whereunder application dated 16.01.2020 filed by
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the petitioner-defendant under Section 151 CPC seeking to reject
the plaint has been dismissed. The prayer of the petitioner-
defendant is that after filing of the present plaint, the registration
of trade mark 'Sanskriti' of the respondent-plaintiff has been
cancelled by the Deputy Registrar of Trade Mark, Ahmedabad, vide
order dated 10.12.2019, hence, due to such subsequent event
and on account of other diverse defects in filing of present plaint
including suffering from defect of jurisdiction, the present plaint be
not held maintainable before the Civil Court at Jaipur, hence, same
deserves to be rejected/dismissed by the Court, at least in
exercising of inherent jurisdiction by the Court, under Section 151
CPC.
4. Briefly stated, the relevant facts of the case as culled out
from the record and which are necessary to consider both the writ
petitions, may be recapitulated as under:-
4.1 A civil suit for prohibitory and mandatory injunction
invoking provisions of Section 134/135 of the Trade Mark Act,
1999 (hereinafter referred to as 'the Act of 1999'), has been
instituted by the respondent-plaintiff against the petitioner-
defendant before the District & Sessions Judge at Jaipur on
22.01.2009. In this civil suit, respondent-plaintiff has come up
with a case that it has registered trade mark "laLd`fr" (Sanskriti)
under Registration No.1261555 before the Registrar of Trade
Marks and is imparting education using the trade mark "Sanskriti"
since long. It has further been pleaded that the petitioner-
defendant has started educational institution using the trade mark
of "Sanskriti", of which the plaintiff is a registered owner as also
lawful owner being prior user, hence, a prohibitory and mandatory
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injunction has been prayed by the plaintiff against the defendant
in following terms:-
";g fd okni= vUnj fe;kn dku wukuqlkj Jheku dh lsok
e sa izLrqr gSA vr% nkok oknh is'k dj fuosnu gS fd oknh dk nkok
fuEu izdkj fMdzh Qjek;k tk;sA
1- ;g fd okn oknh fo:) izfroknh O;; lfgr fMdzh fd;k
tko sA
2- ;g fd izfroknh dk s tfj;s LFkkbZ fu"ks/kkKk ikcan fd;k tk;s
fd og oknh ds iathd`r VªsMekdZ ^^laLd`fr ¼SANSKRITI½** ;k
mlls feyrs&tqyrs HkzkfUrdkj VªsMekdZ ds uke ls f'k{k.k laLFkk
ugha pyko s rFkk f'k{kk ls lac af/kr dk;Z ugha dj sA
3- ;g fd izfroknh ds fo:) vkn s'kkRed fu"k s/kkKk tkjh fd;k
tko s fd izfroknh ds dCts e sa tks Hkh f'k{k.k lkexzh ^^laLd`fr
¼SANSKRITI½ ;k mlls feyrs&tqyrs ukeks a ls gS mls tIr dj
u"V djk;k tkos rFkk vU; lHkh LVs'kujh] y scy vkfn tks fd
mDr fookfnr VªsMekdZ ds rgr izfroknh ds dCts e sa gS dks rqjUr
tIr fd;k tko s rFkk U;k;ky; }kjk mUgs a u"V djk;k tko sA
4- ;g fd izfroknh ds fo:) vkns'kkRed fu"k s/kkKk tkjh dh
tko s fd og vius reke cgh [kkrk sa dk s is'k dj s fd mlus
^^laLd`fr ¼SANSKRITI½ ds uke ls vHkh rd fdruk voS/k :i
ls dek;s x;s ykHk dh x.kuk djkbZ tkosA
5- ;g fd vU; vuqrks"k tks U;k;ky; Jheku mfpr le>s oknh
ds gd e sa fnyk;k tkosA
LFkku% t;iqj oknh
fnuk ad% 22-01-2009 ¼bafM;k bUVjus'kuy VsDuhdy bULVhV~; wV
lfpo xksiky d`".k vxzoky½
lR;kiu
eSa mijksDr Jh xksiky d`".k vxzoky oknh lR;kfir djrk gwa fd
mDr okn i= e sa of.kZr en la[;k 1 ls 15 rd e sjh futh
tkudkjh ,oa Kku ls lgh gS rFkk en la[;k 16 ls 19 clykg
dku wuh lgh gS rFkk dksbZ Hkh rF; feF;k vFkok xyr of.kZr ugha
fd;k x;k gSA bZ'ojh e sjh enn dj saA
LFkku% t;iqj lR;kiudrkZ
fnuk ad% 22-01-2009 ¼bafM;k bUVjus'kuy VsDuhdy bULVhV~; wV
lfpo xksiky d`".k vxzoky½"
An application for temporary injunction has also been filed
with the civil suit.
