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Judgment
The second appeals came up before us on a reference by one of us, as the main question involved, the extent to which Section 73 of the Trade
Marks Act governed the forum for instituting suits in a passing off action, in respect of goods covered by a registered trade mark, was not settled
by any decision of this Court. The appeals themselves arose out of proceedings in execution of the decree in O.S. No. 1394 of 1950 on the file of
the City Civil Court. The defendant, judgment-debtor under that decree, is the appellant before us. The decree in that suit was ultimately passed ex
parte the defendant. The decree granted the following reliefs, which were what the plaintiff had specifically asked for:
(1) that the defendant do pay the plaintiff a sum of Rs. 100 as and for damages;
(2) that the defendant, his agents, or dealers or servants, be and are hereby restrained by injunction from manufacturing selling or offering for sale
snuff under the offending trade name, trade mark, label or any other colourable imitation of the plaintiff''s trade name, trade mark, label and design ;
(3) that the defendant be and is hereby directed to surrender all the pamphlets, letter heads cash memos, order books, labels and printing designs
and signboards disclosing the offending trade name, label and design ;
(4) that the defendant do pay the plaintiff a sum of rupees 53-8-0 as and for the costs of suit....
The claim in the plaint was that the plaintiff was a reputed snuff manufacturer since 1920, and that his product was being marketed under the
trade name K. S. Sahib''s Snuff Factory and under the trade mark comprising the words K. S. Madras Snuff '' packed in labels of special design
and colour containing a pictorial representation. That trade mark was registered by the plaintiff under the Trade Marks Act, 1940. The reliefs the
plaintiff sought were set out in paragraphs 15 to 18 of the plaint and were summarised in sub-paragraphs 1 to 4 of paragraph 22 of the plaint.
Paragraphs 2 to 15 of the plaint contained allegations on proof of which the plaintiff claimed he was entitled to the reliefs mentioned above.
A reading of the plaint taken as a whole left no room for doubt, that the cause of action was also based upon the alleged infringement of the
trade mark, which was undoubtedly registered in the name of the plaintiff under the Trade Marks Act. In paragraph 6 of the plaint the plaintiff
averred:
Under the provisions of the Act, plaintiff is the registered owner and proprietor of the said trade mark entitled to legal protection in respect of
infringement of his rights and against colourable imitations thereof.
Paragraph 12 of the plaint ran:
Plaintiff states that in consequence of the infringement committed by the defendant and being committed from day-to-day the plaintiff''s trade
reputation was adversely affected and is likely to be further affected.
In continuation of that the plaintiff averred in paragraph 13:
In spite of the alteration suggested by the defendant in the trade mark comprising of the label and design, the defendant is wrongfully continuing to
use the offending trade name, trademark label and design and is persisting in his colourable limitation and infringement of the plaintiff''s rights.
Thus the specific plea was that the defendant''s acts constituted an infringement of the registered trade mark of the plaintiff.
It was common ground that in execution of the decree the plaintiff obtained, which as we said was ex parte the defendant, the plaintiff decree-
holder realised the sum of Rs. 100 awarded as damages under Clause (1) of the decree and the costs awarded in Clause (4). Subsequently, the
plaintiff decree-holder filed E.P. No. 2010 of 1952 to execute Clause (3) of the decree and to obtain an order for the seizure of the offending
labels. The executing Court ordered the seizure. Before that order could be executed, the defendant filed E.A. No. 3479 of 1952, wherein he
prayed that the order to seize the labels should be set aside. The main plea taken at that stage was that the decree under execution was a nullity, as
the Court of the City Civil Judge which had granted the decree had no jurisdiction to entertain the suit ; Section 73 of the Trade Marks Act barred
any such assumption of jurisdiction.
