Case Note & Summary
The Plaintiffs, UltraTech Cement Limited and Another, filed a suit for infringement of their registered trademarks, including 'UltraTech Cement', and for passing off against the Defendants, Shree Balaji Cement Industries and Others. The Plaintiffs sought leave under Clause XIV of the Letters Patent to combine the cause of action for passing off with that for infringement, as the court had jurisdiction over the infringement claim (since the Plaintiffs carried on business within the court's jurisdiction) but not over the passing off claim (as the Defendants did not carry on business within the jurisdiction). The Plaintiffs argued that granting leave was necessary to avoid multiplicity of proceedings. The Defendants opposed, contending that no cause of action arose within the court's jurisdiction. The court, per S.J. Kathawalla, J., held that once the court is satisfied it has jurisdiction over the infringement claim, leave under Clause XIV should be granted to combine the passing off claim to avoid multiplicity of proceedings. The petition was allowed, and leave was granted.
Headnote
A) Intellectual Property Law - Trademark Infringement and Passing Off - Clause XIV Letters Patent - Leave to Combine Causes of Action - The court considered whether leave under Clause XIV of the Letters Patent should be granted to combine a passing off claim with an infringement claim where the court has jurisdiction over the infringement claim but not over the passing off claim, to avoid multiplicity of proceedings - Held that once the court is satisfied it has jurisdiction over the infringement claim, leave should be granted to combine the passing off claim to avoid multiplicity of proceedings (Paras 1-5).
Issue of Consideration
Whether leave under Clause XIV of the Letters Patent should be granted to combine the cause of action for passing off with the cause of action for infringement of trademark, where the court has jurisdiction over the infringement claim but not over the passing off claim, in order to avoid multiplicity of proceedings.
Final Decision
The petition is allowed. Leave under Clause XIV of the Letters Patent is granted to the Plaintiffs to combine the cause of action for passing off with the cause of action for infringement of trademark.
Law Points
- Clause XIV Letters Patent
- leave to combine causes of action
- infringement of trademark
- passing off
- multiplicity of proceedings
- jurisdiction
Case Details
Petition No. 369 of 2013 in Suit No. 37 of 2014
Dr. Virendra V. Tulzapurkar, Senior Advocate, along with Mr. Amit Jamsandekar, instructed by M/s. V.A. Associates, for the Petitioners; Mr. Rashmin Khandekar along with Mr. Rahul Dhote, instructed by M/s. Krishna & Saurastri Associates, for the Respondents.
UltraTech Cement Limited and Another
Shree Balaji Cement Industries and Ors.
Subscribe to unlock Case Details (Citation, Judge, Date & more)
Subscribe Now
Nature of Litigation
Petition seeking leave under Clause XIV of the Letters Patent to combine causes of action for infringement of trademark and passing off.
Remedy Sought
Plaintiffs sought leave to combine the cause of action for passing off with the cause of action for infringement of trademark.
Filing Reason
Plaintiffs filed suit for infringement of registered trademarks and passing off; they sought leave to combine the passing off claim with the infringement claim because the court had jurisdiction over infringement but not over passing off.
Issues
Whether leave under Clause XIV of the Letters Patent should be granted to combine the cause of action for passing off with the cause of action for infringement of trademark to avoid multiplicity of proceedings.
Submissions/Arguments
Plaintiffs submitted that the court has jurisdiction over the infringement claim and that leave should be granted to combine the passing off claim to avoid multiplicity of proceedings.
Defendants submitted that no cause of action arose within the court's jurisdiction and that the Plaintiffs are not entitled to leave.
Ratio Decidendi
Once the 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, the 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.
Judgment Excerpts
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...
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.
Procedural History
The Plaintiffs filed Suit No. 37 of 2014 for infringement of trademarks and passing off. They filed Petition No. 369 of 2013 seeking leave under Clause XIV of the Letters Patent to combine the causes of action. The petition was heard and decided on 18th January 2014.
Acts & Sections
- Letters Patent (Bombay): Clause XIV