4.2 It is noteworthy that the school of the petitioner-
defendant, namely, 'Sanskriti School' is situated at Pune and is
being run by the Sanskriti Shiksha Society registered as a Public
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Trust under the provisions of Bombay Public Trust Act, 1950,
whereas institution of the respondent-plaintiff is situated at Jaipur,
Rajasthan. For the purpose of invoking the jurisdiction of the
District Court at Jaipur, in the present suit, plaintiff has taken
resort of the provisions of Section 134(2) of the Act of 1999,
particularly Clause (a) & (b), on the basis that the plaintiff is a
registered trade mark holder of name 'Sanskriti' and its institution
is situated at Jaipur, hence, is entitled to file civil suit at Jaipur in
view of Section 134(2) of the Act of 1999. The defendant has
clarified that its educational institution of Sanskriti School is
situated at Pune and its function is confined to the jurisdiction of
Pune, State of Maharashtra and the plaintiff has arbitrarily invoked
the jurisdiction of District Judge at Jaipur to seek injunction
against the defendant. However, it appears that the present suit
was entertained and registered before the District Court at Jaipur,
in the light of provisions of Section 134(2) of the Act of 1999,
since respondent-plaintiff claims itself to be a registered trade
mark holder and relied upon the provisions of Section 134(a) &
(b) of the Act of 1999, for the purpose of invoking the jurisdiction
of the Court at Jaipur, where its institution is situated.
It may be noticed here that although in the present civil suit,
plaintiff has referred in Para No.7 that he is a prior user and lawful
proprietor of the trade mark 'Sanskriti', but fundamentally, the
prohibitory and mandatory injunction has been prayed on the
basis of claiming to be a registered trade mark holder of
'Sanskriti', which stands crystal clear by a bare perusal of the
prayer clause of the plaint, extracted herein-above. It would not
be out of place to refer that as per Section 134(c) of the Act of
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1999, suit for infringement of trade mark for passing off a trade
mark can be instituted before the District Judge, but in that case,
the jurisdiction of the District Court is governed by the provisions
of Section 20 of CPC, it means that the plaintiff can invoke the
jurisdiction of the District Judge where the defendant actually and
voluntarily resides, or carries on business, or personally works for
gain or the cause of action, wholly or in part arises, but not at the
place, where plaintiff carries on business or works for gain, unlike
Clause (a) & (b) of Section 134 of the Act of 1999. Therefore,
what has emerged is that, since the school of defendant is running
at Pune, the present suit based on the passing off action, may not
be filed before the District Court at Jaipur as neither defendant
carries on business at Jaipur nor its institution or any of the
branch is situated at Jaipur nor any cause of action arises at
Jaipur.
4.3 The petitioner-defendant put in appearance in the
present suit before the trial Court on 04.04.2009 and obtained a
complete set of the documents and a copy of the plaint.
Thereafter, petitioner-defendant moved an application under Order
7 Rule 11 CPC as also another application under Section 151 CPC.
The application under Order 7 Rule 11 CPC was dismissed vide
order dated 29.08.2009, thereagainst, petitioner-defendant
preferred Civil Revision Petition bearing No.135/2009, which too
was dismissed vide order dated 04.03.2011 with observation that
all the objections raised in the application under Order 7 Rule 11
CPC may be taken by the petitioner-defendant in the written
statement. The application under Section 151 CPC remained
pending.
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4.4 In the meanwhile, opportunity to file written statement
so also to file reply to the application for temporary injunction by
the petitioner was closed by the trial Court vide order dated
20.03.2010.
4.5 The petitioner immediately filed an application on
29.03.2010 along with his written statement and reply to the
application for temporary injunction, seeking to recall the order
dated 20.03.2010 and to take the written statement/reply to the
application for temporary injunction on record. This application
has been dismissed by the trial Court vide order dated
30.10.2012, hence, petitioner-defendant has preferred S.B. Civil
Writ Petition No.2301/2013, challenging the order dated
20.03.2010 so also order dated 30.10.2012, and made a prayer to
permit to take his written statement/reply to the application for
temporary injunction on record.
