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IN THE SUPREME COURT OF INDIA
CIVIL APPELLATE JURISDICTION
CIVIL APPEAL NO. 3637 OF 2008
(Arising out of SLP (C) No.20941 of 2006)
Dabur India Ltd. … Appellant
Versus
K.R. Industries … Respondent
JUDGMENT
S.B. SINHA, J.
1. Leave granted.
2. Appellant is a manufacturer of a product known as `Dabur Red Tooth
Powder’ or `Dabur Lal Dant Manjan’. In the year 1993, it had allegedly
adopted a unique colour combination and arrangement of features which
was subsequently changed in December 1999.
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3. Respondent herein is also said to be manufacturer of a tooth powder
known as `Sujata’. It is said to have infringed the copy right of the
appellant. A suit was filed by the appellant against the respondent in the
Delhi High Court. Paragraph 7 of the plaint reads thus :
“7. In December 1999, the plaintiff adopted a
new carton while retaining the conical shape and
white cap for their product which is described
hereinbelow :
7 On one column has the words RED TOOTH POWDER
within a yellow blurb.
7 Immediately below the blurb is an oval shaped picture of a
family with a yellow background.
7 Above these two features there is a legend within a blurb
mentioning the fact that this is a new pack.
7 The column immediately next to it contain the same features
in the Devnagri script.
7 A third column sets out the details including Composition,
Weight, MRP and Manufacturers Name etc.
7 The top half of the third column contains an oval shaped
device containing a diagrammatic representation of the
herbs that constitute the ingredients of Plaintiffs product.”
4. It was alleged that the said carton constituted an `artistic work’ within
the meaning of Section 25-C of the Copyright Act, 1957 (the 1957 Act).
Respondent is said to have been using an identical colour scheme lay out,
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arrangement of features and get up as that of the plaintiffs, the essential
features whereof are :
7 “One column has the words RED TOOTH POWDER within
a yellow blurb.
7 A column which contains the representation of a family in
an oval shape picture.
7 There is a similar representation in the Devnagri script in
another column.
7 The details of the product are set out in another column.
7 Above the details of the product there is advice of a lotus,
similar to the positioning of the plaintiff’s herbs in the
plaintiff’s carton.”
5. The reliefs claimed for by the plaintiff in the said suit, inter alia, are :
“(A) An order of permanent injunction
restraining the defendant, their partners,
proprietors and/or promoters, as the case may be,
their servants and agents, representatives, dealers
and all others acting for and on their behalf from
reproducing any of the artistic features of the
plaintiff’s DABUR RED TOOTH POWDER
container/ packaging/pouch, including its colour
combination, get up, layout or arrangement of
features, printing, publishing, using or otherwise
reproducing any of the artistic features thereof in
any material from amounting to an infringement of
copyright.
(B) An order of permanent injunction
restraining the defendants, their partners,
proprietors and/or promoters, as the case may be,
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their servants and agents, representatives, dealers
and all others acting for and on their behalf from
manufacturing, selling, offering for sale or
otherwise directly or indirectly dealing in tooth
powder packed in the impugned packaging or any
other packaging as may be a slavish imitation
and/or a substantial reproduction of the DABUR
RED TOOTH POWDER
container/packaging/pouch or from committing
any other act as is likely to cause confusion and
deception amounting to passing off.”
6. Respondent filed an application in the suit purported to be under
Order 7 Rule 11 of the Code of Civil Procedure, 1908 (hereinafter referred
to as `the Code’) contending that as the defendant is resident of Andhra
Pradesh, the Delhi High Court had no jurisdiction.
7. By reason of the impugned judgment and order dated 22.5.2006, a
learned Single Judge of the High Court accepted the said contention of the
respondent.
8. An intra court appeal preferred thereagainst has been dismissed by a
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].
It was stated :
“The learned Single Judge has also held that so far
as the aforesaid relief relating to passing off is
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concerned, Delhi court does not have any
territorial jurisdiction as the respondent/defendant
is from Andhra Pradesh and there is no
documentary evidence to show that the respondent
was selling goods in Delhi. We agree with the
aforesaid findings and conclusions recorded by the
learned Single Judge. Accordingly, we find no
merit in the submissions of the counsel appearing
for the appellant that the composite suit of
infringement of copyright and passing off would
lie in the same forum. We also do not find any
error in the judgment of the learned Single Judge
as in our considered opinion so far the relief for
passing off is concerned, the same is covered by
the decision of the Supreme Court in Dhodha
House case.”