The objection of the defendant judgment-debtor was upheld by the executing Court. E.A. No. 3479 of 1952 was allowed, with the result that
E.P. No. 2010 of 1952 was dismissed. The plaintiff decree-holder appealed. The Additional City Civil Judge, who heard both the appeals,
differed from the learned trial Judge, and held the suit had been properly laid in the City Civil Court; because it was in the main an action for
passing off the defendant''s goods as the goods of the plaintiff. The learned appellate Judge set aside the orders of the executing Court and directed
execution to proceed in E.P. No. 2010 of 1952. It was against the orders of the appellate Court that the Civil Miscellaneous Second Appeals now
before us were preferred.
To appreciate the scope of the contentions of the learned Counsel on either side may be desirable to set out the statutory provisions on which
the arguments were based. The relevant portion of Section 20(1) is:
No person shall be entitled to institute any proceeding to prevent, or to recover damages for the infringement of an unregistered trade mark... (the
rest of the section may not be material for our present purposes. As we said we are dealing with the case of a registered trade mark).
Section 20(2) runs:
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.
Section 73 runs:
No suit for infringement of a trade mark or otherwise relating to any right in a trade mark shall be instituted in any Court inferior to a District Court
having jurisdiction to try the suit.
The statutory expression in Section 73 is ""suit for infringement of a trade mark or otherwise relating to any right in a trade mark."" What Section
20(1) bars in relation to an un registered trade mark is ""any suit or proceeding to prevent or to recover damages for the infringement of a trade
mark.
Taking the three statutory provisions we have referred to above together the position seems to be this. A suit to prevent an infringement of a
trade mark or a suit to recover damages for infringement of that trade mark cannot be instituted at all, unless that trade mark has been registered.
This is subject to the further provision in Section 20(1) which, as we pointed out earlier, is not relevant for our present purposes. Such suits can
therefore be filed only where the trade mark has been registered under the provisions of the Act. If the trade mark has been so registered, Section
73 determines the forum for such suits, a civil Court not inferior to a District Court which otherwise has the requisite jurisdiction to try the suit, for
example territorial jurisdiction. Section 20(2) is a saving provision. What it saves is expressly stated in the Sub-section:
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.
What it saves is the right of action in what is familiarly known as passing off actions. To such actions none of the provisions of the Act including
Section 20(1) and Section 73 can apply. If the action is one for passing off goods or the remedies in respect thereof, the right of action is saved,
whether a trade mark is involved or not, and, whether such a trade mark has been registered or not under the provisions of the Act.
The contention of Mr. Dorairaj, learned Counsel for the respondent (plaintiff, decree-holder) was that, having regard to the allegations in the
plaint, the suit was in the main one of the category known as passing off actions, and therefore though the cause of action was also based on an
infringement of the rights of the plaintiff secured to him by the registration of his trade mark, the plaintiff''s suit was saved by Section 20(2) of the
Act and fell outside the scope of the ban imposed by Section 73 of the Act. We have already pointed out that the plaint contained express
allegations, that the registered trade mark of the plaintiff and his rights therein were infringed by the conduct of the defendant, and the plaintiff
sought relief on that basis also. Whether despite the apparently wide language of Section 20(2) such a suit came-within the purview of Section 73
of the Act is the question for determination.
In construing the scope of Section 73 of the Act there is no room for the application of the well-settled principle of law, that if a civil Court is to
be divested of its jurisdiction it should be by statutory provision which is either express in its terms, or which arises by necessary intendment.
Section 73 does not divest the Civil-Courts as such of jurisdiction even in the limited class of cases referred to therein, namely, suits for the
infringement of a trade mark or otherwise relating to any right in a trade mark. The jurisdiction of the Civil Courts is maintained. Only the class of
Courts, established under the Civil Courts Act, inferior in jurisdiction to a District Court, is excluded. Just as the Civil Courts Act for example
defines the jurisdiction of the several classes or categories of civil Courts, Section 73 of the Trade Marks Act designates the class of Courts in
which the suits specified therein have to be filed, which alone have jurisdiction to try that class of suits.
