1. The Petitioners (œPlaintiffs?) have filed the present Suit, inter alia, for infringement of its registered trademarks being œUltraTech Cement? and/or marks, the essential feature whereof is 'UltraTech', as more particularly set out in the Plaint, and for passing off.
2. For the sake of convenience, the Petitioners shall hereinafter be referred to as œthe Plaintiffs? and the Respondents as œthe Defendants?.
3. According to the Plaintiffs, this Court has jurisdiction to grant reliefs for infringement of trademarks in view of the fact that the Plaintiffs carry on business within the jurisdiction of this Court and Plaintiff No.1 has its Registered Office and Plaintiff No.2 has its Corporate Office within the jurisdiction of this Court. Admittedly, the Defendants do not carry on business nor do they have any place of business within the jurisdiction of this Court. In view thereof, the Plaintiffs are, by the present Petition, seeking leave under Clause XIV of the Letters Patent for combining the cause of action for passing off with the cause of action for infringement.
4. According to the Plaintiffs, in the present case, on identical facts, the Plaintiffs are entitled to claim both the reliefs i.e. in respect of the cause of action for infringement and passing off. It is submitted that what is of paramount consideration for the Court is whether the grant of such leave is necessary to avoid multiplicity of proceedings. It is submitted that once this Court is satisfied that it has jurisdiction in respect of the cause of action for infringement of trademark, in order to avoid multiplicity of proceedings this Court should grant leave under Clause XIV of the Letters Patent to combine the cause of action for passing off with the cause of action for infringement of trademark. It is therefore submitted on behalf of the Plaintiffs that this is a fit case to grant leave under Clause XIV of the Letters Patent to avoid multiplicity of proceedings.
5. The Learned Advocate appearing for the Defendants submitted that the Plaintiffs are not entitled to the leave as sought, as no cause of action whatsoever has arisen within the jurisdiction of this Court. It is submitted that Clause XIV of the Letters Patent mandates that at least one cause of action should arise within the jurisdiction of this Court. It is submitted that this proposition is confirmed by a Division Bench of this Court in the case of Sir Tukoji Rao Holkar vs. Sowkabai Pandharinath Rajapurkar (1928 BLR Vol. (31) 7)which was thereafter confirmed by the judgment of another Division Bench of this Court in the case of M/s. Arte Indiana vs. Mittulal Lalah and Sons (1999 Vol. (103) 3 BLR 188). It is submitted that though in the case of Arte Indiana (supra), the Court proceeded on the basis that the cause of action in relation to infringement of copyright arose within the territorial jurisdiction of this Court, the said judgment is not an authority on the proposition as to when œcause of action? is said to arise œwithin jurisdiction?, as there is no discussion whatsoever about the same. It is submitted that it is trite law that a judgment is an authority only for what it decides and not for what can be deduced therefrom. In support of this contention, the Defendants have relied on the decision of the Hon'ble Apex Court in the case of Union of India v. Chajju Ram (AIR 2003 SC 2339). It is therefore submitted that in the present case no cause of action whatsoever has arisen within the jurisdiction of this Court. The cause of action even in respect of infringement has occurred only in Haryana, Punjab and Himachal Pradesh where the products of the Defendants are available and where the alleged actual infraction of the Plaintiffs' right has taken place. In support of this contention, the Defendants have relied on the judgments in the case of UnichemLaboratories Pvt. Ltd. vs. Cadilla Healthcare Pvt. Ltd.4 and in the case of Pfizer Enterprises Sarl vs. Cipla Ltd. (ILR (2009) 11 Del.676).
6. It is further submitted on behalf of the Defendants that Section 134 (2) of the Trade Marks Act, 1999 (œthe Act?) enables a registered proprietor of a trademark to institute a suit for infringement in a District Court within the local limits of whose jurisdiction, at the time of institution of the suit, the registered proprietor actually and voluntarily resides or carries on business or personally works for gain. It is submitted that what Section 134 (2) of the Act does is that it renders the œaccrual of cause of action? within the jurisdiction of such Court wholly irrelevant and a registered proprietor is entitled to maintain an action for infringement at a place where he or she voluntarily resides or carries on business or personally works for gain, notwithstanding the fact that no cause of action may have arisen within the jurisdiction of such Court. But for Section 134 (2) of the Act, it would have been incumbent for the registered proprietor to sue only at the place where the actual infringement took place. However, Clause XIV of the Letters Patent does not render 'cause of action' within jurisdiction irrelevant. In fact, Clause XIV of the Letters Patent specifically contemplates the accrual of the cause of action within the jurisdiction of this Court. As such, recourse to Clause XIV of the Letters Patent cannot be taken in a case where the entire cause of action arises outside the jurisdiction of the concerned Court. Therefore, while a suit for infringement may in a given case be maintainable, the question of combining the cause of action for infringement with passing off does not arise when the cause of action even in respect of infringement does not arise within the territorial jurisdiction of this Court.
