M.M. Sundresh, J.
1. A.No. 254 of 2016 in C.S.No. 202 of 2016 has been filed by the plaintiff to grant an order of injunction restraining the respondent/ defendant, its partners or proprietor as the case may be, its principal officers, members, servants and agents, sister concerns, distributors, wholesalers, retailers and all others acting on its behalf from manufacturing, marketing, selling, offering for sale, distributing, advertising, including on the Internet and in any other manner using the trademark/trade dress and getup and packaging RINSO or any other mark deceptively and/or confusingly similar to the registered trademark/trade dress and getup and packaging RIN and its variants belonging to the petitioner pending disposal of the suit.
2. A.No. 255 of 2016 in C.S.No. 202 of 2016 has been filed by the plaintiff to grant an order of injunction restraining the defendant, its partners or proprietor as the case may be, its principal officers, members, servants and agents, sister concerns, distributors, wholesalers, retailers and all others acting on its behalf from passing off the goods manufactured, marketed, advertised, distributed and/or sold by the respondent as the goods of the petitioner pending disposal of the suit.
3. A.No. 5547 of 2016 in C.S.No. 202 of 2016 has been filed to vacate the order of injunction granted in O.A.No. 253 of 2016 in C.S.No. 202 of 2016 dated 11.04.2016.
4. A.No. 5548 of 2016 in C.S.No. 202 of 2016 has been filed to reject the plaint in C.S.No. 202 of 2016 filed by the respondent/plaintiff on the ground of lack of jurisdiction.
5. For the sake of brevity, the parties are referred to as plaintiff and defendant as debunked in the plaint.
6. Heard Mr. Krishna Srinivas, learned counsel for M/s Ramasubramaniam & Associates for plaintiff and Mr. S. Mukund, learned counsel for Mr. E. Rajthilak, learned counsel for the defendant and Mr. Ramakrishnan Viraraghavan and Mr. M.S. Bharath, learned Amicus curiae.
7. The plaintiff is a company incorporated under the provisions of the Companies Act, 1913, dealing with the production of home care products, detergents and personal hygiene and care products such as soaps, soap preparations etc.
8. The plaintiff has been indulging in the aforesaid fields for the past two decades. It has adopted the trademark RIN registered as early as in the year 1963. The trademark RINSO was registered on 09.10.1943. The registration for the above said names among others, contain the name RIN stand as on today. The plaintiff is the market leader in this field. The plaintiff is having its registered Head Office at Mumbai. Incidentally, it got its branch office in various place including Chennai.
9. The defendant is doing business in the manufacturing of washing powder and detergents under the brand of RINSO at Andhra Pradesh. It is needless to state that the plaintiff is doing business in the above said field of washing powder.
10. According to the plaintiff, apart from infringement of the registered mark, the defendant is using similar package, colour scheme and trade dress. Therefore, the present suit has been laid for infringement and passing off. The jurisdiction of this Court is sought to be invoked by pressing into service Section 134 (2) of the Trade Marks Act, 1999 into Civil Procedure Code. Thus, admittedly, there is no infringement that is being carried on within the territorial jurisdiction of this Court and so is the case within the territorial jurisdiction of registered office for the plaintiff.
11. On a prima facie consideration, this Court has granted an order of interim injunction on 11.04.2016 in O.A.No. 253 of 2016. As the defendant did not evince any interest in contesting the application, the interim order granted on 11.04.2016 was made absolute. Thereafter, the defendant has filed A.No. 5547 of 2016 in C.S.No. 202 of 2016 to vacate the order of injunction granted.
12. The learned counsel appearing for the plaintiff submits that on a mere perusal of the product of the plaintiff with the infringing product of the defendant, a case for injunction qua passing off, infringement of trade mark is made out. The applicant is the prior user and it has its own reputation. The defendant is attempting to encroach upon the goodwill of the plaintiff to its detriment. As per Section 134 (2) of the Trade Marks Act, 1999, a situs would give jurisdiction to maintain a suit for infringement when the plaintiff is carrying on business within the territory. It is not necessary for the plaintiff to institute the suit at Mumbai. In any case, the concept of forum convenience would come into play. To buttress his submissions, the learned counsebhas made reliance on the following decisions.