4.6 This is also an undisputed fact that as per the
Certification of Registration of Trade Mark "laLd`fr" (Sanskriti)
issued by the Registrar of Trade Mark, Ahmedabad, same was not
issued in the name of respondent-plaintiff, but issued in the name
of 'Gopal Kishan Agarwal', trading as India International Technical
Institute. This Certificate was issued without knowledge and
without giving an opportunity of hearing to the petitioner, hence,
after having knowledge of issuing such registration at Trade Mark
No.1261555 dated 16.01.2004 in the name of "Sanskriti", the
petitioner submitted objections thereagainst before the Registrar
of Trade Mark. On the objection of the petitioner, an opportunity of
hearing to the respondent-plaintiff was accorded and finally, vide
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order dated 24.09.2019, registration of trade mark at No.1261555
in name of 'Sanskriti' was cancelled.
4.7 It is noteworthy here that in furtherance to the order
dated 24.09.2019, the registration of trade mark 'Sanskriti' at
trade mark No.1261555 in Clause-41, on which, plaintiff-
institution has relied upon to claim itself to be a registered trade
mark owner of the trade mark 'Sanskriti', has been removed from
the registry of the trade mark and this factual matrix and
subsequent development of fact, emanated after institution of the
present civil suit has not been disputed by the respondent-
plaintiff. Copy of the order dated 24.09.2019, passed by the
Deputy Registrar of Trade Mark, Ahmedabad and copy of the
status showing removal of trade mark registration No.1261555 are
available on record.
4.8 Thereafter, petitioner-defendant moved an application
under Section 151 CPC dated 16.01.2020 stating inter-alia that in
the light of the subsequent events and more particularly due to
cancellation of registration of trade mark vide order dated
10.12.2019, on which the plaintiff has placed reliance in the
present suit, now the civil suit is liable to be dismissed.
4.9 The application under Section 151 CPC filed by the
petitioner-defendant on 16.10.2020 was replied by the
respondent-plaintiff and the factual matrix of cancellation of
registration of trade mark No.1261555 under the order dated
10.12.2019 was admitted, however, an impression was given that
against that order, an appeal has been filed by the plaintiff and
further, the present civil suit is also based on common law rights
of the plaintiff. Therefore, even if, the registration of trade mark
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on which plaintiff has placed reliance, has been cancelled, then
also, the civil suit is liable to succeed on the ground of action of
passing off the trade mark by the defendant.
4.10 The trial Court vide order dated 24.09.2021 has
dismissed the defendant's application dated 16.01.2019 and
declined to dismiss the suit in exercise of its powers under Section
151 CPC, there against, petitioner has preferred S.B. Civil Writ
Petition No.14500/2021.
5. Heard learned counsel for both the parties and carefully
perused the record.
6. The legal position in respect of filing the written
statement/reply to the application for temporary injunction by the
defendant is well established that the defendant is under an
obligation to present written statement/reply of his defence within
a period of 30 days from the date of service of summons,
however, proviso appended to the provisions of Order 8 Rule 1
CPC, enables the Court to extend the period upto 90 days. It has
been established that the nature of provisions of Order 8 Rule 1
CPC is procedural and it is not a part of substantive law, hence,
the Court has jurisdiction to extend the period beyond (30 +90)
days as well to permit the defendant to submit his defence subject
to satisfaction of the Court about the delay. In this way, provisions
of Order 8 Rule 1 CPC and the proviso appended thereto has been
held directory in nature and not mandatory, however, the
jurisdiction by the Court to extend the time limit should be
exercised exceptionally in hard cases and not in a routine manner.
To buttress such legal proposition, reference of the celebrated
judgment of the Apex Court delivered in the case of Kailash
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Versus Nanhku & Ors.: (2005) 4 SCC 480, would be suffice. The
ratio decidendi of this judgment has been followed and reiterated
time and again and holds the field at present as well, and in that
respect, the reference of judgment of the Supreme Court in case
of Sambhaji & Ors. Versus Gangabai & Ors.: (2008) 17 SCC 117
and judgment of Atcom Technologies Limited Versus Y.A.
Chunawala and Company & Ors.: (2018) 6 SCC 639, would be
relevant.
7. In the present civil suit at hand, the right of defendant to
submit his defence in the civil suit as also in the application for
temporary injunction was closed by the trial Court vide order
dated 20.03.2010. Thereafter, immediately on 29.03.2010, the
defendant submitted written statement/reply to the application for
temporary injunction along with an application under Section 151
CPC, seeking to recall the order dated 20.03.2010 and to take his
written statement/reply on record. Learned trial Court rejected the
application vide order dated 30.10.2012 assigning the reason that
the Court has no jurisdiction to recall its own order dated
20.03.2010 and further, the pretext of not filing defence by the
defendant on account of filing an application under Order 7 Rule
11 CPC and other miscellaneous application under Section 151
CPC, would not suffice. It was also observed by the trial Court in
the order dated 30.10.2012 that the application under Order 7
Rule 11 CPC filed by the defendant has been dismissed on
29.08.2009 and Civil Revision Petition No.135/2009 filed by the
defendant thereagainst has also been dismissed by the High Court
on 04.03.2011. With such reasonings, the trial Court dismissed
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the application under Section 151 CPC and declined to take the
defence of defendant on record.