7. It is further submitted on behalf of the Defendants that even otherwise, leave under Clause XIV of the Letters Patent is not warranted in the facts and circumstances of the present case. It is submitted that though Section 20 of the Code of Civil Procedure, 1908 (œCPC?) may not ipso facto be applicable to the present case while exercising discretion under Clause XIV of the Letters Patent for joinder of causes of action for infringement and passing off, this Court should give deference to the scheme and/or principle and/or policy contained in Section 20 of the CPC. It is submitted that Section 20 of the CPC mandates that where a œcorporation? has a subordinate office and the cause of action arises at such place, it is only the Court at such place which will have jurisdiction. Admittedly, the Plaintiffs have a subordinate office in Punjab and/or Haryana and/or Himachal Pradesh. Accordingly, the Courts in Punjab and/or Haryana and/or Himachal Pradesh are the Courts in which the present Suit ought to have been filed. It is further submitted that the provisions of the CPC can serve as guidelines so long as they are not directly inconsistent with any other applicable provisions. In support of these contentions, the Defendants have relied on the judgments of the Hon'ble Supreme Court in the case of M/s. Patel Roadways Ltd. vs. M/s. Prasad Trading Company (1992 (94) BLR 882)and in the case of SargujaTransport Service vs. State Transport Appellate Tribunal, Gwalior and others (AIR 1987 SC 88). The Defendants have also relied on the judgment of the Division Bench of the Delhi High Court in the case of Indian Performing Rights Society vs. Sanjay Dalia and another (2009) 39 PTC 1 (Del) (DB)which judgment, this Court is subsequently informed, is stayed by the Hon'ble Supreme Court vide order dated 27th January, 2009, in SLP (Civil) Nos. 980981 of 2009, thereafter numbered as Civil Appeal Nos. 1064310644 of 2010. The Defendants have also relied on the judgment of the Hon'ble Supreme Court in the case of KusumIngots and Alloys Ltd. vs. Union of India (2005 (118) ECR 151 (SC)to contend that even if a small part of the cause of action has arisen within the territorial jurisdiction of a particular High Court, the High Court is not bound to entertain the action and it would be sufficiently empowered to refer the said action to the Court where substantially the cause of action has arisen, as it would be more convenient to adjudicate the matter in that Court.
8. The Defendants have also fairly pointed out the judgment of a Learned Single Judge of this Court in the case of Hindustan Unilever Ltd. vs. Ashique Chemicals (2011) 6 BCR 864), which has taken a contrary view to the aforesaid view taken by the Delhi High Court. However, according to the Defendants, the said case is clearly distinguishable. It is submitted that the view in Hindustan Unilever (supra) was rendered in the context where it was argued that a suit in respect of infringement is required to be filed only where the cause of action has arisen if the Plaintiffs also carry on business at such a place. However, the Defendants in the present case have not canvassed the said proposition. What the Defendants have canvassed before this Court is that in the exercise of its discretion under Clause XIV of the Letters Patent, the scheme and/or principle and/or the policy of Section 20 of the CPC is required to be given deference. More so in the facts and circumstances of the present case, where the Plaintiffs admittedly have a subordinate office at the place where the cause of action has arisen and the Defendants are being dragged all the way to this Court (in a completely alien setting) to defend proceedings against them, despite the same, leave as sought ought to be refused. Moreover, the judgments of the Hon'ble Supreme Court in the case of Patel Roadways, Kusum Ingots and Sarguja Transport Service (supra) were not considered in the case of Hindustan Unilever (supra). It is submitted that in any event, this Court is not obliged to take the view taken by the Learned Single Judge in the case of Hindustan Unilever's (supra).