1. Ultratech Cement Ltd., and another v. Dalmia Cement Bharat Ltd., (2015 (2) Mh.L.J., 354);
2. Wipro Limited, Thiru Vi Ka Industrial Estate, rep. by its Legal Manager Vishal Mittal And Wipro Chandrika Limited, rep. by its Authorised Signatory Vishal Mittal V. Oushadha Chandrika Ayurvedic India (p) Ltd., rep. by its Managing Director K.S. Kochuvion.
13. The learned counsel appearing for the defendant submits that the plaintiff ought to have instituted the suit at Mumbai where their registered head office is situate. Merely because the plaintiff is having branch office within the territorial jurisdiction of this Court, a cause of action would not arise. The principle enshrined under Section 20 of the Code of Civil Procedure, 1908, with its proviso will have to be made applicable for instituting the present suit as well. Such a principle has also been applied to a case coming under Section 134(2) of the Trade Marks Act, 1999. In support of his contention, the learned counsel has made reliance upon the decision of a Division Bench of High Court of Delhi in Ultra Home Construction Pvt. Ltd., v. Purushottam Kumar Chaubey & Others (2016 (65) PTC 469 (Del)) [LQ/DelHC/2016/158] and that of a decision of learned single Judge of High Court of Bombay in Manugraph India Limited v. Simarq Technologies Pvt. Ltd., and others (2016) SCC Online Bom 5334). Coming to the merits of the case, it is submitted that there is no deceptive similarity and likelihood of confusion. The defendant has also applied for registration which is still pending. The adoption is honest. The defendant has got its own network and sale. It is a small scale industry run by women. A mere registration per se will not give any right to the plaintiff. Manufacturing has been going on from the year 2011 onwards. Thus, it is submitted that the applications in A. Nos. 5547 and 5548 of 2016 in C.S. No. 202 of 2016 have to be allowed.
14. Mr. Ramakrishnan Viraraghavan, learned Amicus Curiae, who has assisted this Court, has filed a detailed written submissions after taking this Court to the decision of the Apex Court in Indian Performing Rights Society Limited v. Sanjay Dalia and another (2016-1-L.W. 1 = (2015) 10 Supreme Court Cases 161) [LQ/SC/2015/816] , which has been interpreted by the other High Courts. It is submitted that the present case, on facts, would confer jurisdiction of this Court as admittedly no infringement is being taken place either at Chennai or at Mumbai being the place where branch office is situate. The learned Amicus Curiae also took this Court to the legislative history of Section 134(2) of the Trade Marks Act, 1999 and enlighten this Court through the following decisions.
(1) Wipro Ltd., v. Oushadha Chandrika Ayurvedic India (P) Ltd., (2008-2-L.W. 430 = 2008 (3) CTC 724 (DB));
(2) Duro Flex Private Ltd., v. Duroflex Sittings System 2014-5-L.W. 673 = (2014) (6) CTC 577 [LQ/MadHC/2014/6606] )(Full Bench).
15. Mr. M.S. Bharath, learned Amicus Curiae, submits that certain categories of cases alone would be covered under Section 134(2) of the Trade Marks Act, 1999.
16. Section 20 of the Code of Civil Procedure, 1908, has no application to the suit filed on the Original Side of this Court in view of express provision contained under Section 120 of the Code of Civil Procedure, 1908. Thus, this Court is left with the Clause 12 of the Letters Patent and Section 134(2) of the Trade Marks Act, 1999. Clause 12 of the Letters Patent would give rise to institution of a suit within the jurisdiction of this Court under the following circumstances.
"(a) If the cause of action shall have arisen, either wholly, or,
(b) In case the leave of the Court shall have been first obtained, in part, within the local limits of the ordinary original jurisdiction of the said High Court or
(c) If the defendant at the time of the commencement of the suit shall dwell or carry on business or personally work for gain, within such limits."