9. Mr. Fali S. Nariman, learned senior counsel appearing on behalf of
the appellant, submits that the Division Bench of the High Court 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’), as would be
evident from the following excerpts of Dhodha House (supra) :
“22. We are not concerned in this case with the
maintainability of a composite suit both under the
1957 Act and the 1958 Act. Indisputably, if such a
situation arises, the same would be permissible;
but the same may not be relevant for the purpose
of determining the question of a forum where such
suit can be instituted. Sub-section (2) of Section
62 of the 1957 Act provides for a non obstante
clause conferring jurisdiction upon the District
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Court within the local limits of whose jurisdiction,
at the time of the institution of the suit or other
proceeding, the persons instituting the suit or other
proceedings have been residing. In terms of sub-
section (1) of Section 62, suit can be instituted and
the proceedings can be initiated in respect of
matters arising under the said chapter for
infringement of the copyright in any work or the
infringement of any other right conferred
thereunder. It does not confer jurisdiction upon a
District Court where the plaintiff resides, if a
cause of action arises under the 1958 Act.
XXX XXX XXX
43. The short question which arises for
consideration is as to whether causes of action in
terms of both the 1957 Act 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?
44. A cause of action in a given case both under
the 1957 Act as also under the 1958 Act may be
overlapping to some extent. The territorial
jurisdiction conferred upon the court in terms of
the provisions of the Code of Civil Procedure
indisputably shall apply to a suit or proceeding
under the 1957 Act as also the 1958 Act. Sub-
section (2) of Section 62 of the 1957 Act provides
for an additional forum. Such additional forum
was provided so as to enable the author to file a
suit who may not otherwise be in a position to file
a suit at different places where his copyright was
violated. Parliament while enacting the Trade and
Merchandise Marks Act in the year 1958 was
aware of the provisions of the 1957 Act. It still did
not choose to make a similar provision therein.
Such an omission may be held to be a conscious
action on the part of Parliament. The intention of
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Parliament in not providing for an additional
forum in relation to the violation of the 1958 Act
is, therefore, clear and explicit. Parliament while
enacting the Trade Marks Act, 1999 provided for
such an additional forum by enacting sub-section
(2) of Section 134 of the Trade Marks Act. The
court shall not, it is well settled, readily presume
the existence of jurisdiction of a court which was
not conferred by the statute. For the purpose of
attracting the jurisdiction of a court in terms of
sub-section (2) of Section 62 of the 1957 Act, the
conditions precedent specified therein must be
fulfilled, the requisites wherefor are that the
plaintiff must actually and voluntarily reside to
carry on business or personally work for gain.”
10. Learned counsel would contend that 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.
Then term `Law’ within the meaning of the said provision, it was submitted,
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 has also been placed on Exphar Sa & Anr. v. Eupharma Laboratories
Ltd. & Anr. [(2004) 3 SCC 688].
11. Mr. Shailen Bhatia, learned counsel appearing on behalf of the
respondent, on the other hand, would submit that this Court in Dhondha
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House (supra) categorically held that the cause of action for infringement of
the 1957 Act and that of the 1958 Act are distinct and separate.
12. Order II Rule 3 of the Code, it was submitted, deals with pecuniary
jurisdiction and not the territorial jurisdiction of the Court.
Drawing our attention to the provisions contained in Section 134 of
the Trade Marks Act, 1999, the learned counsel would contend that in
relation to a passing off the action, even the Parliament did not think it
expedient that any provision giving an option to the plaintiff to file a suit
where it resides and not the defendant.
13. Before adverting to the rival contentions of the parties, as noticed
hereinbefore, we may notice the provision of sub-section (1) of Section 55
and sub-section (2) of Section 62 of 1957 Act, which read :-
“Section 55. 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;
Section 62–Jurisdiction of court over matters
arising under this Chapter
(1) … ….