9. The Learned Advocate for the Defendants has further submitted that by an order dated 12th December, 2013, this Court accepted the undertaking on behalf of the Defendants that they shall not use the labels at Exhibit-H to the Plaint and that they will only use its mark œUltra Tuck? as registered. It is submitted that admittedly, the Defendants are the registered proprietors of the mark 'Ultra Tuck', and therefore no reliefs in respect of infringement of trademark can be granted to the Plaintiffs. It is submitted that at the time of arguments of the present application, the Defendants offered to undertake not to use the impugned mark at Exhibit-H to the Plaint as the Defendants had already stopped the use of the said label and hence the Plaintiffs could seek no further reliefs in respect of infringement. However, the Plaintiffs insisted on continuing proceedings even in respect of passing off only before this Court. It is submitted that the Division Bench of this Court in the case of M/s. Arte Indiana (supra) has, inter alia, held:
œAs already observed, one of the objects for enacting Clause (14) was to avoid multiplicity of proceedings, though it may be a different matter if, on the facts and circumstances of a particular case, the Court may decline leave considering undue hardship to the respondent or other such similar ground?.
10. It is also submitted that this Court even in the case of JagdishGopal Kamath and others vs. Lime and Chilli Hospitality Services P. Ltd. (2013 (4) Mh. L.J. 627)has held that while all circumstances under which leave under Clause XIV should be declined cannot be listed, hardship to the Defendant and/or other similar grounds are recognized as circumstances in which leave under Clause XIV may be refused. It is therefore submitted on behalf of the Defendants that in the facts and circumstances of the present case, leave under Clause XIV of the Letters Patent ought not to be granted.
11. The Learned Senior Advocate appearing for the Plaintiffs in his rejoinder refuted the above submissions advanced on behalf of the Defendants. Relying on the decision of the Division Bench of this Court in Arte Indiana (supra), more particularly on the observations in paragraphs 6, 7 and 8 thereof, it is submitted that there is no requirement of law that the cause of action for infringement ought to have arisen within the jurisdiction of this Court as a precondition for grant of leave under Clause XIV of the Letters Patent. It is submitted that this Court may have jurisdiction to grant relief for infringement of a trademark either when the Defendants' goods bearing the impugned mark are sold within the jurisdiction of this Court, or when the Defendants reside within the jurisdiction of this Court (Clause XII of the Letters Patent), or if the Plaintiffs carry on business or reside within the jurisdiction of this Court (Section 134 of the Act). It is submitted that once it is found that this Court has jurisdiction to grant relief for infringement, the question of exercising discretion to grant leave under Clause XIV only if the Defendants' goods are sold within the jurisdiction of this Court, does not arise. It is submitted that the paramount consideration for granting leave under Clause XIV of the Letters Patent is the avoidance of multiplicity of proceedings. It is therefore submitted that the Defendants contention in paragraph 4 of their written submissions that no cause of action whatsoever has arisen within the jurisdiction of this Court is untenable. The reliance on the judgments referred to in that paragraph relating to cause of action are totally irrelevant and it is clear that this Court has jurisdiction to grant relief for infringement and the said position is conceded by the Defendants across the Bar. It is also submitted that the submission of the Defendants that their mark consisting of the words œUltra Tuck? is registered is irrelevant inasmuch as it is a settled position in law that the suit for infringement is maintainable even in the case where the Defendants mark is registered. In support of its contention, the Plaintiffs have relied on the decision of this Court in Notice of Motion No. 50 of 2012 in Suit No. 2727 of 2011 (M/s. Siyaram Silk Mills Ltd. vs. M/s. Shree Siyaram Fab Pvt. Ltd.) dated 13th January, 2012 and the unreported decision of this Court in Chamber Summons No. 1319 of 2012 in Suit No. 604 of 2010 dated 29th May, 2013 (S. Narendraumar and Co. vs. Apricot Foods Pvt. Ltd.). It is further submitted that the Defendants' reliance on Section 20 of the CPC is also irrelevant. The said Section is not applicable as far as this Court is concerned. It is therefore submitted that the present case is a fit case for grant of leave under Clause XIV of the Letters Patent.
12. I have considered the submissions advanced on behalf of the Plaintiffs as well as the Defendants. I have also considered the case law relied upon by the Advocates for the parties.