17. Section 134 (2) of the Trade Marks Act, 1999, confers jurisdiction to this Court when the plaintiff is carrying on business within the situs territory. As the averment of the plaintiff is very clear that the plaintiff is carrying on its business within the territorial jurisdiction of this Court, the only issue is the application of Section 134(2) of the Trade Marks Act, 1999. Section 134(2) of the Trade Marks Act, 1999, is in pari materia with Section 62(2) of the Copyright Act, 1957. There was no equivalent section in the Trade and Merchandise Marks Act, 1958, which preceded the Trade Marks Act, 1999. Section 105 of the Trade and Merchandise Marks Act, 1958, was equivalent to Section 134 (1) of the present Act.
18. The notes on Clause 134 of the Trade Marks Bill, 1999, states as under:
"This clause stipulates the forum for institution of infringement proceedings, etc., to be the District Court. It is proposed that the term District Court having jurisdiction would include a District Court within the local limits of whose jurisdiction, the person, or one of the persons, instituting the suit or other proceedings, actually or voluntarily resides or carries on business or personally works for gain. This amendment would bring he trademarks law in line with the provisions contained in the Copyright Act, 1957 as very often are trade mark is also registered as an artistic work under the Copyright Act."
19. Thus, Section 134 of the Trade Marks Act, 1999, and Section 20 of the Code of Civil Procedure, 1908, are distinct and different with each other. Section 134(2) of the Trade Marks Act, 1999, deals with the cause of action qua a situs as against Section 20 of the Code of Civil Procedure, 1908, which in turn deals with the cause of action consisting of material facts on which a right has flown. Therefore, a jurisdiction qua a cause of action on material facts and situs are two independent factors travelling on their own without allowing their waters to mix. Similarly, Clause 12 of the Letters Patent and Section 134(2) of the Trade Marks Act, 1999, are independent and different with each other. In view of the non absentee Clause contained in Section 134(2) of the Trade Marks Act, 1999, it will have primacy to Clause 12 of the Letters Patent. A useful reference can be made to the following decision of this Court in Arvind Laboratories v. Hahnemann Laboratory Pvt. Ltd., (2007 (35) PTC 244 (Mad.)) [LQ/MadHC/2007/2790] , wherein it has been held as follows.
"23. The defendant has not disputed the fact that the plaintiff is carrying on business within the jurisdiction of this Court and that the plaintiff is the Proprietor of a registered trade mark, of which, infringement is complained of in the present suit. It is seen from Section 134 of the Trade Marks Act, 1999, that it contemplates three types of suits viz., (a) suit for infringement of a registered trade mark, (b) suit relating to any right in a registered trade mark, and (c)suit for passing off. In view of Sub-section (1) of Section 134, all the above three types of suits are to be instituted only in a Court not inferior to a District Court having jurisdiction to try the suit. Sub-section (2) of Section 134, defines the expression District Court having jurisdiction found in Sub-section (1), to include a District Court within whose jurisdiction the plaintiff resides or carries on business at the time of institution of the suit, if the suit is in respect of a registered trade mark. Therefore, a special privilege is conferred upon the Proprietor of a registered trade mark to institute a suit for infringement or a suit relating to any right in a registered trade mark, in the District Court within whose jurisdiction, he resides or carries on business. This privilege is conferred by Section 134(2), with a non obstante Clause, by using the phrase notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force. Since Section 134(2) declares that it would hold the field, notwithstanding anything contained in the Code of Civil Procedure or any other law for the time being in force, the same cannot be annulled or rendered nugatory, by importing the requirements of Clause 12 of the Letters Patent into a case covered by Section 134(2) of the Trade Marks Act, 1999. The non obstante Clause automatically excludes the operation of the Letters patent also, to a case covered by Section 134(2) of the Trade Marks Act, 1999. Therefore, in a case of infringement of a trade mark, covered by Section 134(2) of the Trade Marks Act, 1999, the question of the plaintiff taking prior leave of the Court, under Clause 12 of the Letters Patent, does not arise. In other words, in a suit for infringement covered by Section 134(2), a plaintiff need not take the leave of the Court under Clause 12 of the Letters Patent, even if only a part of the cause of action or no part of the cause of action, arose within the jurisdiction of this Court."