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(2) For the purpose of sub-section (1), a “district
court having jurisdiction” shall, notwithstanding
anything contained in the Code of Civil Procedure,
1908 (5 of 1908), or any other law for the time
being in force, include a district court within the
local limits of whose jurisdiction, at the time of the
institution of the suit or other proceeding, the
person instituting the suit or other proceeding or,
where there are more than one such persons, any
of them actually and voluntarily resides or carries
on business or personally works for gain.”
Sub-section (2) of Section 27 of the 1958 Act reads :-
“27. No action for infringement of unregistered
trade mark. –
(1) …. ….
“(2) Nothing in this Act shall be deemed to affect
rights of action against any person for passing
off goods as the goods of another person or the
remedies in respect thereof.”
Sub-section 2 of Section 106 of 1958 Act reads :-
“Section 106 – Reliefs in suits for infringement or
for passing off.-
(1) ….. ……
(2) Notwithstanding anything contained in sub-
section (1), the court shall not grant relief by way
of damages (other than nominal damages) or an
account of profits in any case–
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(a) where in a suit for infringement of a
trade mark, the infringement complained of
is in relation to a certification trade mark; or
(b) where in a suit for infringement the
defendant satisfies the court–
(i) that at the time he commenced to use the
trade mark complained of in the suit he was
unaware and had no reasonable ground for
believing that the trade mark of the plaintiff
was on the register or that the plaintiff was
registered user using by way of permitted
use; and
(ii) that when he became aware of the
existence and nature of the plaintiffs right in
the trade mark, he forthwith ceased to use
the trade mark in relation to goods in
respect of which it was registered; or
(c) where in a suit for passing off the
defendant satisfies the court–
(i) that at the time he commenced to use the
trade mark complained of in the suit he was
unaware and had no reasonable ground for
believing that the trade mark of the plaintiff
was in use; and
(ii) that when he became aware of the
existence and nature of the plaintiffs trade
mark, he forthwith ceased to use the trade
mark complained of.”
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14. We may also at this stage notice the provisions of the Trade Marks
Act, 1999, (for short, `1999 Act’), Section 134 whereof reads :-
“Section 134 – Suit for infringement, etc., to be
instituted before District Court
(1) No suit–
(a) for the infringement of a registered trade
mark; or
(b) relating to any right in a registered trade
mark; or
(c) for passing off arising out of the use by the
defendant of any trade mark which is
identical with or deceptively similar to the
plaintiff’s trade mark, whether registered or
unregistered,
shall be instituted in any court inferior to a District
Court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of sub-
section (1), a “District Court having jurisdiction”
shall, notwithstanding anything contained in the
Code of Civil Procedure, 1908 (5 of 1908) or any
other law for the time being in force, include a
District Court within the local limits of whose
jurisdiction, at the time of the institution of the suit
or other proceeding, the person instituting the suit
or proceeding, or, where there are more than one
such persons any of them, actually and voluntarily
resides or carries on business or personally works
for gain.
Explanation.–For the purposes of sub-section (2),
“person” includes the registered proprietor and the
registered user.”
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Sub-section (1) of Section 135 of the 1999 Act reads :-
“Section 135.Relief in suits for infringement or for
passing off.–(1) The relief which a court may
grant in any suit for infringement or for passing
off referred to in section 134 includes injunction
(subject to such terms, if any, as the court thinks
fit) and at the option of the plaintiff, either
damages or an account of profits, together with or
without any order for the delivery-up of the
infringing labels and marks for destruction or
erasure.”
15. The question which was posed by the learned Single Judge is as
under:-
“The next question, however, which is more
important is whether the plaintiff can combine the
two causes of action one under the Copyright Act
and the second under the Act of 1958 in a situation
where this court has the jurisdiction in so far as
cause of action under the Copyright Act is
concerned but has no territorial jurisdiction to
entertain the cause of action relating to Act of
1958.”
16. Noticing the provisions of Order II Rule 2 and 3 of the Code of Civil
Procedure enabling the plaintiff to combine more than one cause of actions,
it was opined that the said provisions relate to pecuniary jurisdiction. The
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said jurisdiction, however, can be exercised only in the event the court has
otherwise jurisdiction in respect of the cause of action wherefor the action
has been brought.