13. The Learned Advocate appearing for the Defendants has submitted that what Section 134 (2) of the Act does is that it renders the œaccrual of cause of action? within the jurisdiction of such Court wholly irrelevant and a registered proprietor is entitled to maintain an action for infringement at a place where he or she voluntarily resides or carries on business or personally works for gain, notwithstanding the fact that no cause of action may have arisen within the jurisdiction of such Court. But for Section 134 (2) of the Act, it would have been incumbent for the registered proprietor to sue only at the place where the actual infringement took place. However, Clause XIV of the Letters Patent does not render 'cause of action' within jurisdiction irrelevant. Clause XIV of the Letters Patent specifically contemplates the accrual of the cause of action within the jurisdiction of this Court. As such, recourse to Clause XIV of the Letters Patent cannot be taken to in a case where the entire cause of action arises outside the jurisdiction of the concerned Court. Therefore, while a suit for infringement may in a given case be maintainable, the question of combining the cause of action for infringement with that of passing off does not arise when the cause of action even in respect of infringement does not arise within the territorial jurisdiction of this Court. In the present case the products of the Defendants are available in Haryana, Punjab and Himachal Pradesh. The actual infraction of the Plaintiffs rights have therefore taken place in those territories and not within the jurisdiction of this Court. It is therefore submitted on behalf of the Defendants that no cause of action has arisen within the jurisdiction of this Court and the Plaintiffs ought not to be granted leave under Clause XIV of the Letters Patent.
14. Section 134 (2) of the Act enables the registered proprietor of a trademark to institute a suit for infringement in a District Court within the local limits of whose jurisdiction at the time of institution of the suit, the registered proprietor actually and voluntarily resides or carries on business or personally works for gain. Plaintiff No.1 has its Registered Office and Plaintiff No.2 has its Corporate Office within the jurisdiction of this Court. It is therefore submitted on behalf of the Plaintiffs that this Court has jurisdiction to try and entertain the present Suit in respect of infringement. However, admittedly the Defendants do not carry on business nor do they have any place of business within the jurisdiction of this Court and therefore, the Plaintiffs are, by the present Petition, seeking leave under Clause XIV of the Letters Patent for combining the cause of action for passing off with the cause of action for infringement.
15. Clause XIV of the Letters Patent, Bombay reads thus:
œAnd we do further ordain that where plaintiff has several causes of action against a defendant, such causes of action not being for land or other immovable property, and the said High Court shall have original jurisdiction in respect of one of such causes of action, it shall be lawful for the said High Court to call on the defendant to show cause why the several causes of action should not be joined together in one Suit, and to make such order for trial of the same as to the said High Court shall seems fit?.
The key words in Clause XIV are œ..... and the said High Court shall have original jurisdiction in respect of one of such causes of action.....?. The clause merely requires the High Court to have jurisdiction. The clause does not state or even suggest that the cause of action ought to have arisen within the jurisdiction of the High Court. Such words viz. œcause of action ought to have arisen within the jurisdiction of the High Court?, cannot be read into Clause XIV of the Letters Patent. The Defendants' contention that Clause XIV mandates that at least one cause of action should have arisen within the jurisdiction of this Court, requires this Court to read words into Clause XIV of the Letters Patent which is impermissible. The Division Bench of this Court in its decision in M/s. Arte Indiana (supra) relied on the decision of the Hon'ble Supreme Court in the case of State of Kerala vs. Mathai Verghese (AIR 1987 SC 33)and held that when Clause XIV does not require that one of the causes of action should have arisen within the jurisdiction of this Court, it would not be permissible to read such a requirement in that Clause. The Defendants' argument in that case that the Court will have jurisdiction in respect of violation of copyright only in respect of cases contemplated by Clause XII of the Letters Patent and other cases will not be within the original jurisdiction of the Court and that therefore leave under Clause XIV of the Letters Patent cannot be granted, was expressly negated in paragraph 8 of the judgment. Paragraphs 6, 7 and 8 of the decision in Arte Indiana (supra) are relevant and reproduced hereunder:
œ6. In our view, when Clause 14 does not require that one of the causes of action should have arisen within the jurisdiction of this Court, it would not be permissible to read such a requirement in that Clause. In this regard, reference may be made to the decision of the Supreme Court in State of Kerala v. Mathai Verghese and Ors. The Apex Court was considering the interpretation placed on section 489A of the Indian Penal Code by the High Court. The High Court had interpreted the words "any currency note" in the said section as "Indian currency note". While reversing the decision of the High Court, the Supreme Court held that when the Legislature does not speak of currency notes of India, the Court interpreting the relevant provision of law cannot substitute the expression "Indian currency note" in place of the expression "currency note" as has been done by the High Court.