20. While interpreting Section 134(2) of the Trade Marks Act, 1999, the words carrying on business cannot be given a restrictive meaning to be made applicable only to a principal office. Such an artificial difference would be against the legislative intent apart from creating a judicial legislation. The following paragraph of the decision of the Division Bench of this Court in Wipro Limited v. Oushadha Chandrika Ayurvedic India (p) Limited, rep, by its Managing Director K.S.Kochumon (2008-2-L.W. 430 = 2008 (3) CTC 724 [LQ/MadHC/2008/1102] ) is apposite:
"By inserting Section 134(2) of the Trade Marks Act, the legislature has brought the Trade Marks law in line with the provisions contained in the Copyright Act, as very often a trade mark is also registered as an artistic work under the Copyright Act. In Section 62(2)of the Copyright Act as well as in Section 134(2) of the Trade Marks Act, a deliberate departure is made from Section 20 of the C.P.C to enable the plaintiff to sue one who infringed his copyright in the court within whose local limit he carried on business at the time of the institution of the suit or other proceedings. If the contrast as between two expressions namely, "actually and voluntarily resides" and "carries on business" is correctly perceived, it would reveal that while there is limitation, regarding residence, there is no such restriction with reference to "carrying on business". This is a clear indication that the term "carries on business" is not confined to only principal place of business. If the Legislature intended to mean the principal place only, it would have suitably qualified the expression "carries on business". The plain meaning of the above expression will only convey that wherever there is a business activity be it the principal place or branch or branches the party is said to carry on business in all such places."
21. Much reliance has been made by both sides on the decision of the Apex Court in Indian Performing Rights Society Limited v. Sanjay Dalia and another (2016-1-L.W. 1 = (2015) 10 Supreme Court Cases 161) [LQ/SC/2015/816] . In the said judgment, the issue was one of jurisdiction qua Section 134(2) of the Trade Marks Act, 1999 Section 62 of the Copyright Act on the one hand and Section 20 of the Code of Civil Procedure on the other hand. The Apex Court was called upon to decide on a case where a defendant was dragged to a far off place on the sole premise that the plaintiff was having a branch office though no cause of action arisen therein. Thus, the said decision has to be seen in the context of forum convenience and the object behind Section 20 of the Code of Civil Procedure. The question as to whether the plaintiff can choose a branch office when a cause of action is available at the principal office was also dealt with. The following paragraphs of the judgment of the Apex Court would be fruitful.
"14 Considering the very language of section 62 of the Copyright Act and section 134 of the Trade Marks Act, an additional forum has been provided by including a District Court within whose limits the plaintiff actually and voluntarily resides or carries on business or personally works for gain. The object of the provisions was to enable the plaintiff to institute a suit at a place where he or they resided or carried on business, not to enable them to drag defendant further away from such a place also as is being done in the instant cases....
17. Accrual of cause of action is a sine qua non for a suit to be filed. Cause of action is a bundle of facts which is required to be proved to grant relief to the plaintiff. Cause of action not only refers to the infringement but also the material facts on which right is founded. Section 20 of the CPC recognises the territorial jurisdiction of the courts inter alia where the cause of action wholly or in part arises. It has to be decided in each case whether cause of action wholly or in part arises at a particular place. As held by this Court in Rajasthan High Court Advocates Association v. Union of India & Ors. [AIR 2001 SC 416 [LQ/SC/2000/2075] ],Thus, a plaintiff can also file a suit where the cause of action wholly or in part arises.
18 The Plaintiff(s) can also institute a suit at a place where he is residing, carrying on business or personally works for gain de hors the fact that the cause of action has not arisen at a place where he/they are residing or any one of them is residing, carries on business or personally works for gain. However, this right to institute suit at such a place has to be read subject to certain restrictions, such as in case plaintiff is residing or carrying on business at a particular place/having its head office and at such place cause of action has also arisen wholly or in part, plaintiff cannot ignore such a place under the guise that he is carrying on business at other far flung places also. The very intendment of the insertion of provision in the Copyright Act and Trade Marks Act is the convenience of the plaintiff. The rule of convenience of the parties has been given a statutory expression in section 20 of the CPC as well. The interpretation of provisions has to be such which prevents the mischief of causing inconvenience to parties.