8. The submission of learned counsel for defendant is that
firstly, on 20.03.2010, when the right to submit defence of
defendant was closed, the case was not fixed for filing of the
written statement/reply to the application for temporary
injunction, rather it was fixed for filing of reply/hearing on the
application under Section 151 CPC. It has been submitted that on
that day, the counsel for the defendant from Delhi could not put in
appearance before the trial Court at Jaipur and behind his back,
the right to submit defence of the defendant was closed. Another
submission of the counsel for the defendant is that though it may
be true that mere filing of application under Order 7 Rule 11 CPC
may not be a sufficient reason for not filing the written statement,
but the facts and circumstances obtained in the present case are
that when the application under Order 7 Rule 11 CPC was
dismissed by the trial Court vide order dated 29.08.2009 and
thereagainst Civil Revision Petition No.135/2009 was filed by the
defendant, the High Court while dismissing the said Revision
Petition vide order dated 04.03.2011, clearly observed that the
petitioner-defendant may take all his objections in the written
statement. The order dated 04.03.2011 by the High Court was
passed in the presence of the counsel for the plaintiff, though in
absence of the counsel for the defendant, the plaintiff did not
disclose that the opportunity to submit defence of the defendant
has already been closed by the trial Court on 20.03.2010. Learned
counsel submits that the implication of the order dated
04.03.2011 passed by the High Court is that it virtually granted an
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opportunity to the defendant to submit written statement,
allowing the defendant to take all his objections in the written
statement. Hence, in the light of the order dated 04.03.2011
passed by the High Court, the trial Court ought to have permitted
the written statement/reply of the application for temporary
injunction filed by the defendant on 29.03.2010 to be taken on
record by condoning the delay, hence, on such ground, the order
dated 30.10.2012 declining to take the written statement/reply to
the application for temporary injunction on record suffers from
perversity as much as jurisdictional error and is liable to be
quashed.
9. In addition to the above, further submission of the counsel
for the defendant is that considering the nature of the present
suit, which involves issue in respect of infringement of the
intellectual property rights of the parties, using the trade name
'Sanskriti' for running the educational institutions, the defence of
the defendant is material and in such category of civil suit, it
would be expedient and in the interest of justice that the Court
may exercise its jurisdiction to extend the time for submission of
defence by the defendant, moreso when, the provisions of Order 8
Rule 1 CPC appended with proviso thereto have been declared as
directory in nature and further, the written submission has already
been submitted by the petitioner on record before the trial Court
on 29.03.2010. The purpose to honour the timeline as prescribed
under Order 8 Rule 1 CPC is to keep the defendant vigilant and to
conclude the proceedings of civil matters expeditiously. In the
present case, on the issue of taking or not the defence of
defendant on record, the matter is pending since more than 10
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years whereas petitioner has submitted his defence before the
trial Court on 29.03.2010 itself, therefore, it would be expedient
and in the interest of justice to allow that defence taken on record
to be considered on merits.
10. Counsel for respondent-plaintiff has vehemently opposed the
contentions and submits that the extension of timeline to submit
defence by the defendant can be made by the Court only on
furnishing sufficient reasons and not in a routine manner. Since
the reasons assigned by the petitioner-defendant for not
submitting his defence within timeline, are not sufficient,
therefore, the impugned orders do not warrant any interference by
this Court and the writ petition deserves to be dismissed.
11. Having considered the rival contentions of the counsel for
both the parties and taking into consideration the legal proposition
as referred herein-above as also in the light of observations made
by the High Court in the order dated 04.03.2011 while dismissing
Civil Revision Petition No.135/2009 filed by the petitioner-
defendant against dismissal of application under Order 7 Rule 11
CPC, allowing the petitioner to take all his legal objections in the
written submission, and moreover proceedings of the present civil
suit are withheld for more than 10 years only on the issue of delay
in filing written statement, in the opinion of this Court, a liberal
view needs to be taken in respect of reasons assigned by the
defendant for delay in submission of his defence. In addition, it
may be observed here that the delay in submission of written
statement/reply to the application for temporary injunction may
not be termed as deliberate and willful, but same seems to be
circumstantial and moreover, the written statement/reply to the
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application has already been submitted by the petitioner-
defendant on record of the trial Court on 29.03.2010. Thus, in
such peculiar circumstances obtaining in the present case, this
Court finds that present case is a hard case and exceptional
circumstances are available where the written statement/reply to
the application for temporary injunction submitted by the
petitioner-defendant before the trial Court on 29.03.2010 should
be allowed to be taken on record and considered on merits. But
certainly, petitioner must be mulcted with exemplary cost. Hence,
ordered accordingly.
