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CASE NO.: Appeal (civil)  6248 of 1997

PETITIONER: M/s. Dhodha House

RESPONDENT: S.K. Maingi

DATE OF JUDGMENT: 15/12/2005

BENCH: B.P. Singh & S.B. Sinha

JUDGMENT: JUDGMENT W I T H CIVIL APPEAL NO. 16 of 1999  

S.B. SINHA, J :

       Extent of jurisdiction of a civil court to determine a lis as regard  infringement of the provision of the Copyright Act, 1957 (for short "the  1957 Act") and the Trade and Merchandise Marks Act, 1958 (for short "the  1958 Act") is in question in these appeals.

       We would notice the fact of the matters separately.

Civil Appeal No. 6248 of 1997 :         The Appellant herein filed a suit against the Respondent to protect his  copyright, trade marks and common law rights as regard his art work/ label/  trade mark and wrapper contained in Annexure A to the memo of appeal  which the Respondent had allegedly infringed by using the impugned trade  mark/ art work/ label/ wrapper contained in Annexure B thereto.

       According to the Appellant, the said art work/ label/ trade mark/  wrapper infringes the Appellant’s trade mark registration ’Dhodha House’  under Registration No. 277714-B in class 30 under the 1958 Act, as also  copyright registered under the 1957 Act being registration No. A-5117 and  A-5330 of 1970.  The Appellant also claims it to be a prior user of the said  trade mark and name and enjoys goodwill as well as reputation in respect  thereof since 1960.   

       It is not in dispute that the Appellant carries on business of sweet  meats in the district of Ghaziabad whereas the Respondent carries on the  similar business in the name and style of M/s. V.R.K. Todha Sweet House at  Kotkapura in the district of Faridkot.  The Appellant herein filed a suit  before the District Judge, Ghaziabad wherein it also prayed for an order of  injunction.  The learned 1st Addl. District Judge, Ghaziabad by an order  dated 17.1.1992 passed an order of injunction against the Respondent in the  following terms:

"Application 5-C is allowed to the extent that the  OP/defendants, their servants, dealers, stockists,  distributors, assigns, representatives and agents, are  restrained during the pendency of the suit, from  infringing the plaintiffs copyright existing in the art  work/ label and wrapper, duly registered at Nos. A- 5117/70 and A-5330/70 under the Indian Copyright Act,  1957 by using these in the art work involved in  defendant’s labels, and wrappers entitled Manni’s Todha  Sweet or any other labels and wrappers, confusingly  similar to the aforementioned art work, label and wrapper

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of the plaintiff.  They are further restrained from passing  off their goods and business as and for the business and  goods of the plaintiff under the impugned trade mark  Todha with prefix Maingi’s or its labels and wrapper  which are identical with deceptively similar to the trade  mark Dhodha with prefix Royal and its labels and  wrappers being used by the plaintiff in his distinctive get- up, make-up, colour scheme, combination and manner of  writing."

       The Respondent preferred an appeal thereagainst before the High  Court of Judicature at Allahabad which was marked as First Appeal From  Order No. 401 of 1992.           By an order dated 5.5.1997, the High Court inter alia held that the  Civil Court had no territorial jurisdiction to try the suit.  The High Court was  further of the opinion that ’Dodha’ is a name of a variety of sweet and it is  not a special product which is manufactured by the plaintiff alone.           The Appellant is, thus, before us.

Civil Appeal No. 16 of 1999 :         The defendant is the Appellant herein.  Both the plaintiff and  Appellants carry on business in diesel engines at Rajkot in the State of  Gujarat.  A suit on the original side of the Delhi High Court was filed inter  alia for perpetual injunction restraining infringement of trade mark,  copyright, trading style, passing off and for rendition of accounts.  It has  been averred in the plaint that the plaintiff has registered a trade mark ’Field  Marshal’.  Its label ’Field Marshal’ is said to be registered also under the  Copyright Act, 1957 and it had been printing/ publishing the said purported  artistic work titled ’Field Marshal’ in all its trade literatures, pamphlets,  stickers, calendars, diaries, etc. as also on the goods manufactured.   According to the plaintiff, the First Defendant herein has been registered  under the Companies Act and it proposed to start a business in the trading  style of ’Field Marshal’ for the business of the goods of same kind and  description wherefor caution notice had been issued by it.  It also sent letter  to the Registrar of Companies objecting to the incorporation of the said  company containing the word ’Field Marshal’ or identical or deceptively  similar thereto.  It is alleged that goods manufactured by the Appellants with  the plaintiff’s trade marks are being sold in Delhi.   