19. The intendment of the aforesaid provisions inserted in the Copyright Act and the Trade Marks Act is to provide a forum to the plaintiff where he is residing, carrying on business or personally works for gain. The object is to ensure that the plaintiff is not deterred from instituting infringement proceedings because the court in which proceedings are to be instituted is at a considerable distance from the place of their ordinary residence. The impediment created to the plaintiff by section 20 C.P.C. of going to a place where it was not having ordinary residence or principal place of business was sought to be removed by virtue of the aforesaid provisions of the Copyright Act and the Trade Marks Act. Where the Corporation is having ordinary residence/principal place of business and cause of action has also arisen at that place, it has to institute a suit at the said place and not at other places..
20. In our opinion, in a case where cause of action has arisen at a place where the plaintiff is residing or where there are more than one such persons, any of them actually or voluntarily resides or carries on business or personally works for gain would oust the jurisdiction of other place where the cause of action has not arisen though at such a place, by virtue of having subordinate office, the plaintiff instituting a suit or other proceedings might be carrying on business or personally works for gain.
21. At the same time, the provisions of section 62 of the Copyright Act and section 134 of the Trade Marks Act have removed the embargo of suing at place of accrual of cause of action wholly or in part, with regard to a place where the plaintiff or any of them ordinarily resides, carries on business or personally works for gain. We agree to the aforesaid extent the impediment imposed under section 20 of the CPC to a plaintiff to institute a suit in a court where the defendant resides or carries on business or where the cause of action wholly or in part arises, has been removed. But the right is subject to the rider in case plaintiff resides or has its principal place of business/carries on business or personally works for gain at a place where cause of action has also arisen, suit should be filed at that place not at other places where plaintiff is having branch offices etc.
22. There is no doubt about it that the words used in section 62 of the Copyright Act and section 134 of the Trade Marks Act, notwithstanding anything contained in CPC or any other law for the time being in force, emphasise that the requirement of section 20 of the CPC would not have to be complied with by the plaintiff if he resides or carries on business in the local limits of the court where he has filed the suit but, in our view, at the same time, as the provision providing for an additional forum, cannot be interpreted in the manner that it has authorised the plaintiff to institute a suit at a different place other than the place where he is ordinarily residing or having principal office and incidentally where the cause of action wholly or in part has also arisen. The impugned judgments, in our considered view, do not take away the additional forum and fundamental basis of conferring the right and advantage to the authors of the Copyright Act and the Trade Marks Act provided under the aforesaid provisions."
Thus, the decision of the Apex Court has to be understood in its own context.
22. Much reliance has been made on the decision of the Division Bench of Delhi High Court in Ultra Home Construction Pvt. Ltd., v. Purushottam Kumar Chaubey & others (2016 (65) PTC 469 (Del)) [LQ/DelHC/2016/158] and as rightly held by the other decisions of the High Court of Bombay and Calcutta, the said decision is not in consonance with the decision of the Apex Court referred to supra and the above cited decision of the Division Bench of this Court in Wipro Ltd., v. Oushadha Chandrika Ayurvedic India (p) Ltd., (2008-2-L.W. 430 = 2008 (3) CTC 724 (DB)).
23. When the statute does not make a differentiation and the very provision itself is to give an additional benefit to the plaintiff, there is no room for a Court of law to apply the principles of casus omissus. When there is no difference between the principal office and a branch, coupled with the fact that no cause of action has arisen on facts in both the places, it cannot be said that the suit has to be laid at the principal office alone. Perhaps, the doctrine of forum convenience may be a factor for the Court to decide. Taking note of the aforesaid decision, the Mumbai High Court in Manugraph India Limited v. Simarq Technologies Pvt. Ltd., (2016) SCC Online Bom 5334) has held as follows:
"33. I am, with regret, unable to accept the interpretation of Sanjay Dalia in the decision of the Division Bench of the Delhi High Court. I would ordinarily have been loathe to stray too far from the decision of a Division Bench of another High Court; but this view seems to me to be plainly incorrect. 1 believe the Division Bench of the Delhi High Court was in error, and that error appears to me to be in the first sentence of paragraph 12 where it said that the deeming provision of Section 20, i.e., the explanation, had been read into Sections 134(2) and 62(2) (for isolating the place where the plaintiff can be said to be carrying on business). As we have seen, that was not the issue before the Supreme Court at all, nor did the Supreme Court read down the provisions of either of these two sections. If we view the provisions of Section 20 as a three-tier structure, then the provisions of Section 134(2) and Section 62(2) must be seen as standing apart. Sanjay Daiia recognises just this. It does not disrupt this structure at all. There is nothing in that judgment to suggest that the provisions of Section 134(2) or Section 62(2) are in any way curtailed by the provisions of Section 20 of the CPC."