12. It appears from the record that petitioner was asked to
deposit cost of Rs.10,000/- by this Court vide order dated
18.02.2013 while issuing notices to the respondent and in
pursuance thereof, petitioner has deposited such cost. Hence, it is
hereby ordered that on payment of cost of Rs.10,000/-, which has
been deposited by the petitioner before this Court, the written
statement/reply to the application for temporary injunction of
defendant, already filed before the trial Court, is directed to be
taken on record. The cost lying deposited before the High Court
may be disbursed to the respondent-plaintiff.
13. Coming to another issue in respect of dismissal of the
application dated 16.01.2020 filed by the petitioner-defendant
under Section 151 CPC seeking dismissal of the civil suit in the
light of the cancellation of registration of trade mark 'Sanskriti' by
the Deputy Registrar of Trade Marks vide order dated 10.12.2019,
this is an undisputed fact that the respondent-plaintiff instituted
present suit before the District & Sessions Judge at Jaipur on
22.01.2009. In the suit, respondent-plaintiff has strongly relied
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upon the registration of trade mark 'Sanskriti' under Registration
No.1261555 before the Registrar of Trade Marks. It is also
undisputed that later on, one rectification application was filed by
Sanskriti Shiksha Samiti, which is running the Sanskriti School at
Pune i.e. petitioner, seeking to cancel the registration of trade
mark 'Sanskriti'. Such rectification application was contested by
the respondent-plaintiff, but finally in the rectification proceedings,
vide order dated 10.12.2019, registration of trade mark 'Sanskriti'
has been cancelled and struck down from the record. Thus, the
present civil suit for infringement of trade mark of 'Sanskriti',
which was filed on the basis of registration of such trade mark,
obviously does not survive after cancellation of the registration.
Although before the trial Court, an impression was given by the
respondent-plaintiff that against the order dated 10.12.2019, an
appeal before the Intellectual Property Appellate Board (IPAB),
Chennai, has been filed, but in counter thereto, counsel for the
petitioner-defendant has referred to the notification dated
22.04.2021 issued by the Ministry of Commerce & Industry
whereby the establishment of the Intellectual Property Appellate
Board (IPAB) established under Section 83 of the Trade Marks Act,
1999, has been dissolved w.e.f. 04.04.2021. In this view, the
pretext taken by the respondent-plaintiff that the order dated
10.12.2019 is not final, has turned futile and the counsel for the
respondent-plaintiff, before this Court does not dispute that in
view of cancellation of the registration of trade mark 'Sanskriti'
vide order dated 10.12.2019, the plaintiff's suit for infringement of
registered trade mark does not survive and the cause of action in
respect of infringement has disappeared.
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14. However, the contention of the counsel for the plaintiff-
respondent is that since the present suit for prohibitory and
mandatory injunction in respect of use of trade mark 'Sanskriti'
has been filed on the basis of passing off alleging that plaintiff is
prior user and lawful owner of such trade mark, therefore, the suit
shall survive on this ground, hence, cannot be dismissed merely
on account of cancellation of registration of trade mark 'Sanskriti'.
Learned counsel submits that the trial Court considered this
aspect in the order impugned dated 24.09.2021 and having placed
reliance on the judgment of Delhi High Court in case of Pankaj
Goel Versus Dabur India Ltd.: MANU/DE/2271/2008, has not
committed any illegality and jurisdictional error in dismissing the
application filed by the respondent-plaintiff under Section 151 CPC
and declining to dismiss the present suit.
15. On this issue, counsel for the petitioner-defendant submits
that fundamentally, plaintiff's suit for prohibitory and mandatory
injunction in respect of trade mark 'Sanskriti' has also been
invoked on the ground of registration of trade mark invoking
provisions of Section 134/135 of the Trade Marks Act. Further, in
the prayer of suit, plaintiff has relied upon only on registration of
trade mark and has prayed for damages as well, which cannot be
claimed in the suit for injunction, if filed on the basis of passing off
the trade mark. Learned counsel for the petitioner submits that
when undeniably the registration of trade mark 'Sanskriti' on
which plaintiff relied upon, has been cancelled by the competent
authority of Trade Marks vide order dated 10.12.2019, which has
attained the finality, in view of such subsequent facts and relied
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upon the principle of ex debito justitiae, the present suit is liable
to dismissed.