7. Faced with the aforesaid position, as this Court has territorial jurisdiction to entertain the Suit in respect of violation of copyright, learned Counsel for the respondent contends that this Court will have original jurisdiction only in respect of cases contemplated by Clause 12 and other cases would not be within the original jurisdiction of the Court. The contention cannot be accepted on the face of the clear and unambiguous language of Clause 14.
8. We are unable to accept the contention that the Suits pertaining to infringement of copyright would not be within the original jurisdiction of this Court. The expression Ordinary Original Civil Jurisdiction came up for consideration before the Madras High Court in Munia Servai v. Hanuman Bank. In that case, the Bank was ordered to be wound up in 1947. The appellant was indebted, to the Bank. On the application of the Liquidator, the Court determined the liability of the appellant at Rs. 4,80,000/-, which was later reduced to Rs. 1,74,000/-. The amount was not paid. The Bank moved for sale of the charged properties. The order was passed in favour of the Bank. On the application for execution having been taken out in August 1957 to execute the Decree passed in 1953, the judgment debtor objected to the execution on the ground that it is time-barred under Article 183 of the old Limitation Act. Article 183 of the old Limitation Act, inter alia, provided that the period of limitation for the application to enforce the judgment, decree or order of any Court established by Royal Charter in exercise of its Ordinary Original Civil Jurisdiction was 12 years. It was contended on behalf of the debtor that the decree passed by the Court in 1953 was an order passed by the Court under the Banking Companies Act of 1949, and it was not in exercise of Ordinary Original Civil Jurisdiction. In the light of this controversy, the Division Bench of the Madras High Court discussed the meaning of the expression "ORDINARY ORIGINAL CIVIL JURISDICTION" and the test formulated by the Division Bench of the Madras High Court is as follows :
"The expression ordinary jurisdiction embraces all such acts performed by the Court in ordinary course of law and without any special step being taken to assume the jurisdiction as opposed to extra ordinary jurisdiction which the Court may assume at its discretion upon special occasion and by special orders".
Thus, the Madras High Court held that the jurisdiction conferred in the Court by Banking Companies Act is a part of Ordinary Original Civil Jurisdiction within the meaning of Article 183 of the Old Limitation Act?.
It is thus clear that there is no requirement of law that the cause of action for infringement ought to have arisen within the jurisdiction of this Court as a precondition for grant of leave under Clause XIV of the Letters Patent. This Court may have jurisdiction to grant relief for infringement of a trademark either when the Defendants' goods bearing the impugned mark are sold within the jurisdiction of this Court, or when the Defendants reside within the jurisdiction of this Court (Clause XII of the Letters Patent), or if the Plaintiffs carry on business or reside within the jurisdiction of this Court (Section 134 of the Act). It was admitted by the Defendants at the time of arguments that this Court has jurisdiction to grant relief for infringement, but had contended that the Court should not grant relief unless the Defendants' goods bearing the impugned mark are being sold within the jurisdiction of this Court. This contention cannot be accepted. Once it is found that this Court has jurisdiction to grant relief for infringement for any of the reasons set out hereinabove, the question of exercising discretion to grant leave under Clause XIV only if the Defendants' goods are sold within the jurisdiction of this Court, does not arise, and any consideration of that question will be contrary to the intent of the Legislature as stipulated in Clause XIV of the Letters Patent.
16. In view thereof, the contentions raised by the Defendants that the cause of action can be said to have occurred only where the actual infraction of the Plaintiffs' right has taken place or that Clause XIV of the Letters Patent mandates that at least one cause of action should have arisen within the jurisdiction of this Court or Clause XIV specifically contemplates the accrual of cause of action within the jurisdiction of this Court or recourse to Clause XIV of the Letters Patent cannot be taken to in a case where the entire cause of action arises outside the jurisdiction of the concerned Court cannot be accepted. The case law relied upon by the Defendants in support of the above contentions is also not relevant in the facts and circumstances of the present case. There is no doubt that this Court has jurisdiction to grant relief of infringement and is therefore also empowered to grant leave under Clause XIV of the Letters Patent to the Plaintiff.