17. The learned Single Judge noticed some precedents and opined :-
“13. Normally, I would have felt myself bound
by the aforesaid two judgments which are not only
of this court but relate to same subject matter,
namely, joining of two causes of action under
trademark and copyright law. Even if I hold
different opinion, the normal course of action
would have been to refer the matter to the Division
Bench. However, this is not necessary in the
instant case in view of the fact that the controversy
now stands settled by the Supreme Court in
Dhodha House (supra).”
18. The Division Bench of the High Court on the other hand while
holding that the High Court has jurisdiction to adjudicate and decide upon
the relief of infringement of copyright observed that it would be open to the
appellant to file a fresh suit in the court of competent jurisdiction in respect
of its action for passing off and thus the plaint is required to be returned for
filing in the court of competent jurisdiction only in relation thereto.
19. In Dhodha House (supra) this Court was concerned with the
correctness of judgments of the Allahabad High Court in Surendra Kumar
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Maingi v. M/s. Dodha House, [AIR 1998 Allahabad 43] and the decision
of the Delhi High Court in : P.M. Diesels Ltd. v. M/s. Patel Field Marshal,
[ AIR 1998 Delhi 225 ]
20. It was clearly held that a judgment passed by a court having no
territorial jurisdiction is a nullity. As regards the cause of action under the
1957 Act and a cause of action under the 1958 Act and or a passing off
action, it was held that sub-section (2) of Section 62 would confer
jurisdiction on a court where the plaintiff resides. The cause of action in
respect of others was stated to be where the defendant resides.
It was also noticed that in a given case the petition under the 1957
Act or 1958 Act may be overlapping, holding :-
“44. The territorial jurisdiction conferred upon
the court in terms of the provisions of the Code of
Civil Procedure indisputably shall apply to a suit
or proceeding under the 1957 Act as also the 1958
Act. Sub-section (2) of Section 62 of the 1957 Act
provides for an additional forum. Such additional
forum was provided so as to enable the author to
file a suit who may not otherwise be in a position
to file a suit at different places where his copyright
was violated. Parliament while enacting the Trade
and Merchandise Marks Act in the year 1958 was
aware of the provisions of the 1957 Act. It still did
not choose to make a similar provision therein.
Such an omission may be held to be a conscious
action on the part of Parliament. The intention of
Parliament in not providing for an additional
forum in relation to the violation of the 1958 Act
is, therefore, clear and explicit.”
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21. Noticing that whereas in Dhoda House (supra) the infringement
complained of primarily was that of 1958 Act and not under the 1957 Act,
in Patel Field Marshal (supra) the thrust was on the sale of products and/or
advertisement by the appellant for registration of trade marks in the Trade
Marks Journal and other local papers.
The law was stated in the following terms :-
“54. For the purpose of invoking the jurisdiction
of a court only because two causes of action joined
in terms of the provisions of the Code of Civil
Procedure, the same would not mean that thereby
the jurisdiction can be conferred upon a court
which had jurisdiction to try only the suit in
respect of one cause of action and not the other.
Recourse to the additional forum, however, in a
given case, may be taken if both the causes of
action arise within the jurisdiction of the court
which otherwise had the necessary jurisdiction to
decide all the issues.”
22. What would, however, be the nature of composite suit, was also be
taken note of. The Court observed :-
“55. In this case we have not examined the
question as to whether if a cause of action arises
under the 1957 Act and the violation of the
provisions of the Trade Marks Act is only
incidental, a composite suit will lie or not, as such
a question does not arise in this case.”
16
It is in the aforementioned context, submission of Mr. Nariman that a
composite suit would be maintainable having regard to sub-section (1) of
Section 55 of the 1957 Act must be considered.
23. 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. It is trite that
where the court has the jurisdiction/power to adjudicate, it will necessarily
have the incidental power therefor. It may, however, be different if the
Court may have exercised a power which is not provided for as a
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supplemental proceeding e.g. Section 94 of the Code. {[See State of Punjab
and Anr. v. Devans Modern Brewaries Ltd. and Anr [(2004) 11 SCC 26]}.
24. Thus, whereas an incidental power is inherent in the court, a
supplemental power may also be exercised, keeping in view the ultimate
relief which may be granted by it. We may notice that this Court in Sakiri
Vasu v. State of U.P. and others, [ (2008) 2 SCC 409 ] held that the
Magistrate will have power to grant interim maintenance, although no such
provision existed in Section 125 of the Code of Criminal Procedure, 1973.