Mr. Dorairaj urged that the scope of Section 73 should be so construed as to avoid any conflict with Section 20(2) of the Act. He contended
that Section 73 did not apply to any passing off action, irrespective of the question whether in such a suit the infringement of a trade mark was
complained of or not, and irrespective of the question whether such a trade mark was registered under the provisions of the Act or not.
In our opinion there is really no conflict between these two sets of provisions. Section 20(2) is only concerned with staying the right of action.
For purposes of Section 20(2), whether the trade mark in question was registered or not may not have any real bearing. Section 73 is not
concerned with the right of actions as such. It only prescribes the forum where suits of the class specified in Section 73 could be tried. If this
distinction is borne in mind, there would appear to be no real conflict between the two sets of provisions.
The further contention of Mr. Doraraj was that even if an infringement of a registered trade mark was alleged and even if relief was sought on
the footing of such an alleged infringement if the suit was a passing off action, Section 73 would not apply to such a suit. We are unable to accept
that contention. To accept that contention we will have to read further words of qualification into Section 73. In effect we would have to read
Section 73 as if it ran ;
No suit for infringement of a trade mark or otherwise relating to any right in a trade mark other than a passing off action saved by Section 20(2) of
the Act.
That would be to claim rights of legislation for a Court, while its duty is only to interpret. Besides, the expression ""otherwise relating to any right in a
trade mark"" in Section 73 would, in our opinion, include passing off actions also, where the alleged misuse of registered trade mark is in issue. In
the present case it may not even be necessary to hold that the plaintiff''s suit is one ""otherwise relating to any right in a trade mark"", that is a
registered trade mark, within the meaning of Section 73. We have already pointed out it was definitely a suit for infringement of a trade mark,
because the plaintiff categorically averred infringement of his registered trade mark ; and his suit was to prevent the infringement of his registered
trade mark by the defendant and also to recover damages for that infringement.
The suit filed by the plaintiff was no doubt an action for passing off the goods of the defendant as the goods of the plaintiff within the meaning of
Section 20(2). But it was also a suit for the infringement of a trade mark or otherwise relating to any right in a trade mark within the meaning of
Section 73. The right of action was saved by Section 20(2). The liability to institute it in the forum prescribed by Section 73 was not saved in this
case by recourse to the provisions of Section 20(2) of the Act.
This Section 20(2) was numbered as one of the Sub-sections of Section 20 can obviously have no real bearing in determining the scope of
Section 20(2), particularly in relation to Section 73 of the Act. The position would not have been any different had Section 20(2) been numbered
as a separate section of the Act. In fact it stood by itself as Section 45 in the earlier Act.
Whether in what is apparently a passing off action the plaintiff also alleges an infringement of his registered trade mark and seeks relief also on
that basis, the suit would still be a suit for the infringement of a trade mark or otherwise relating to any right in a trade mark within the meaning of
Section 73 and would therefore fall within the scope of the ban imposed by that section is the real question for decision. In our opinion the
plaintiff''s suit fell within the scope of Section 73. Mr. Dorairaj did not dispute the fact that the City Civil Court, Madras, was not a District Court
or a Court superior to a District Court within the meaning of Section 73.
The distinction between a passing off action and a suit for the infringement of a rade mark, to which Mr. Dorairaj invited our attention, has
been well-defined by decisions of both English and Indian Courts. It may not be necessary to embark upon a discussion of the general principles or
upon an examination of the case-law bearing on that point. As already pointed out by us the scope of the question we have to determine is much
narrower. What is the position, if in a passing off action the plaintiff also alleges infringement of a registered trade mark ; and if he does so, whether
it is a suit for infringement of trade mark within the meaning of Section 73. Ranjit Lal v. Vidya Praksh AIR 1951 Simla 176 and Firm Bhagwan
Dass Ramjilal, Iron Merchants and Golden Engineering Works, Bulandshahr Vs. Watkins Mayor and Co., Jullundur and Others, on which Mr.