17. The submission advanced on behalf of the Defendants that this Court should give deference to the scheme and/or principle and/or policy contained in Section 20 of the Civil Procedure Code also cannot be accepted. The decisions relied on by the Defendants in support of their reliance on Section 20 of the CPC are irrelevant for deciding the present issue. In fact, the Hon'ble Division Bench of the Madras High Court (Coram: A.P. Shah, C.J. and F.M. Ibrahim Kalifulla, J.) has in the case of Wipro Limited and another vs. Oushadha Chandrika Ayurvedic India (P) Limited and others (2008 (37) PTC 269 (Mad.) (DB), after referring to the findings of the Hon'ble Supreme Court qua the provisions of Section 62 of the Copyright Act in the case of Ex Phar SA vs. Eupharma Laboratories Ltd. (AIR 2004 SC 1682), held in paragraph 14 of its judgment as follows:
œ14. It is, thus, seen that Section 62 of the Copyright Act and Section 134 of the Trade Marks Act prescribe an additional ground for attracting the jurisdiction of a Court over and above the normal ground, as laid down in Section 20 of the C.P.C. In other words, a special right is conferred on the proprietor of the registered trade mark to institute a Suit for infringement of any trade mark or copyright in the district within whose jurisdiction he resides or carries on business. The provision contained in non-obstante clause by using the phrase œnotwithstanding anything contained in the C.P.C, 1908 (5 of 1908) or any other law for the time being in force? is made with a view to give a overriding effect to the said provision. It is equivalent to saying that the provision would hold the field notwithstanding anything contained in the C.P.C or any other law for the time being in force. Moreover, by virtue of Section 120 of the C.P.C, the provisions of Section 20 are not applicable as far as High Court is concerned. Therefore, the scope of this section cannot be curtailed by reference to Section 20 of the C.P.C or Clause-12 of the Letters Patent. Therefore, in a case of infringement of trade mark or copyright covered by Section 134(2) of the Trade Marks Act or Section 62(2) of the Copyright Act, the question of plaintiff taking prior leave under Clause 12 of the Letters Patent does not arise and the plaintiff need not take leave of the Court under Clause 12 of the Letters Patent even if only a part of the cause of action or no part of the cause of action arose within the jurisdiction of this Court, if the plaintiff ordinarily resides or carries on business within the jurisdiction of the Court?.
18. The contention of the Defendants that their mark consisting of the words œUltra Tuck? is registered is, as submitted by the Plaintiffs, irrelevant inasmuch as it is a settled position of law that the suit for infringement is maintainable even in a case where the defendants' mark is registered. The position is clearly laid down by the decision of this Court in Notice of Motion No. 50 of 2012 in Suit No. 2727 of 2011 (M/s. Siyaram Silk Mills Ltd. vs. M/s. Shree Siyaram Fab Pvt. Ltd.) dated 13th January, 2012. Paragraphs 10 and 11 of the said judgment are relevant and reproduced hereunder:
œ10. Section 124 expressly recognizes the right to file an action for infringement even if the defendants' mark is registered. Whether or not the Plaintiff has challenged the defendants' registration as yet or not is not relevant. Section 124 establishes that the legislature did not intend prohibiting the filing of a suit for infringement merely because the defendants' mark is also registered. Section 124 in fact expressly recognizes the right to file such an action. This is clear from the fact that section 124 provides that such an action may be stayed, if it otherwise satisfies the provisions thereof. If it were not so, the Act would have provided for a bar to the filing of such an action.
11. Even in the absence of Section 124, it would make no difference. Once it is held that this Court has jurisdiction to entertain such an action, the Court can always adjourn the hearing of the application for interlocutory reliefs or even the suit pending rectification proceedings?.