       The alleged cause of action for filing the said suit has been averred in  paragraph 30 which reads as under:

"That the goods of the parties bearing the impugned trade  marks are also sold in the Union Territory of Delhi.  The  Trade Marks Journals No. 823 dt. 16.9.83 and No. 876  dt. 1.12.85 and Journal No. 933 dt. 16.4.1988 were  published in India by the Trade Marks Registry in respect  of applications of the defendants for registration of the  impugned trade marks, including the Union Territory of  Delhi.  Therefore, this Hon’ble Court has jurisdiction to  entertain and try the present suit.  Moreover, the  jurisdiction of this Hon’ble Court is also attracted in view  of Section 62(2) of the Copyright Act."

       The value of the suit for the purposes of court fee and jurisdiction was  fixed at Rs. 200/- each in relation to reliefs (i), (ii), (iii), (iv) and (v).

       An application for injunction was filed by the First Respondent and by  an order dated 28th September, 1995, the said application was rejected inter  alia on the ground that the plaintiff has failed to prima facie show that the  Delhi High Court had the territorial as also the pecuniary jurisdiction in  relation thereto.  The Plaintiff-Respondent No. 1 preferred an intra-court  appeal before the Division Bench of the said Court which was marked as  FAO (OS) 270 of 1995.  By reason of the impugned judgment dated 10th

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March, 1998, the said appeal was allowed.

       Before the Division Bench of the High Court, three contentions as  regard the jurisdiction of the Delhi High Court were raised; firstly, under  Section 62 of the Copyright Act, 1957, secondly, in view of the fact that the  defendants had sought for registration of trade mark at Delhi, and thirdly, the  defendants are selling goods under the impugned trade mark at Delhi and,  thus, plaintiff’s right thereover had been violated at Delhi.

       The Division Bench negatived the contention raised on behalf of the  Appellants herein that as both the parties are resident of and working for  gain at Rajkot and no sale having been effected by them within the territorial  jurisdiction of the court, the Delhi High Court had no territorial jurisdiction  to entertain the suit.

       On the first contention, the Division Bench was of the opinion that a  composite suit based on infringement of trade mark, copyright, passing off  and for rendition of accounts of profits as also injunction having been filed,  the Delhi High Court had the territorial jurisdiction to entertain the suit.

       On the second contention, the Division Bench relying on or on the  basis of its earlier decision in Jawahar Engineering Co. & Ors. Vs. M/s.  Jawahar Engineering Pvt. Ltd. [AIR 1984 Delhi 166] came to the opinion  that a plaintiff can even seek a restraint order against the threat that is still to  materialize once it comes to learn that the defendants had applied for  registration of trade marks at Delhi wherefor they can pray for injunction to  prevent any sale of the infringing product in Delhi.

       The Bench did not go into the third question.

       The two judgments before us, thus, have taken contrary views.   

