The Hindu Business Line : ‘Trademark owner can file case in the district he operates’

In a dispute over alleged infringement of a registered trademark or copyright under the Trade Marks Act or Copyright Act, the question of the plaintiff taking prior leave under Clause 12 of Letters Patent did not arise even if no part of the cause of action arose within the jurisdiction of this Court, the Madras High Court ruled.

In a judgment allowing appeals by the Chennai-based companies (Wipro Ltd and Wipro Chandrika Ltd), against the order of a single judge, the First Bench, comprising Chief Justice Mr A.P. Shah and Mr Justice F.M. Ibrahim Kalifulla, held that the single judge, who rejected the suits preferred by the plaintiffs on the ground that no part of cause of action had arisen within the jurisdiction of this court and that prior leave to sue was also not obtained, was “clearly in error in going beyond the statements contained in the plaint”.

The plaintiffs (Wipro), in their suits, sought for a permanent injunction restraining the defendants (Oushadha Chandrika Ayurvedic India (P) Ltd and Oushadha Chandrika Research Centre, Irinjalakuda, Kerala) from infringing their registered trademark ‘Chandrika’ and from manufacturing, etc of soaps or toilet preparations.

They contended that they had learnt in August 2007 that the defendants were manufacturing and selling goods under the trademark ‘Chandrika’ with prefix ‘Oushadha’. According to the plaintiffs, the defendants had adopted all essential features of plaintiffs’ trademark ‘Chandrika’, and use of the same with prefix ‘Oushadha’ was calculated to give a wrongful impression to the members of public.

The defendants, inter alia, submitted that this Court had no jurisdiction to try the suits, and filed an application with a plea to reject the plaint and also prayed for vacating the order of interim injunction dated January 4, 2007 granted in favour of the plaintiffs.

The single judge held that though Section 62(2) of Copyright Act and Section 134(2) of Trade Marks Act started with the non-obstente clause, the mere fact that the plaintiff’s branch office was situated within the jurisdiction of the Court was not sufficient to close the Court with jurisdiction to entertain suits. The Judge also accepted the case of defendants that no essential part of business of defendants took place in Chennai. Since the defendants were carrying on business in Kerala, prior leave to sue under Clause 12 of Letters Patent ought to have been obtained. Hence, the suits were rejected.

Allowing the appeals of the plaintiffs, the First Bench held that a special right was conferred on the owner of registered trademark to institute suit for infringement of trademark or copyright in the district within whose jurisdiction he resided or carried on business. In view of the above, the suits were restored to file. The ad interim injunction granted on January 4, 2007 stood revived. The matter was remitted back to single judge to consider the applications on merit.

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