The said position is reiterated by this Court in its unreported decision in Chamber Summons No. 1319 of 2012 in Suit No. 604 of 2010 dated 29th May, 2013 (S. Narendraumar and Co. vs. Apricot Foods Pvt. Ltd.). Paragraphs 7, 8 and 9 of which are reproduced hereunder:
œ7. The Defendant has further contended that the Suit, as originally filed, did not lie and was barred by law in view of the fact that the Defendant had registered the mark œEVEREST?. It is also the Defendant's contention that since the passing off, as originally pleaded, was outside Mumbai, the entire Suit, as originally filed, was defective and not maintainable and this alleged vested right was sought to be taken away by the amendment. In this connection, the Defendant has relied upon Sections 28 (3), 29 (2) and 30 (2) (e) of the Act to contend that the Suit for infringement cannot lie and is barred by law. The Plaintiff, in response to the submission, has correctly submitted that this contention of the Defendant is based on a complete misreading of the Act. None of the aforesaid provisions incorporate any bar on filing of a suit for infringement in a case where the Defendants mark is also registered. In fact, the Defendants submission cannot be accepted in view of Section 124 of the Act which clearly states that in a suit for infringement of a trademark, where the Defendant raises a defence under Section 30 (2) (e) of the Act to the effect that the Defendants mark is also registered and the Plaintiff pleads the invalidity of the Defendants mark, the Court trying the suit shall, if any proceedings for rectification of the Register in relation to the Plaintiff or Defendants trademark be pending before the Registrar or before the Appellate Board, stay the suit pending the final disposal of such proceedings. In Section 124 (5) of the Act, it is clarified that the stay of the suit for infringement of a trademark under Section 124 of the Act shall not preclude the Court from making any interlocutory order during the period of the stay. In the present case, the Plaintiffs application for rectification of the register in relation to the Defendants mark is pending. Section 124 of the Act thus clearly shows that a suit for infringement is not barred by the mere fact that the Defendants mark is also registered. In fact, the said provision clearly contemplates that a suit can be filed and would lie. The course of action to be adopted in such a suit is also provided for.
8. The response of the Defendant to Section 124 of the Act, viz. that it does not confer any jurisdiction upon and/or enable the Court to entertain a suit for infringement against the registered Proprietor of the allegedly offending mark, runs contrary to the fundamental principle that the jurisdiction of a Court is not excluded unless barred. As correctly submitted on behalf of the Plaintiff, the Defendant has not disclosed any bar to the filing of a suit for infringement in circumstances where the Defendants mark is also a registered mark.
9. Consequently, the contention of the Defendant that the Suit for infringement was barred and therefore the cause of action for passing off, which at the time of the filing of the Suit was outside Mumbai, cannot be clubbed with the suit for infringement, cannot be accepted?.
19. As correctly submitted by the Plaintiffs, the paramount consideration for granting leave under Clause XIV of the Letters Patent is the avoidance of multiplicity of proceedings. In the case of JagdishGopal Kamath and Ors. (supra), this Court after considering its earlier decisions in paragraph 16 has set out the factors to be taken into account for granting leave under Clause XIV of the Letters Patent. The said paragraph 16 is reproduced hereunder:
œ16. From a reading of Clause XIV of the Letters Patent, the observations/findings in the aforestated decisions of the Hon'ble Division Bench of this Court, and from the above discussion it can safely be concluded that :
(i) the grant of leave under Clause XIV of the Letters Patent is a discretionary exercise;
(ii) the primary consideration, while deciding applications for grant of leave under clause XIV of the Letters Patent is 'avoiding multiplicity of litigation';
(iii) in the absence of proven mala fides/hardship, the argument that grant of leave will drag the Defendant from a forum where the Defendant is situated, to the Court from which Clause XIV is sought and that this is prejudicial/inconvenient to the Defendant, is fallacious and misconceived;
(iv) leave may be declined considering undue hardship to the Defendant or such other similar ground/s;
(v) leave may be declined if the suit as filed is on the face of it not maintainable and the same is nothing but an abuse of law/Court;
(vi) the inquiry whether on facts the Plaintiff is entitled to grant of leave as sought for or not has to be minimal and not in detail, so as to ensure that observations made do not adversely affect the parties while considering the prayers for grant of interim relief or while deciding the suit;
(vii) it is not possible to list all the circumstances under which leave under Clause XIV should be granted or declined. The Court has to use its judicial discretion and arrest any abuse of the process of a court without going into the merits of the case to the extent of virtually obliterating the distinction between grant of leave and grant of interim relief.
(viii) leave petitions cannot be converted into interlocutory hearings based on the initial cause of action. This will be an anathema to the object/legislative policy behind granting leave?.
20. I am satisfied that in the present case to avoid multiplicity of proceedings, it would be appropriate to grant leave under Clause XIV of the Letters Patent and allow the Plaintiffs to combine the cause of action for passing off along with the cause of action for infringement.
21. In the circumstances, leave is granted to the Plaintiffs under Clause XIV of the Letters Patent as sought. The leave Petition is accordingly disposed of.