16. In addition, it has been argued that in the suit for injunction
on the ground of passing off trade mark, damages cannot be
claimed and further, the jurisdiction of Court would be governed
by the provisions of Section 134(c) of the Trade Marks Act. It
means that the suit can be filed before the District Court within
whose jurisdiction, defendants or any of the defendant, actually
and voluntarily resides and carries on business or personally
works for gain or where the cause of action wholly or partly has
accrued. Clauses (a) and (b) of Section 134 of the Trade Marks
Act, which provide a privilege to invoke the jurisdiction of District
Court where the person instituting the suit resides or carries on
business or personally works for gain, has no applicability in the
suit for injunction filed on the basis of passing off. Thus, in that
view, the civil suit instituted before the District & Sessions Judge
at Jaipur, on the basis of claiming registration of trade mark in
favour of plaintiff and taking resort of Section 134 of the Trade
Marks Act cannot be maintained at Jaipur, since the school of the
petitioner-defendant is situated and running at Pune, State of
Maharashtra. Learned counsel submits that in the suit for
injunction based on passing off trade mark, the jurisdiction of civil
suit would be governed as per Section 20 of CPC, hence, in that
view, the civil suit pending before the District & Sessions Judge at
Jaipur is liable to be dismissed.
17. This Court has extended its thoughtful consideration over the
rival contentions of learned counsel for both the parties. The legal
position is well established that a joint suit for injunction in
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respect of intellectual property rights, based on infringement of
registered trade mark as also passing off the registered trade
mark is maintainable, rather the suit based on passing off trade
mark, it means, claim of the prior user of the trade mark prevails
over the suit based on subsequent registration of trade mark and
even if, a person has failed to prove the infringement of
registration of trade mark, may succeed in obtaining injunction on
establishing the prior user of the trade mark. The legal position in
this respect has been clarified by the Division Bench of Delhi High
Court in case of N.R. Dongre Versus Whirlpool Corporation
reported in MANU/DE/0461/1984 : AIR 1985 Delhi 300 and
in case of Century Traders Versus Roshan Lal Duggar & Co.
reported in MANU/DE/0153/1977 : AIR 1978 Delhi 250,
which have been followed in case of Goenka Institute of Education
and Research Versus Anjani Kumar Goenka & Ors.: AIR 2009
Delhi 139. In view view of legal position, obviously the civil suit
for injunction based on passing off trade mark or claiming prior
user and on the basis of common law rights can survive, even if,
the claim for injunction on the basis of infringement of registered
trade mark has ceased to operate due to subsequent cancellation
of registration of trade mark. It is no more res-integra that the
sustainability of a civil suit in the light of subsequent events may
be considered by the Court and if it is found that on account of
accrual of the subsequent events post institution of original civil
proceedings, either the cause of action has disappeared or the suit
has rendered infructuous or has become not sustainable in the
eyes of law or has suffered from jurisdictional error, and it is
expedient to not proceed with such suit, the Court may pass
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[2024:RJ-JP:46014] (19 of 25) [CW-2301/2013]
appropriate orders while exercising its inherent jurisdiction under
Section 151 CPC following the principle of ex debito justitiae. In
support of such proposition of law, reference of a celebrated
judgment of the Apex Court in case of Shipping Corporation of
India Ltd. Versus Machado Brothers & Ors.: (2004) 11 SCC 168,
would be suffice and Para 25 of the said judgment is being
reproduced hereunder:
"25. Thus it is clear that by the subsequent event if
the original proceeding has become infructuous, ex
debito justitiae, it will be the duty of the court to take
such action as is necessary in the interest of justice
which includes disposing of infructuous litigation. For
the said purpose it will be open to the parties
concerned to make an application under Section 151 of
CPC to bring to the notice of the court the facto and
circumstances which have made the pending litigation
infructuous. Of course, when such an application is
made, the court will enquire into the alleged facts and
circumstances to find out whether the pending
litigation has in fact become infructuous or not."