24. This Court is in respectful agreement with the above said reasoning. However, the observation made in paragraph 36(3) has to be read in the context of Section 20 of the Code of Civil Procedure, 1908, with a specific reference to the concept of forum convenience. Perhaps the observation was warranted because of the fact that the plaintiff may drag the defendant to a far off place on the sole factor of having its branch office therein. The High Court of Calcutta in Hindustan Unilever Ltd. v. Sushilkumar Sitaldas Dhirani (G.A.1802 and 1805 of 2016 with C.S.No. 100 of 2016 dated 01.07.2016), has tried to construct all the provisions harmoniously in the following manner.
"From harmonious reading of Section 62 of the Copyright Act and Section 134 of the Trade Marks Act vis-a-vis Clause 12 of the Letters Patent, its leave no ambiguity that an additional ground for attracting the jurisdiction of the Court is provided. By the aforesaid Section the ground for invoking the jurisdiction under Clause 12 of the Letters Patent has not been taken away. However, Section 120 of the Code clearly excludes the applicability of sections 16, 17 and 20 of Code and therefore the scope under the aforesaid Section cannot be curtailed by reference to Section 20 of the Code of Civil Procedure. In other words, the jurisdiction based on a cause of action and the jurisdiction based on the situs of the plaintiff are two independent categories and one does not overlap the other."
25. The above said reasoning insofar as the exercise of Section 134(2) of the Trade Marks Act, 1999 appears to be legally correct and sound. Thus, in the light of the above said decisions having been analysed, this Court is of the view that the question as to whether the plaintiff having a head office in one place and the branch office in another, is irrelevant, for the purpose of instituting the suit by invoking section 134(2) of the Trade Marks Act, 1999, as both those places will have to be treated to be alike when there is no cause of action is available. However, the concept of forum convenience would apply in a case where the plaintiff chooses the place just to drag the defendant to a far off place. Accordingly, this Court holds that the suit is maintainable before this Court. Admittedly, the Mumbai High Court is far off to the defendant than this Court.
26. Coming to the facts of this case, a perusal of the registered mark and the infringed one would certainly throws lot of similarities. Admittedly, the plaintiff is a registered mark holder for RIN and RINSO and the said registration continues as of now. Both the parties are doing business in the very same field. The plaintiff is a prior user. The documents filed would show that it is the market leader. It has also acquired its reputation. The defendant has not made any search before adopting the name. The rigour of Section 29 of the Trade Marks Act, 1999, would certainly come into play and thus, enure to the benefit of the plaintiff. Therefore, this Court is of the view that a case of infringement and passing off is made out. Accordingly, there shall be an order of injunction as prayed for in O.A.Nos. 254 and 255 of 2016 in C.S.No. 202 of 2016. There are also similarity qua the colour scheme, get up and trade dress. Hence, A.No. 5547 of 2016 in O.A.No. 253 of 2016 in C.S.No. 202 of 2016 is dismissed. Consequently, A.No. 5548 of 2016 in C.S.No. 202 of 2016 is also dismissed.
27. This Court, appreciates the assistance rendered by Mr. Ramakrishnan Viraraghavan and Mr. M.S. Bharath, learned Amicus Curiae. As the learned counsel appearing for the parties submitted voluntarily that certain amount may be paid for the assistance of Mr. Ramakrishnan Viraraghavan, learned Amicus Curiae, a sum of Rs.30,000/- (Rupees thirty thousand only) is fixed to each of them.