       Cause of action, as is well-settled, is a bundle of facts which are  necessary to be proved in a given case.  Cause of action, it is trite, if arises  within the jurisdiction of the court concerned empowers the court to  entertain the matter.  Determination of territorial jurisdiction of a civil court  is governed by the provisions of the Code of Civil Procedure (for short, ’the  Code’).  Section 16 of the Code provides for institution of the suits where  subject-matter of the suit is situate.  Section 17 of the Code refers to the suits  for immovable property within jurisdiction of different courts.  Section 18  refers to place of institution of a suit where local limits of jurisdiction of  courts are uncertain; whereas Section 19 of the Code contemplates suits for  compensation for wrongs to person or movables,  Section 20 of the Code,  wherewith we are concerned in this case, provides that the suits which do   not come within the purview of Sections 16 to 19 of the Code are to be  instituted where the defendants reside or cause of action arises in the  following terms : "20. Other suits to be instituted where defendants  reside or cause of action arises.--Subject to the  limitations aforesaid, every suit shall be instituted in a  Court within the local limits of whose jurisdiction\027 (a)  the defendant, or each of the defendants where there  are more than one, at the time of the commencement of  the suit, actually and voluntarily resides, or carries on  business, or personally works for gain; or (b) any of the defendants, where there are more than one,  at the time of the commencement of the suit, actually  and voluntarily resides, or carries on business, or  personally works for gain,  provided that in such case  either the leave of the Court is given, or the defendants  who do not reside, or carry or business, or personally  work for gain, as aforesaid, acquiesce  in such  institution ; or                 (c)  the cause of action, wholly or in part, arises. [Explanation].--A corporation shall be deemed to carry on

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business at its sole or principal office in [India] or, in  respect of any cause of action arising at any place where it  has also a subordinate office, at such  place."

The jurisdiction of the District Court to determine a lis under the 1957  Act as also the 1958 Act must, thus, be instituted where the whole or a part  of cause of action arises.  Sub-section (2) of Section 62  of the 1957 Act  provides for an additional forum therefor in the following terms : "(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."

       Admittedly, no such additional forum had been created in terms  of  the provisions of the 1958 Act.           The objects and reasons for engrafting the said provision show that  the same was done to enable the authors to file a suit for violation of the  1957 Act at the place where they reside.  Submission made at the Bar,  however, is that there may be cases which give a composite cause of action  for initiating action both under the 1957 Act as also under the 1958 Act.   Reliance, in this behalf, has been placed on a definition of  "mark" as  contained in Section 2(j) of the 1958 Act, to urge that artistic work  within  the meaning of the 1957 Act is also a ’mark’ within the meaning thereof and,  thus, different causes of action arising under both the Acts can be combined.   Reference, furthermore, has been made to Section 105 of the 1958 Act to  show that reclassification in respect of existing registration is permissible.         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  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   mattes 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.              Order II Rule 3 of the Code provides that the plaintiff may  unite in  the same suit several causes of action against the same defendant, or the  same defendants jointly.  The said order contemplates uniting of  several  causes of action in the same suit.  By necessary implication, a cause of  action for infringement of Copyright and a cause of action for infringement  of Trade Mark  or a cause of action of passing off  would be different.  Even  if one cause of action has no nexus with another, indisputably Order II Rule  3 may apply.  However, by reason of application of Order II Rule 3 of the  Code ipso facto would not confer jurisdiction upon a court which had none  so as to enable it to consider infringement of trade mark under the 1957 Act  as also the 1958 Act.         It is trite law that a judgment and order passed by the court having no  territorial jurisdiction would be nullity.          In Kiran Singh and Others vs. Chaman Paswan and Others [AIR 1954  SC 340], this Court observed : "\005It is a fundamental principle well-established that a  decree passed by a court without jurisdiction is a nullity,  and that its invalidity could be set up whenever and  wherever it is sought to be enforced or relied upon, even

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at the stage of execution and even in collateral  proceedings. A defect of jurisdiction, whether it is  pecuniary or territorial, or whether it is in respect of the  subject-matter of the action, strikes at the very authority  of the court to pass any decree, and such a defect cannot  be cured even by consent of parties\005  

