Case Note & Summary
The plaintiffs, Ultratech Cement Ltd. and its parent company, filed a suit alleging infringement of their registered trade marks containing the word 'UltraTech' or 'Ultra' and passing off by the defendant, Dalmia Cement Bharat Ltd., which used a mark with 'Ultra' as a prominent feature. The plaintiffs sought leave under Clause 14 of the Letters Patent to combine the causes of action of infringement and passing off. The Bombay High Court, exercising original civil jurisdiction, considered the application. The plaintiffs argued that since they carried on business in Mumbai, the court had jurisdiction over the infringement claim under Section 134(2) of the Trade Marks Act, 1999, and the passing off claim arose from the same set of facts. The defendant opposed, contending that the court lacked jurisdiction over the infringement claim. The court analyzed the provisions of Section 134(2) and Clause 14, noting that the plaintiffs' business in Mumbai conferred jurisdiction. It found that both causes of action were based on the same facts, namely the defendant's use of a deceptively similar mark. The court held that leave under Clause 14 should be granted to avoid multiplicity of proceedings and allowed the application. The decision emphasized that the combination of infringement and passing off claims is permissible when they arise from the same factual matrix.
Headnote
A) Trade Marks - Infringement and Passing Off - Combination of Causes of Action - Clause 14 of Letters Patent, Section 134(2) of Trade Marks Act, 1999 - The court considered whether leave should be granted to combine infringement and passing off causes of action. The plaintiffs, proprietors of 'UltraTech' trade marks, sought to combine both causes based on the same set of facts. The court held that since the court had jurisdiction over the infringement claim under Section 134(2) and the passing off claim arose from the same facts, leave under Clause 14 should be granted. (Paras 1-9) B) Trade Marks - Jurisdiction - Section 134(2) of Trade Marks Act, 1999 - The court examined whether the Bombay High Court had original jurisdiction over the infringement claim. The plaintiffs carried on business in Mumbai, and the court held that Section 134(2) confers jurisdiction on the court within whose limits the plaintiff actually and voluntarily resides or carries on business. (Paras 2-4) C) Trade Marks - Passing Off - Same Set of Facts - Clause 14 of Letters Patent - The court held that the cause of action for passing off was based on the same facts as infringement, i.e., the defendant's use of a deceptively similar mark 'Ultra'. Therefore, the combination was permissible under Clause 14. (Paras 5-9)
Issue of Consideration
Whether the plaintiff can be granted leave under Clause 14 of the Letters Patent to combine the cause of action of infringement of trade mark with the cause of action of passing off in a suit filed in the Bombay High Court, when the court has original jurisdiction over the infringement claim by virtue of Section 134(2) of the Trade Marks Act, 1999.
Final Decision
The court allowed the leave petition, granting the plaintiffs leave under Clause 14 of the Letters Patent to combine the causes of action of infringement and passing off in Suit No. 42 of 2014.
Law Points
- Clause 14 of Letters Patent
- Section 134(2) of Trade Marks Act
- 1999
- combination of causes of action
- infringement
- passing off
- same set of facts