18. In another judgment, the Supreme Court in case of Kedar
Nath Agrawal (dead) & Anr. Versus Dhanraji Devi (dead) by LRs:
(2004) 8 SCC 76, while considering the issue of extending
weight to the subsequent events and effect thereof on the pending
civil proceedings and on the issue as to whether the suit should be
allowed to continue or not, held and observed in Para No.16 as
under:-
"16. In our opinion, by not taking into account the
subsequent event, the High Court has committed an
error of law and also an error of jurisdiction. In our
judgment, the law is well settled on the point, and it is
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[2024:RJ-JP:46014] (20 of 25) [CW-2301/2013]
this: The basic rule is that the rights of the parties
should be determined on the basis of the date of
institution of the, suit or proceeding and the
suit/action should be tried at all stages on the cause of
action as it existed at the commencement of the
suit/action. This, however, does not mean that events
happening after institution of a suit/proceeding, cannot
be considered at all. It is the power and duty of the
court to consider changed circumstances. A court of
law may take into account subsequent events inter alia
in the following circumstances:
(i) The relief claimed originally has by reason of
subsequent change of circumstances become
inappropriate; or
(ii) It is necessary to take notice of subsequent events
in order to shorten litigation; or
(iii) It is necessary to do so in order to do complete
justice between the parties."
19. In view of the established proposition of law referred herein-
above, the effect of cancellation of the registration of trade mark
'Sanskriti', on the basis of which, the plaintiff filed the present suit
for infringement of trade mark of 'Sanskriti' against defendant, is
explicit that the present suit for prohibitory and mandatory
injunction and for consequential claim for damages as prayed in
the suit, does not survive and is liable to be rejected on account of
cancellation of registration. To this extent, counsel for respondent-
plaintiff also has no quarrel. The trial Court committed illegality in
observing that the suit for compensation/damages shall survive.
20. As far as survival of the present suit for the prayer of
injunction only, on the basis of claiming prior user of trade mark
'Sanskriti' by plaintiff and passing off the trade mark of 'Sanskriti'
is concerned, a perusal of the plaint as a whole goes to show that
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the drafting of the present suit revolves around the claim of
infringement of registration of trade mark, although in Paras No.7
& 12, slight reference of prior user and entitlement of plaintiff for
injunction on the basis of lawful owner of trade mark and under
the common law rights, have been pleaded, but in prayer clause of
the plaint, the injunction and the damages have been prayed only
on the basis of registration of trade mark.
In the opinion of this Court, the present plaint does not
contain material facts in respect of claiming the injunction on the
ground of prior user or passing off under the common law rights
nor the prayer of injunction is based on such rights.
21. That apart, the major issue has emerged in respect of
continuing the present suit within the jurisdiction of the District &
Sessions Court at Jaipur. Since, initially when the suit was filed on
22.01.2009, the jurisdiction of District Court at Jaipur was invoked
by the plaintiff relying upon the registration of trade mark and
taking resort of Section 134(a) & (b) of the Trade Marks Act, but
such cause of action does not survive and has disappeared, after
cancellation of registration vide order dated 10.12.2019 passed by
the Registrar of Trade Marks. The suit on the basis of prior user
and passing off can be filed by the respondent-plaintiff against the
petitioner-defendant before the District Judge having jurisdiction
by virtue of Section 20 of CPC read with Section 134(c) of the
Trade Marks Act. Therefore, this Court is of the considered opinion
that the present suit, even if held to be survived on the ground of
prior user or passing off under the common law rights, then also
same cannot be allowed to continue within jurisdiction of the
District Court or Additional District Court situated at Jaipur and in
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[2024:RJ-JP:46014] (22 of 25) [CW-2301/2013]
view of the cancellation of the registration of trade mark on the
basis of which plaintiff invoked the jurisdiction of the District Court
at Jaipur, now the District Court or Additional District Court at
Jaipur, has no jurisdiction to entertain and continue the present
civil suit. The cause of action of prior user or passing off the trade
mark has not been accrued within jurisdiction of Jaipur Court as
defendant is running school at Pune. The trial Court could not
ponder over this aspect, while considering the application under
Section 151 CPC filed by the petitioner-defendant.
22. In view of the above discussion, the real scenario in respect
of the present suit has emerged in the manner that the suit was
filed way back on 22.01.2009, wherein till date no progress has
commenced. Counsel for the respondent-plaintiff admits that no
ad-interim injunction order has been passed in the present suit
and the proceedings have been pending at the stage of taking or
not the written statement/reply to the application for temporary
injunction on record. The cause of action to continue the civil suit
for prohibitory and mandatory injunction and consequential prayer
of damages, passed on the ground of infringement of registered
trade mark of Sanskriti, does not survive after cancellation of
registration vide order dated 10.12.2019. No cause of action on
the basis of prior user and passing off has accrued within the
territorial jurisdiction of District Court at Jaipur and undeniably,
the educational institution of defendant is running at Pune in the
State of Maharashtra. As has been noticed herein-above that the
prayer in the suit is wholly based on the infringement of registered
trade mark and not on the basis of prior user or passing off action.