A judgment or order passed by a court lacking territorial jurisdiction,  thus, would be  coram non judice.  Thus, if a district court, where the  plaintiff resides but where no cause of action arose otherwise, adjudicates a  matter relating to infringement of trade mark under the 1958 Act, its  judgment would be a nullity.   Mr. S.K. Bansal, the learned counsel appearing for the Appellants,  however, placed strong reliance on a decision of the Delhi High Court  in  M/s Jawahar Engineering Company and Others, Ghaziabad v. M/s Jawahar  Engineers Pvt. Ltd., Sri Rampur, Dist. Ahmednagar, Maharashtra [1983 \026  PTC 207], wherein the question involved for determination was as to  whether the plaint filed therein should be returned in terms of Order VII  Rule 10 of the Code.  In that case, the plaintiff had a registered trade mark  ’Javahar’ in respect of diesel oil engines whereas the defendant had applied  for registration of the trade mark ’Jawahar’ in respect of diesel oil engines  for the States of  Uttar Pradesh, Punjab, Haryana, Bihar, Rajasthan and the  Union Territories of Delhi and Chandigarh.   Although it was held that as diesel engines were not sold in Delhi, no  cause of action arose within the jurisdiction of Delhi High Court; nor the  advertisement published in a journal "Parwez" published from Ludhiana  would confer such jurisdiction.  But it was opined that having regard to the  fact that an advertisement had appeared in the Trade Marks Journal as regard  application for registration of the trade mark of the defendant therein, the  Delhi High Court would have jurisdiction in the matter.   A Letters Patent Appeal was preferred thereagainst, wherein the  Division Bench of the High Court held :         "\005Section 20 of the Code of Civil Procedure  shows that a suit like  the present  can be filed wherever  the cause of action wholly or partly arises.  The plaintiff  has prayed for an injunction regarding a threatened  breach of a registered trade mark.  The learned single  Judge held that the Delhi Court does not have jurisdiction  on the ground of any sale having been made in Delhi, but  does have jurisdiction on account of the advertisement  having appeared in the Trade Marks Journal.  The real  point which gives the Court jurisdiction is not the place  where the advertisement has appeared, but the fact that  the trade mark is sought for sale in Delhi amongst other  places.  Furthermore, when an injunction is sought, it is  not necessary that the threat should have become a reality  before the injunction and it can even be sought for a  threat that is still to materialize."               

       The said  decision has no application in the instant case for more than  one reason.  For the purpose of registration of a trade mark, an application  must be filed in the branch office of the Registrar of Trade Marks.   It is not  in dispute that under Section 5(3) of the 1958 Act, the Central Government  has issued a notification in the official gazette defining the territorial limits  within which an office of the Trade Marks Registry may exercise its  functions.  The office of the Trade Marks Registry at New Delhi exercises  jurisdiction over the States of  Haryana, Himachal Pradesh, Jammu &  Kashmir, Punjab,  Rajasthan and Uttar Pradesh and the Union Territory of  Chandigarh and National Capital Territory of Delhi.  Whereas in M/s.   Dhodha House v. S.K. Maingi, no such application has been filed,  admittedly in M/s Patel Field Marshal Industries & Ors. v. M/s P.M. Diesels  Ltd, the Delhi office has no jurisdiction as parties are residents of Rajkot and  an application was filed by the Appellant for registration of its trade mark at  Bombay.  If an objection is to be filed, the same has to be filed at Bombay.   An advertisement by itself in a journal or a paper would not confer

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jurisdiction upon a court,  as would be evident from the following  observations of this Court in Oil and Natural Gas Commission v. Utpal  Kumar Basu  and Others [(1994) 4 SCC 711] :  

"\005Therefore, broadly speaking, NICCO claims that a  part of the cause of action arose within the jurisdiction of  the Calcutta High Court because it became aware of the  advertisement in Calcutta, it submitted its bid or tender  from Calcutta and made representations demanding  justice from Calcutta on learning about the rejection of its  offer. The advertisement itself mentioned that the tenders  should be submitted to EIL at New Delhi; that those  would be scrutinised at New Delhi and that a final  decision whether or not to award the contract to the  tenderer would be taken at New Delhi. Of course, the  execution of the contract work was to be carried out at  Hazira in Gujarat. Therefore, merely because it read the  advertisement at Calcutta and submitted the offer from  Calcutta and made representations from Calcutta would  not, in our opinion, constitute facts forming an integral  part of the cause of action. So also the mere fact that it  sent fax messages from Calcutta and received a reply  thereto at Calcutta would not constitute an integral part of  the cause of action\005"  

       A cause of action will arise only when a registered trade mark is used  and not when an application is filed for registration of the trade mark.  In a  given case, an application for grant of registration certificate may or may not  be allowed.   The person in whose favour, a registration certificate has  already been granted indisputably will have an opportunity to oppose the  same by filing an application before the Registrar, who has the requisite  jurisdiction to determine the said question.  In other words, a suit may lie  where an infringement of trade mark or copyright takes place but a cause of  action for filing the suit would not arise within the jurisdiction of the court  only because  an advertisement has been issued in the Trade Marks Journal  or any other journal, notifying the factum of filing of such an application.   

       Strong reliance has also been placed on a recent decision of this Court  in Exphar SA and Another v. Eupharma Laboratories Ltd. and Another  [(2004) 3 SCC 688], wherein it was held :   "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."

       In that case an allegation of violation of copyright was made,  wherefor the jurisdiction of the court was sought to be attracted stating :

"(a) the copyright of the plaintiffs (appellants) in the  "Maloxine" carton was being infringed by the  respondents; (b) the plaintiffs (appellants) carry on  business in Delhi and one of them has a registered office  in New Delhi. It was also stated that the defendants carry  on business for profit in New Delhi within the

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jurisdiction of the High Court."

       No infringement of the trade mark as such was, thus, in question in  that case.  

In any event, the questions which have been raised herein had not  been raised in Exphar SA (supra).

It is well-settled that a decision is an authority what it decides and not  what can logically be deduced therefrom.  [See Bharat Forge Co. Ltd. v.  Utam Manohar Nakate  (2005) 2 SCC 489; M.P. Gopalakrishnan Nair and  Anr. V. State of Kerala and Ors. (JT 2005 (4) SC 436) & Haryana State  Coop. Land Development Bank v. Neelam (2005) 5 SCC 91].

In Premier Distilleries Pvt. Ltd. v. Shashi Distilleries [2001 PTC 907  (Mad)], a Division Bench of the Madras High Court in a matter involving a  passing off  action,  was of the view :

"The cause of action in a suit for passing off, on  the other hand and as already observed, has nothing at all  to do with the location of the Registrar’s office or the  factum of applying or not applying for registration.  It is  wholly unnecessary for the plaintiff to prove that he had  applied for registration.  The fact that the plaintiff had not  applied for registration will not improve the case of the  defendant either.  Filing of an application for registration  of a trade mark, therefore, does not constitute a part of  cause of action where the suit is one for passing off."

It was further observed :

       "The argument advanced that registration if  granted would date back to the date of application and  that the plaintiff would have the right to seek amendment  of the plaint to seek relief on the ground of infringement  as well, is wholly irrelevant so far as the cause of action  for bringing a suit for passing off is concerned.  While it  may be convenient to the plaintiff to institute a suit in a  court where he may later on be able to bring a suit for  infringement of the trade mark, that convenience of the  plaintiff is in no way  relevant for deciding as to whether  a cause of action for filing a suit for passing off can be  said to have arisen in a place where, the deceit alleged to  have been practised by the defendant had in fact, not  been practised within the jurisdiction of the court in  which the suit is brought."

The views expressed therein have our concurrence.   

[See also Gold Seal Engineering Product Pvt. Ltd. & Ors. v.  Hindusthan Manufacturers and Ors.  AIR 1992 (Bombay) 144]  The Allahabad High Court in the impugned judgment held :

"\005In the present case a bare perusal of the plaint would  show that the suit is based upon alleged infringement of  registered trade mark or relating to any right in a  registered trade mark or for passing off by the defendant  of any trade mark which is identical with or deceptively  similar to the plaintiff’s trade mark.  Such a suit cannot  be entertained by the Court at Ghaziabad in view of  Section 105 of the Trade and Merchandise Marks Act.   The mere fact that the Court may have jurisdiction to

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entertain the suit with respect to a cause of action under  the Copyright Act under Section 62 of the Act can be of  no avail.  I am therefore of the opinion that the Court at  Ghaziabad has no territorial jurisdiction to try the suit."   

In the event, the averments in the plaint disclose a cause of action  under the Copyright Act, indisputably, the same would survive but if the  cause of action disclosed is confined only to infringement of Trade and  Merchandise  Act, or of passing off an action, the suit would not be  maintainable.    

The Delhi High Court in its judgment placed strong reliance upon a  judgment of the same court in Tata Oil Mills Co. Ltd. v. Reward Soap  Works [AIR 1983 Delhi 286], wherein it was held that a composite suit  based on infringement of trade mark, copyright, passing off and for rendition  of accounts of profits, seeking to restrain the defendants from infringing its  trade mark and wrapper claiming the same to be identical with or  deceptively similar to the wrapper of the plaintiff  mark, is maintainable,  holding :

       "The comparative scope of a copyright and trade  mark registration are different, even though where a  design on a wrapper is registered under the Copyright  Act, there is, to an extent, an overlapping between the  two remedies.  Some controversy is no doubt possible if  the mere jurisdiction of the Court to entertain an action  for infringement of copyright would also give the court  the necessary jurisdiction to deal with the corresponding  infringement of trade mark, where both constitute part of  a composite suit.  In view of the undoubted jurisdiction  of this court in relation to the infringement of copyright ,  court would be justified in granting injunction of both the  trade mark and the copyright at this stage of the  proceedings, particularly, where there is a specific  averment in the plaint, whatever it may be worth, that the  plaintiff has been selling the goods, inter alia, within  territorial jurisdiction of this Court."      

                It was held that although in Dodha House (supra) Tata Oil Mills  (supra) was noticed but had not been distinguished on cogent grounds, the  former was not followed.  

       The Delhi High Court, as noticed hereinbefore, however, did not  advert to the third contention raised therein saying that the question as to  whether the defendants had been selling its product on a commercial scale at  Delhi was a question of fact and, thus, was required to be properly  determined in  case evidence is led by the parties.

       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?   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.    The 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

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to be a conscious action on the part of the Parliament.  The intention of the  Parliament in not providing for an additional forum in relation to the  violation of the 1958 Act is, therefore, clear and explicit.  The 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 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.                    In Dhodha House (supra), admittedly the plaintiff-Appellant neither  resided at Ghaziabad nor carried on any business at the place of residence of  the respondent.   In Patel Field Marshal (supra), the registered office of the  plaintiff-firm was at Rajkot.  Ordinarily, the residence of a company would  be where registered office is [See Morgan Stanley Mutual Fund Vs. Kartick  Das (1994) 4 SCC 225].

       The expression ’carries on business’ and the expression  ’personally  works for gain’ connotes two different meanings.  For the purpose of  carrying on business only presence of a man at a place is not necessary.   Such business may be carried at a place through an agent or a manager or  through a servant. The owner may not event visit that place.  The phrase  ’carries on business" at a certain place would, therefore, mean having an  interest in a business at that place, a voice in what is done, a share in the gain  or loss and some control  thereover.  The expression is much wider than  what the expression in normal parlance connotes, because of the ambit of a  civil action within the meaning of section 9 of the Code.  But it is necessary  that the following three conditions should be satisfied, namely :-

"(1)    The agent must be a special agent who attends  exclusively to the business of the principal and carries it  on in the name of the principal and not a general agent  who does business for any one that pays him.  Thus, a  trader in the mufassil who habitually sends grain to  Madras for sale by a firm of commission agents who  have an independent business of selling goods for others  on commission, cannot be said to "carry on business" in  Madras.  So a firm in England, carrying on business in  the name of A.B. & Co., which employs upon the usual  terms a Bombay firm carrying on business in the name of  C.D. & Co., to act as the English firm’s commission  agents in Bombay, does not "carry on business" in  Bombay so as to render itself liable to be sued in  Bombay.

       (2)     The person acting as agent must be an agent  in the strict sense of the term.  The manager of a joint  Hindu family is not an "agent" within the meaning of this  condition.  

(3) To constitute  "carrying on business" at a  certain place, the essential part of the business must take  place in that place.  Therefore, a retail dealer who sells  goods in the mufassil  cannot be said to "carry on  business" in Bombay merely because he has an agent in  Bombay to import and purchase his stock for him.  He  cannot be said to carry on business in Bombay unless his  agent made sales there on his behalf.  A Calcutta firm  that employs an agent at Amritsar who has no power to  receive money or to enter into contracts, but only collects  orders which are forwarded to and dealt with in Calcutta,  cannot be said to do business in Amritsar.  But a Bombay  firm that has a branch office at Amritsar, where orders

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are received subject to confirmation by the head office at  Bombay, and where money is paid and disbursed, is  carrying on business at Amritsar and is liable to be sued  at Amritsar.  Similarly a Life Assurance Company which  carries on business in Bombay and employs an agent at  Madras who acts merely as a Post Office forwarding  proposals and sending moneys cannot be said to do  business in Madras.  Where a contract of insurance was  made at place A and the insurance amount was also  payable there, a suit filed at place B where the insurance  Co. had a branch office was held not maintainable.   Where the plaintiff instituted a suit at Kozhikode alleging  that its account with the defendant Bank at its Calcutta  branch had been wrongly debited and it was claimed that  that court had jurisdiction as the defendant had a branch  there, it was held that the existence of a branch was not  part of the  cause of action and that the Kozhikode Court  therefore had no jurisdiction.  But when a company  through incorporated outside India gets itself registered  in India and does business in a place in India through its  agent authorized to accept insurance proposals, and to  pay claims, and to do other business incidental to the  work of agency, the company carries on business at the  place of business in India."

[See Mulla on the Code of Civil Procedure (Act V of  1908) - Fifteenth Edition - Volume I, Pages 246-247.]

            A corporation in view of Explanation appended to Section 20 of the  Code would be deemed to be carrying on business inter alia at a place where  it has a subordinate office.  Only because, its goods are being sold at a place  would thus evidently not mean that it carries a business at that place.              In Dhodha House (supra), the High Court has positively arrived at a  finding that the infringement complained of primarily is that of  the 1958  Act and not under Copyright Act.

       In Patel Field Marshal (supra) again 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 Division  Bench of the High Court, as has been noticed hereinbefore, did not advert to  the issue as to whether the defendant had been selling its product in Delhi on  commercial scale or not.  It is, therefore, not necessary for us also to dilate  further on the said question.  We have furthermore noticed hereinbefore that  the advertisement appearing in a journal or newspapers by itself would not  confer any jurisdiction on the court, if it otherwise did not have any.     

       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 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.  

       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.  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.

       It is not in dispute before us that the application for registration of the  trade mark was to be filed either at Bombay or at Ahmedabad.  The  objections thereto by the plaintiff were also required to be filed at the said

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places.  The jurisdiction of the Delhi court could not have been invoked only  on the ground that advertisement in respect thereof was published in the  Trade Marks Journal.  Section 62 of the 1957 Act, therefore, will have no  application. The plaintiff has no branch office at Delhi. Its manufacturing  facilities are not available at Delhi.  Both its trade mark and copyright are  also not registered at Delhi.

       Our attention has been drawn to the provisions of Section 45 of the  Trade Marks Act; sub-section 2(m) whereof shows that the marks includes a  device, brand, brand, heading , label, ticket, name, signature, word, letter,  numeral, shape of goods, packaging or combination of colours or any  combination thereof. It may be so that in a given case if such label is  registered, a violation thereof may give rise to cause of action under the said  Act; but only because in a given case, the activities on the part of the  defendant may give rise to a cause of action both under the 1958 Act as also  under the 1957 Act, the same would not mean, irrespective of the nature of  violation, the plaintiff would be entitled to invoke the jurisdiction of the  court in terms of sub-section (2) of Section 62 of the 1957 Act.                          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.   

       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.   

       In Patel Field Marsahal  (supra), however,  we may notice that a  subsequent development has taken place, namely, after the remand, a learned  Single Judge of the Delhi High Court is said to have granted an order of  injunction in favour of the plaintiff-respondent and the matter is pending  before the Division Bench.  As we have not expressed our views on the  merit of the matter, it is needless to mention that the Division Bench shall  proceed to determine the questions raised before it on their own merits.                

       For the reasons aforementioned, Civil Appeal No. 6248 of 1997 filed  by M/s Dhodha House is dismissed and Civil Appeal No. 16 of 1999  preferred by M/s Patel Field Marshal is allowed.   The parties shall pay and  bear their own costs. 27392