India: Bombay HC: Having A Subsidiary Or Sub-Ordinate Place Of Business Sufficient To File Trademark Infringement Suit In That Place

Last Updated: 18 June 2015
Article by Aaron Kamath, Aarushi Jain and Gowree Gokhale
  • Trademark law in India provides that a plaintiff can file a suit for infringement in a district court within the jurisdiction where the plaintiff is actually and voluntarily residing or carrying on business or personally working for gain.
  • Where there are multiple plaintiffs filing a suit for infringement, even if one plaintiff has a place of residence or business, the court would have jurisdiction to adjudicate the matter.
  • Existence of a subsidiary / sub-ordinate office within the jurisdiction of the court would amount to "carrying on business" under Section 134(2) of the Trade Marks Act, 1999, even if cause of action does not arise at such place.

The Bombay High Court ("Court") in the case of Ultratech Cement Ltd. ("Plaintiff No. 1") & Anr. ("Plaintiff No. 2") [together "Plaintiffs"] v. Dalmia Cement Bharat Ltd.1 ("Defendant"), held that even if one of the Plaintiffs had a place of residence or business within the jurisdiction of the court, the court would have jurisdiction to entertain the suit. The Court further held that the mere existence of a subsidiary or sub-ordinate place of business, even if no cause of action arises at such place, would amount to the plaintiff "carrying on business" within the jurisdiction of the court, thus allowing him to file a suit for infringement and passing-off the trademark.

Facts

Plaintiff No. 2 is a flagship company of the Aditya Birla Group and Plaintiff No. 1 is a subsidiary of Plaintiff No. 2. The Plaintiffs are proprietors of various marks containing the words "UltraTech" or "Ultra" as part of the trademarks.

On September 30, 2009, Plaintiff No. 1 assigned its trademarks bearing the words "UltraTech" or "Ultra" ("Trademarks") in favor of Plaintiff No. 2 along with the goodwill of the business. An application for changing the name of the proprietor on record was pending before Trade Marks Registry. Plaintiff No. 2 granted a license of the Trademarks to Plaintiff No. 1, who has been using the Trademarks for the benefit of Plaintiff No. 2. Hence, for the purpose of the infringement and passing-off suit, Plaintiff No. 2 is the proprietor of all trademarks with the words "UltraTech" or "Ultra" and Plaintiff No. 1, being a licensee, was impleaded as a plaintiff.

Plaintiffs' Contentions

It was the case of the Plaintiffs that the Trademarks containing the words "UltraTech" (the words "Ultra" and "Tech", being essential and prominent features of the trademarks) are distinctive of the Plaintiffs' goods. The Plaintiffs contended that the Defendant had started using a mark containing the word "Ultra" and that the Defendant's mark was identical with / deceptively similar to the "UltraTech" trademarks of the Plaintiffs (presumably for the same goods). The Plaintiffs stated that, as a result of this, the Defendant was infringing the "UltraTech" trademarks. The Defendant further stated that the Defendant, by using its trademark with the word "Ultra" as part of it, was passing-off its goods as that of the Plaintiffs.

The Plaintiffs wanted to combine the two causes of action, i.e. the cause of action of infringement and the cause of action of passing-off in the present suit and contended that since Plaintiff No.1 carries on business in Mumbai, the Court would have jurisdiction in respect to the cause of action of infringement, by virtue of Section 134(2) of the Trade Marks Act, 1999 ("TMA").2 The Plaintiffs filed an application under Clause 14 of the Letters Patent Act ("LPA") for combining the two causes of action (cause of action of infringement and cause of action of passing-off), as the cause of action of passing-off was based on the same set of facts as the cause of action of infringement.

Defendant's Contentions

The Defendant opposed the Letters Patent application filed by the Plaintiffs and contended that the Mumbai courts did not have jurisdiction in respect to the infringement suit of the Plaintiffs because:

  • Leave under Clause 14 of the LPA can only be granted if the High Court has original jurisdiction in respect to one of the two causes of action;
  • In the present case, the Court had no jurisdiction for cause of action for infringement as it is only Plaintiff No. 2 who is entitled to file the suit for infringement, as it is the registered proprietor / user of the Trademarks;
  • Plaintiff No. 2 cannot maintain an action for infringement under Section 134(2) of the TMA as it cannot be said to be ordinarily residing or carrying on business or working for personal gain within the jurisdiction of the Court in Mumbai.

Therefore, the question of combining the two causes of action, i.e. infringement and passing-off suit does not arise.

The Defendant contended that only the place of business of Plaintiff No. 2 (being the owner of the Trademarks) should be considered for the purpose of Section 134 of the TMA. The place of business of subordinate office is to be considered only if the cause of action has also arisen in such a place. Thus, the Defendant intended to incorporate the principle behind Section 203 of the Code of Civil Procedure ("CPC") into Section 134(2) of the TMA. The Defendant further submitted that since only a subsidiary or sub-ordinate office and not the principal office of Plaintiff No. 2 was within jurisdiction of the Court, Plaintiff No. 2 could not be said to be ordinarily "carrying on business" within the jurisdiction of the Court under Section 134(2) of the TMA.