The pleadings in respect of claiming injunction on the basis of
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prior user and passing off action suffer from lapses of material
facts and moreover, the territorial jurisdiction of the District Court
at Jaipur, ceased to operate to continue the present suit on the
basis of prior user and passing off for want of territorial
jurisdiction. Undisputedly, the school of defendant is running at
Pune and Sanskriti Shiksha Samiti, which is running the
defendant's school, has not been made party to the present suit
for which an application for impleadment has been stated to be
pending before the trial Court. Thus, this Court finds that the
present civil suit, at one hand has suffered from the defect of
territorial jurisdiction to be continued within the jurisdiction of
District Court at Jaipur, suffer from diverse defects. In such
peculiar facts and circumstances, allowing to continue the present
civil suit before the District Court at Jaipur would be against the
law whereas on the contrary, the cause of action in respect of
prior user and passing off is a recurring cause of action, hence,
the plaintiff has liberty to file a fresh suit with narration of
material and substantive pleadings in respect of claiming
injunction on the basis of prior user and passing off action for
which, obviously the jurisdiction of Court can be invoked with the
aid of Section 134(c) of the Trade Marks Act read with Section 20
of CPC. Thus, in the opinion of this Court, it would be in the
interest of justice as also would be in conformity to the principle of
ex debito justitiae that the present civil suit be ordered to be
dismissed with liberty to plaintiff to file a fresh suit before the
competent Court having jurisdiction to entertain the suit for
injunction on the basis of passing off action.
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23. It is well established principle of law that the inherent powers
by the Civil Court may be exercised to pass necessary orders in
order to secure the ends of justice. This Court finds that such
inherent powers ought to have been and must be exercised in the
present case, adhering to the principle of ex debito justitiae, it
means to do the complete justice with the parties.
24. As a result, this Court is of the considered opinion that the
trial Court has committed jurisdictional error in passing the order
impugned dated 24.09.2021. This Court, applying the principle of
ex debito justitiae and in exercise of inherent power under Section
151 CPC, holds that the present suit does not survive further
before the District Court at Jaipur as also for the other reasons
discussed herein-above, it is in the interest of justice to continue
the proceedings of such civil suit, which otherwise suffers from
diverse defects as noticed herein-above. Hence, in order to secure
the ends of justice and to do equity with both the parties, the
present suit is ordered to be dismissed with liberty to the
respondent-plaintiff to file a fresh suit with complete details and
drafting of facts in respect of claiming injunction on the basis of
prior user or passing off the trade mark before the District Court
having jurisdiction to entertain the same in view of Section 20 of
CPC and Section 134(c) of the Trade Marks Act.
25. The net outcome of the discussion made herein-above is that
S.B. Civil Writ Petition No.2301/2013 titled as Sanskriti School
Versus India International Technical Institute is hereby allowed.
The impugned orders dated 20.03.2010 and 30.10.2012 are
quashed and set aside. The written submission/reply to the
application for temporary injunction, which has already been
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[2024:RJ-JP:46014] (25 of 25) [CW-2301/2013]
submitted by the petitioner-defendant before the trial Court way
back on 29.03.2010, are directed to be taken on record on cost of
Rs.10,000/-. The cost, which has already been deposited by the
petitioner-defendant before this Court, may be disbursed to the
respondent-plaintiff.
26. S.B. Civil Writ Petition No.14500/2021 titled as Sanskriti
School Versus India International Technical Institute also succeeds
and is hereby allowed. The impugned order dated 24.09.2021 is
hereby quashed and set aside and Civil Suit No.518/2012 titled as
India International Technical Institute Versus Sanskriti School
pending before the Additional District Judge No.4, Jaipur
Metropolitan-II is hereby dismissed. However, the respondent-
plaintiff is at liberty to file a fresh suit, with complete details and
drafting of facts in respect of claiming injunction on the basis of
prior user or passing off the trade mark before the District Court
having jurisdiction to entertain the same in view of Section 134(c)
of the Trade Marks Act read with Section 20 of CPC.
27. Stay application and any other pending application(s), if any,
stand disposed of.
28. A copy of this order be placed in each of the file.
(SUDESH BANSAL),J
SUNIL SOLANKI /57-58
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