Dorairaj relied do not help us to answer that question.
Our attention was drawn to the decision of a Division Bench of the Allahabad High Court in Tak Chand Fillumal Vs. Western India Match Co.
Ltd., . We have reached the same conclusion but on a different line of reasoning.
To sum up this portion of the case, we hold that though the plaintiff''s suit was a passing off action, it was also a suit for the infringement of a
trade mark or otherwise relating to any right in a trade mark within the meaning of Section 73 of the Act, and that the City Civil Court had no
jurisdiction to entertain that suit taken as a whole. The decree in that suit was a nullity, because it was passed by a Court which had no jurisdiction.
The learned Counsel for the respondent decree-holder next argued that the executing Court had no jurisdiction to go behind the decree and
examine the pleadings and the issues framed in the case, to determine the question of the jurisdiction of the Court which passed the decree. The
learned Counsel urged that clause 2 of the decree which granted an injunction prohibiting the defendant from marketing his goods under the labels
employed by him for that purpose could be equally granted in a passing off action also. In Shanmugha Nadar Vs. Shanmughavel Nadar and
Another, Patanjali Sastri, J., pointed out the distinction between the form of injunction which could be granted in a passing off action based upon
any right in an unregistered trade mark or trade name and the injunction which could be granted in the case of an infringement of a registered trade
mark. For the former case the injunction must be qualified by words prohibiting the defendant''s use of the name or trade mark without taking
reasonable precaution to distinguish his business or goods from that of the plaintiff. No such qualification would be needed where the infringement
complained of was that of a registered mark. In the latter class of cases it is the statutory right that is asserted and a statutory remedy that is
claimed. In this case the learned trial Judge granted an injunction without any Qualification. The trade mark in question was a registered mark. The
relief ""''ranted in paragraph 3 of the decree would not have been permissible, if the action had solely been one for passing off. For this grant of that
relief the seizure of pamphlets, etc., in the possession of the defendant offending the registered trade mark of the plaintiff, mere possession of such
offending objects would not be enough. The plaintiff had to allege and prove that he had a proprietary right in the registered trade mark or trade
name in question to justify the prayer for and the grant of the relief of seizure. This is a specific statutory right for which Section 21 of the Act
provides. As we have already pointed out, a reading of the plaint taken as a whole made it clear that the plaintiff based his cause of action also
upon infringement of his registered trade mark. To consider whether the decree in question was a nullity, it was certainly permissible, in fact, it was
necessary to consider with reference to this plaint, what the scope of the suit was in which that decree was granted. We are unable to accept the
extreme contention put forward by the learned Counsel for the decree-holder respondent, that the executing Court called upon to decide whether
the decree under execution was a nullity, should not look into any document other than the decree under execution, and that it could only decide
whether ex facie the decree showed lack of jurisdiction in the Court that passed it. In Adinarayana Chetty v. Chengiah Chetty (1937) 46 L.W.
544, Venkataramana Rao., J. approved of an earlier decision of Pandrang Row, J., in Srirangachariar v. Annamalai Chettiar (1935) 41 L.W. 485,
where the jurisdiction of the Court to take evidence for the purposes of deciding whether the decree was a nullity was upheld. See also Meenakshi
Ammal v. Chidambaram Chettiar (1947) I M.L.J. 66 : 60 L.W. 41. No reported case was brought to our notice to show that the pleadings in the
case should not be looked into by the executing Court to decide the question at issue, whether the Court had no jurisdiction at all to pass the
decree.
In our opinion, the executing Court was right in its view, that the decree under execution was a nullity, because the Court of the City Civil
Judge had no jurisdiction to entertain the suit as a whole. We allow the appeals, set aside the orders of the lower appellate Court and restore the
orders of the executing Court in E.A. No. 3479 of 1952 and E. A. No. 3595 of 1952 in E.P. No. 2010 of 1952. The appellant will be entitled to
one set of costs throughout.