Case Note & Summary
The petitioner, Bajaj Electricals Limited, filed a Leave Petition under Clause XIV of the Letters Patent seeking leave to combine a cause of action for passing off with a cause of action for trademark infringement in a suit before the Bombay High Court. The petitioner's registered office is in Mumbai, and it carries on business there, giving this Court jurisdiction over the trademark infringement claim under Section 134(2) of the Trademarks Act, 1999. The respondents, Electronics Mart India Limited and others, carry on business outside Mumbai, and no cause of action for passing off arose within the Court's jurisdiction. The petitioner sought leave to join the passing off claim to avoid multiplicity of proceedings. The respondents opposed the leave, arguing hardship and that the joinder is impermissible. The Court, relying on precedents including Arte Indiana v. M/s. P. Mittulaul Lalah & Sons, Indian Performing Rights Society Ltd. v. Sanjay Dalia, Manugraph India Ltd. v. Simarq Technologies Pvt. Ltd., and Kalpataru Properties Pvt. Ltd. v. Sri Kalpataruvu Chits (India) Pvt. Ltd., held that the object of Clause XIV is to avoid multiplicity of proceedings. The Court found that the respondents' hardship plea based on material available only in Hyderabad was irrelevant to the passing off claim. The Court granted leave under Clause XIV, allowing the joinder of the passing off cause of action with the trademark infringement claim.
Headnote
A) Civil Procedure - Letters Patent - Clause XIV - Joinder of Causes of Action - Trademarks Act, 1999, Section 134(2) - The Court has jurisdiction over trademark infringement as the plaintiff's registered office is in Mumbai. The claim for passing off, which arose outside jurisdiction, can be joined under Clause XIV to avoid multiplicity of proceedings. The Court held that the object of Clause XIV is to avoid multiplicity, and the defendants' plea of hardship based on irrelevant material does not bar the grant of leave (Paras 1-14).
B) Trademark Law - Territorial Jurisdiction - Section 134(2) of the Trademarks Act, 1999 - The plaintiff can file a suit for infringement at its principal place of business even if no cause of action arose there. The Supreme Court in Indian Performing Rights Society Ltd. v. Sanjay Dalia held that Section 134(2) contemplates suit at the place where the plaintiff has its principal place of business or registered office (Paras 7-8).
C) Civil Procedure - Letters Patent - Clause XIV - Multiplicity of Proceedings - The main factor for granting leave under Clause XIV is whether it will avoid multiplicity of proceedings. If leave is not granted, the plaintiff would have to file a separate suit for passing off, leading to multiplicity. The Court held that leave should be granted to avoid such multiplicity (Paras 10, 14).
Issue of Consideration
Whether leave under Clause XIV of the Letters Patent should be granted to combine the cause of action for passing off (over which this Court has no territorial jurisdiction) with the cause of action for trademark infringement (over which this Court has jurisdiction under Section 134(2) of the Trademarks Act, 1999).
Final Decision
The Court grants leave under Clause XIV of the Letters Patent, allowing the petitioner to combine the cause of action for passing off with the cause of action for trademark infringement in the suit.
Law Points
- Clause XIV of Letters Patent allows joinder of causes of action where court has jurisdiction over one cause
- Section 134(2) of Trademarks Act
- 1999 confers jurisdiction at plaintiff's principal place of business
- object of Clause XIV is to avoid multiplicity of proceedings
- hardship to defendants is not a bar if irrelevant to passing off claim
Case Details
2024 LawText (BOM) (09) 2738
Leave Petition No. 132 of 2020 in Commercial IPR Suit No. 178 of 2022
Dr. Virendra Tulzapurkar, Senior Counsel a/w Mr. Ameet Naik, Mr. Aseem Naphade, Mr. Madhu Gagodia, Mr. Sujoy Mukherji, Deveesha Tudekar i/by Naik Naik & Co. for the Petitioner/Plaintiff; Mr. Ravi Kadam, Senior Counsel, Mr. Rohan Kadam a/w Ms. Saloni Shah, Ms. Pranita Saboo, Ms. Rucha Vaidya i/by DSK Legal for the Respondents/Defendants
Bajaj Electricals Limited
Electronics Mart India Limited & Ors.
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Nature of Litigation
Leave Petition under Clause XIV of the Letters Patent seeking permission to combine a cause of action for passing off with a cause of action for trademark infringement in a commercial IPR suit.
Remedy Sought
The petitioner/plaintiff seeks leave to join the cause of action for passing off (over which this Court has no territorial jurisdiction) with the cause of action for trademark infringement (over which this Court has jurisdiction under Section 134(2) of the Trademarks Act, 1999) to avoid multiplicity of proceedings.
Filing Reason
The petitioner's registered office is in Mumbai, giving this Court jurisdiction over trademark infringement under Section 134(2) of the Act. However, no cause of action for passing off arose within the Court's jurisdiction as the respondents carry on business outside Mumbai. The petitioner seeks to combine both causes to avoid filing separate suits.
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 trademark infringement.
Whether the respondents' plea of hardship based on material available only in Hyderabad is relevant to the grant of leave.
Submissions/Arguments
Petitioner: This Court has jurisdiction over trademark infringement as the petitioner's registered office is in Mumbai. Leave under Clause XIV should be granted to avoid multiplicity of proceedings. The respondents' hardship plea is irrelevant as the material cited is not a defence in a passing off action.
Respondents: Joinder of passing off with infringement under Clause XIV is impermissible and militates against the scheme of the Trademarks Act. The petitioner has not filed a rejoinder, so the respondents' hardship contentions are deemed admitted. Granting leave would cause hardship as evidence is only available in Hyderabad.
Ratio Decidendi
The object of Clause XIV of the Letters Patent is to avoid multiplicity of proceedings. Where the Court has jurisdiction over one cause of action (trademark infringement under Section 134(2) of the Trademarks Act, 1999), it may grant leave to join another cause of action (passing off) over which it has no jurisdiction, if such joinder avoids multiplicity. The respondents' plea of hardship based on irrelevant material does not bar the grant of leave.
Judgment Excerpts
The main factor which is required to be considered by the Court while considering the question of grant of leave under Clause XIV of the Letters Patent, is whether the grant of leave will avoid multiplicity of proceedings.
In passing off claim, the aforementioned two issues are also required to be considered. In addition, the Plaintiff/Petitioners will have to establish that the Plaintiff's mark has acquired reputation which is established by the Plaintiff to answer the above issues.
The Defendants plea of honest, continuous and extensive user is not a defence in a passing off action.
Procedural History
The petitioner filed Leave Petition No. 132 of 2020 in Commercial IPR Suit No. 178 of 2022 seeking leave under Clause XIV of the Letters Patent to combine passing off with trademark infringement. The respondents filed a Reply opposing the leave. The Court heard arguments from both sides and delivered the order on 26 September 2024.
Acts & Sections
- Trademarks Act, 1999: Section 134(2)
- Letters Patent Act: Clause XIV, Clause XII
