Dabur India Ltd. v. K. R. Industries
AIR 2008 SC 3123
The Appellant, Dabur India Ltd., manufactured a product known as ‘Dabur Red Tooth Powder’ or ‘Dabur Lal Dant Manjan’. The Appellant claimed copyright in the ‘carton’ of the product and alleged that the said ‘carton’ constitutes an ‘artistic work’ under Section 2(c) of the Copyright Act 1957 (the 1957 Act).
Respondent was also a manufacturer of a tooth powder known as ‘Sujata’. Allegedly it had infringed the copyright of the Appellant as it was using an identical colour scheme, lay out, arrangement of features and get up as that of the Appellant’s product.
Appellant filed a suit for infringement of Copyright and passing off before the Delhi High Court. Respondent filed an application under Order VII Rule 11 of the Code of Civil Procedure, 1908 for return of plaint on the ground that the Delhi High Court had no territorial jurisdiction to entertain the claim for passing off as the Respondent was based in Andhra Pradesh and no sales have been made by the Respondent of it’s product in Delhi. Therefore, as per the Respondent no cause of action had arisen in Delhi.
There was no dispute to the fact that the Hon’ble Court had territorial jurisdiction to entertain and try the suit as far as relief of infringement of Copyright is concerned. This was by virtue of Section 62(2) of the Copyright Act, 1957 which allowed the Appellant to file a suit for infringement of Copyright at a place where Appellant resides, carries on business pr personally works for gain.
However, the case of the Respondent was, that as the present suit is a composite suit combining two causes of action, one for infringement of Copyright and other for passing off, therefore the Delhi High Court cannot entertain and try the same in entirety if it does not have territorial jurisdiction towards one cause of action, i.e. passing off.
In the said suit, the Delhi High Court passed an order that the court had no jurisdiction to entertain the suit as the Respondent is a resident of Andhra Pradesh. An intra court appeal was preferred. However, the same was dismissed by the Division Bench of the said Court holding that the matter is covered by the decision of this Court in Dhodha House v. S.K. Maingi; [(2006) 9 SCC 41]. The Appellant preferred an appeal before the Supreme Court against this order of the Delhi High Court.
Arguments on behalf of the Appellant:
• Division Bench committed a serious error in passing the impugned judgment in so far as it failed to take into consideration the effect of a consolidated suit under the 1957 Act as also the Trade Marks Act, 1958 (for short ‘the 1958 Act’).
• A composite suit is maintainable having regard to sub-section (1) of Section 55 of the 1957 Act.
• The jurisdiction of the court to entertain a composite suit under the 1957 Act and the 1958 Act should be determined having regard to the provisions of Section 55 of the former. The term ‘Law’ within the meaning of the said provision would not only include a statute law but also the common law and, thus, viewed from that perspective a composite suit for infringement of a copyright as also passing of shall be maintainable. Strong reliance in this behalf was placed on Exphar Sa & Anr. v. Eupharma Laboratories Ltd. & Anr. [(2004) 3 SCC 688].
Arguments on behalf of the Respondent:
• The Apex Court in Dhodha House v. S.K. Maingi, [(2006) 9 SCC 41] categorically held that the cause of action for infringement of the 1957 Act and that of the 1958 Act are distinct and separate.
• Order II Rule 3 of the Code of Civil Procedure, 1908 deals with pecuniary jurisdiction and not the territorial jurisdiction of the Court.
• The Trade Marks Act, 1958 does not have a provision towards conferring special privilege/additional forum on the Appellant to file a suit where it resides, carries on business or personally works for gain for infringement of trade mark as well as passing off. Even, the latest Trade Marks Act, 1999, which confers special privilege on a party to file a suit for infringement of trade mark at a place where it resides, carries on business or personally works for gain does not extends the same in relation to a passing off action. Therefore, even the Parliament did not think it expedient to provide for any provision giving an option to a party to file a suit where it resides.
Issue: Whether causes of action in terms of both the Copyright Act of 1957 and the 1958 Act although may be different, would a suit be maintainable in a court only because it has the jurisdiction to entertain the same in terms of Section 62(2) of the 1957 Act?
Section 55, Copyright Act, 1957 – “Civil remedies for infringement of copyright – (1) Where copyright in any work has been infringed, the owner of the copyright shall, except as otherwise provided by this Act, be entitled to all such remedies by way of injunction, damages, accounts and otherwise as are or may be conferred by law for the infringement of a right;”
While enacting the 1958 Act, the Parliament was aware of the provisions of the 1957 Act. The Parliament did not choose to provide a similar provision in 1958 Act. Such an omission was a conscious omission and was, therefore, clear and explicit. On the other hand, while enacting the Trade Marks Act, 1999 (“1999 Act”), the Parliament provided for an additional forum by enacting Section 134 (2) of the Trade Marks Act. It is a settled position that the Court shall not readily presume the existence of jurisdiction of a court which is not conferred by the statute.
Order II, Rule 3 of the Code contemplates uniting several causes of action in the same suit. As held in Dhodha(supra), by necessary implication, the cause of action for infringement of copyright and the cause of action for infringement of trademark or a cause of action for passing off are different. Even if one cause of action has no nexus with another, indisputably Order II, Rule 3 of the Code will apply. However, Order II, Rule 3 will not confer a Court with jurisdiction under 1958 Act when the Court does not enjoy such a jurisdiction.
It was also held that an action for passing off is common law right but the same does not determine the jurisdiction of the court. For exercising such jurisdiction, the provisions of the Code would be applicable. 1957 Act being a special law would, thus, prevail over the general law, viz., the Code.
Also, the remedy under 1958 cannot be legally perceived as an incidental remedy under Section 62(2) of 1957 Act.
Sub-section (1) of Section 55 of 1957 Act provides for the remedies in terms whereof the plaintiff shall be entitled to all reliefs by way of injunction, damages, accounts and otherwise as are or may be conferred by law for the infringement of a right. It must be read as `ejusdem generis’. It must take its colour from the words, `any proceeding’ namely the right to obtain a decree by way of injunction, decree for damages, accounts or other incidental reliefs which can be granted by a civil court. Such a provision can be found in the Code of Civil Procedure also, namely Order VII Rule 7 thereof. It is, therefore, in our opinion, would not be correct to read the word “as are or may be conferred by law” to mean, any other law, violation whereof although would give rise to separate and distinct cause of action. Under the Code claims arising under a statutes governing substantive or procedural law, a number of remedies may be combined. The Court may grant an order of injunction even in a passing off action.
As regards the maintainability of a composite suit, it was held that it is not maintainable unless the court enjoys the jurisdiction to entertain the suit in relation to the entire cause of action and the entire relief. Order II Rule 3 of the Code specifically states so. For the purpose of invoking the jurisdiction of the court in a composite suit, both the causes of action must arise within the jurisdiction of the court which otherwise had the necessary jurisdiction to decide all the issues. However, the jurisdiction cannot be conferred by joining two causes of action in the same suit when the court has jurisdiction to try the suit only in respect of one cause of action and not the other. The existence of jurisdiction under the 1957 Act would not negate the lack of jurisdiction under the 1958 Act.
Exphar Sa (supra) cannot be said to have any application in the instant case. The question which arose for consideration therein was as to whether the jurisdiction of a court under sub-section (2) of Section 62 of the 1957 Act is wider than that of the court specified under the Code of Civil Procedure
The Supreme Court refused to interfere with the orders of the High Court. Thus, the appeal was dismissed with costs.
Author: Paazal Arora, ILS Law College, Pune