Similarly in Hindustan Lever Ltd. v. Ashok Vishnu Kate, [ (1995) 6
SCC 326 ] this Court has held that the Labour Court will have the power to
grant injunction as an incidental power.
25. If a person is found to be guilty of violation of copyright he will be
bound to pay damages. For the purpose of quantification of damages,
taking of the accounts may be necessary and it is in this behalf the
Parliament thought it fit to use the word “otherwise”. Thus the power
conferred by law within the meaning of sub-section (1) of Section 55 of
1957 Act qualifies the power of the court to grant remedies as envisaged
thereunder if any other cause of action arose under a different Act. An
action for passing off is common law right but the same does not determine
18
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.
26. 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 and thus a person instituting a suit having any claim on the
ownership of the copy right which has been infringed, would not be a
ground for holding that he would not come within the purview of sub-
section (2) Section 62 of the 1957 Act, as he had been served with a `cease
and desist’ notice, opining :-
“13. It is, therefore, clear that the object and
reason for the introduction of sub-section (2) of
Section 62 was not to restrict the owners of the
copyright to exercise their rights but to remove
any impediment from their doing so. Section 62(2)
cannot be read as limiting the jurisdiction of the
District Court only to cases where the person
instituting the suit or other proceeding, or where
there are more than one such persons, any of them
actually and voluntarily resides or carries on
business or presently works for gain. It prescribes
an additional ground for attracting the jurisdiction
of a court over and above the “normal” grounds as
laid down in Section 20 of the Code.”
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27. There cannot be any doubt whatsoever that the Parliament having
inserted sub-section (2) in Section 62 of the 1957 Act, the jurisdiction of the
Court thereunder would be wider than the one under Section 20 of the Code.
The object and reasons for enactment of sub-section (2) of Section 62 would
also appear from the report of the Committee, as has been noticed by this
Court being a provision which has been specially designed to confer an
extra benefit upon the authors who were not in a position to instate
copyright infringement proceeding before the Courts. It is in the
aforementioned context the law laid down by this Court in paragraph 13 of
Dhonda House (Supra) must be understood.
28. If the impediment is sought to be removed by inserting an incidental
provision, there cannot be any doubt the court could be entitled to pass an
interim order, but the same by no stretch of imagination can be extended to
a cause of action which is founded on separate set of facts as also rights and
liabilities of a party under, a different Act. In Dhoda House (supra),
although Exphar Sa (supra) was not noticed, the distinction would be
apparent from the following :-
“50. In this case, the Delhi High Court could not
have invoked its jurisdiction in terms of the 1957
Act. The primary ground upon which the
jurisdiction of the original side of the High Court
20
was invoked was the violation of the 1958 Act, but
in relation thereto, the provisions of sub-section
(2) of Section 62 of the 1957 Act could not be
invoked.
51. The plaintiff was not a resident of Delhi. It has
not been able to establish that it carries on any
business at Delhi. For our purpose, the question as
to whether the defendant had been selling its
produce in Delhi or not is wholly irrelevant (sic).
It is possible that the goods manufactured by the
plaintiff are available in the market of Delhi or
they are sold in Delhi but that by itself would not
mean that the plaintiff carries on any business in
Delhi.”
29. What then would be meant by a composite suit? A composite suit
would not entitle a court to entertain a suit in respect whereof it has no
jurisdiction, territorial or otherwise. Order II Rule 3 of the Code
specifically states so and, thus, there is no reason as to why the same should
be ignored. A composite suit within the provisions of the 1957 Act as
considered in Dhoda House (supra), therefore, would mean the suit which is
founded on infringement of a copy right and wherein the incidental power
of the Court is required to be invoked. A plaintiff may seek a remedy which
can otherwise be granted by the court. It was that aspect of the matter
which had not been considered in Dhoda House (supra) but it never meant
that two suits having different causes of actions can be clubbed together as a
composite suit.
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30. For the reasons aforementioned we do not find any merit in this
appeal which fails and is dismissed with costs. Counsel’s fee assessed at
Rs.50,000/-.
………………………….J.
[S.B. Sinha]
…………………………..J.
[Lokeshwar Singh Panta]
New Delhi;
May 16, 2008
advocatemmmohan 
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