Previous Order of the Court on the Issue

The present issue was earlier raised in the Defendant's application for rejection of the plaint under Order 7 Rule 11 of the CPC.4 In the said matter, the learned Single Judge of the Court had held that "for the court to have jurisdiction under Section 134(2) of the TMA, only the Plaintiff's residence / business was sufficient and the place of accrual of cause of action was not relevant; that it was sufficient if one of the plaintiffs carried on business within the territorial jurisdiction of this Court to invoke the jurisdiction under Section 134(2) of the Act; and that even if the Plaintiff was a corporation and even if the cause of action for infringement arose wholly outside the territorial jurisdiction of this Court, this Court would still have jurisdiction under Section 134(2), even if such Plaintiff only had his subordinate office and not his principal office within the local limits of the jurisdiction of this Court." This order of the Single Judge was challenged in an appeal before a Division Bench and was subsequently dismissed. However, it was submitted by the Defendant that they had the right to raise objection on the ground of jurisdiction and this issue requires independent scrutiny. Thus, in order to do complete justice, the court considered and decided the issue of jurisdiction on merits.

Decision

The Court considered an earlier case decided by the Supreme Court of India ("Supreme Court") which directly addressed the issue at hand,5 but in respect to section 62(2) of the Copyright Act, 1957 ("Copyright Act"). Section 62(2) of the Copyright Act is similar and runs in pari materia with section 134(2) of the TMA. The Supreme Court held that "irrespective of whether the particular plaintiff, where there are more plaintiffs than one, is entitled to the relief in respect of the cause of action for infringement claimed in the suit, his place of residence or business would confer jurisdiction on the court to entertain the cause of action of infringement in a jointly instituted suit."

The Court was in agreement with this decision of the Supreme Court and decided the issue concerning jurisdiction in the instant case along the same lines.

With respect to the issue on Plaintiff No. 2 ordinarily carrying on business within the jurisdiction of the Court, the Court was of the view that it was not possible to import the explanation behind section 20 of the CPC into Section 134(2) of the TMA, as Section 134(2) of the TMA is an independent provision aiming to expand the jurisdiction of the court. The purpose behind Section 134(2) of the TMA was to "allow the plaintiff to file the suit at the place where the plaintiff resides or carries on business without any reference to the place of residence or business of the defendant or the place where the cause of action arises."

The Court held that there was no need to read the explanation of Section 20 of the CPC along with Section 134(2) of the TMA. The Court further held that the cause of action of infringement and the cause of action of passing-off could be clubbed without causing prejudice to the Defendant and thus the leave petition was allowed.

Analysis

In this case, the Court has expanded the scope of its jurisdiction under Section 134(2) of the TMA to allow the filing of an infringement suit even if one of the plaintiffs has a place of business within the jurisdiction of the district court. This is in line with the objective of Section 134 of the TMA which, in essence, aims to provide convenience to a plaintiff to file in a place where the plaintiff actually or voluntarily resides or carries on business or personally works for gain. This special provision in the TMA is a deviation from the principle under Section 20 of the CPC which requires that a corporation would be deemed to be "carrying on business" at its principal office in India, or in respect of a sub-ordinate office, if such cause of action takes place at the place of the sub-ordinate office.

Often, foreign trademark owners grant a trademark license to the Indian subsidiary for use of the trademark in India. In such cases, typically, the licensee is also impleaded as one of the plaintiffs when such trademark is infringed or otherwise violated. In such cases, now this judgment clarifies that the place of business of such licensee, could confer jurisdiction on the court.

Footnotes

1. Leave Petition No. 320 of 2013 in Suit No. 42 of 2014. Decided by a Single Judge bench on January 29, 2015.

2. Section 134 - Suit for infringement, etc., to be instituted before District Court

(1) No suit:

(a) for the infringement of a registered trade mark; or

(b) relating to any right in a registered trade mark; or

(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered,

shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.

(2) For the purpose of clauses (a) and (b) of sub-section (1), a "District Court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain.

Explanation.--For the purposes of sub-section (2), "person" includes the registered proprietor and the registered user.

3 Section 20 - Other suits to be instituted where defendants reside or cause of action arises

Subject to the limitations aforesaid, every suit shall be instituted in a Court within the local limits of whose jurisdiction --

(a) the defendant, or each of the defendants where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain; or

(b) any of the defendants, where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain, provided that in such case either the leave of the Court is given, or the defendants who do not reside, or carry or business, or personally work for gain, as aforesaid, acquiesce in such institution ; or

(c) the cause of action, wholly or in part, arises.

Explanation - A corporation shall be deemed to carry on business at its sole or principal office in [India] or, in respect of any cause of action arising at any place where it has also a subordinate office, at such place.

4 Order 7 Rule 11. Rejection of plaint.- The plaint shall be rejected in the following cases:—

(a) where it does not disclose a cause of action;

(b) where the relief claimed is undervalued, and the plaintiff, on being required by the court to correct the valuation within a time to be fixed by the court, fails to do so;

(c) where the relief claimed is properly valued, but the plaint is written upon paper insufficiently stamped, and the plaintiff, on being required by the court to supply the requisite stamp paper within a time to be fixed by the Court, fails to do so;

(d) where the suit appears from the statement in the plaint to be barred by any law;

(e) where it is not filed in duplicate;

(f) where the plaintiff fails comply with the provision of Rule 9.

Provided that the time fixed by the court for the correction of the valuation or supplying of the requisite stamp papers shall not be extended unless the court, for reasons to be recorded, is satisfied that the plaintiff was prevented by any cause of an exceptional nature from correcting the valuation or supplying the requisite stamp papers, as the case may be within the time fixed by the court and that refusal to extend such time would cause grave injustice to the plaintiff.

5 Exphar Sa v. Eupharma Laboratories Ltd., (2004) 3 SCC 688.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Aaron Kamath
Aarushi Jain
Similar Articles
Relevancy Powered by MondaqAI
Khurana and Khurana
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Khurana and Khurana
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions