Section 134(2) Of Trademarks Act Does Not Bar Applicability Of Clause XIV Of Letters Patent: Bombay High Court

Background

Bajaj Electricals Limited (petitioner) sought leave of the Court under Clause XIV of the Letters Patent Act to combine the cause of action of passing off with the cause of action of infringement of trademark against the respondents.

Bajaj is carrying its business in Mumbai, whereas the respondents are carrying their business outside Mumbai. No cause of action for passing off arose within the jurisdiction of the High Court.

Bajaj contended that as the High Court has jurisdiction with respect of infringement, it can combine the claim for passing off under Clause XIV of the Letters Patent to avoid multiplicity of proceedings.

On the other hand, the respondents contended that the cause of action for passing off outside the Court's jurisdiction cannot be joined under Clause XIV of Letters Patent as it would violate the provisions of the Trademarks Act. The respondents argued that the legal fiction under Section 134(2) of the Trademarks Act does not extend to the cases of passing off.

For context, Section 134(2) of the Trademarks Act enables the plaintiff to file a suit where they 'actually and voluntarily resides or carries on business or personally works for gain', instead of filing a suit where the defendant resides or the cause of action has arisen. However, this is restricted to infringement of trademark or relating to any right in a registered trademark.

The respondents thus contended that the Section 134(2) cannot include cases of passing off.

No bar under Clause XIV of the Letters Patent to combine passing off suits

A single judge bench of Justice R.I. Chagla noted that Clause XIV of the Letters Patent empowers the court to join the cause of actions, even when it has jurisdiction only over one such cause of action.

“Thus, Clause XIV of the Letters Patent empowers the Court having jurisdiction over one cause of action and not having jurisdiction over another cause of action to join that other cause of action by granting leave.”

It stated that Section 134(2) of the Trademarks Act is an enabling provision which allows the plaintiff to file the suit in a court other than a court having jurisdiction under Section 20 of CPC (suits to be instituted where defendant normally resides or carries out business) read with Clause XII of the Letters Patent.

It held that Section 134(2) of the Trademarks Act does not bar the plaintiff from filing a petition to join the cause of action under Clause XIV of the Letter Patent (court empowered to hear certain suits outside original territorial jurisdiction).

It observed that if the legislature had intended that Clause XIV should not be resorted during the enactment of the Trademarks Act, it would have made a provision to that effect in Section 134.

The Court thus said that the cause of action of passing off and infringement can be joined together.

“There is no bar to the Plaintiff from filing a Petition under Clause XIV of the Letters Patent to join the cause of action which falls outside the jurisdiction with the cause of action over which the Court has jurisdiction by virtue of the enabling provision i.e. Section 134(2). Thus, for a cause of action for passing off which does not fall within Section 134(2) of the Act, leave under Clause XIV of the Letters Patent would ordinarily granted by this Court to join that cause of action with the cause of action of infringement over which it has jurisdiction under Clause XIV in order to prevent multiplicity of proceedings.”

The Court observed that there would be no hardships caused to the defendants if they were required to defend the claim for infringement as well as passing off. It noted that the issues required to be considered in infringement i.e., whether the mark is deceptively similar and whether the mark is causing confusion, will also require consideration in the case of passing off.

The Court thus granted the leave sought by the petitioner under Clause XIV of the Letters Patent to avoid multiplicity of proceedings.

Case title: Bajaj Electricals Limited vs. Electronics Mart India Limited & Ors. (Leave Petition No. 132 of 2020 In Commercial IPR Suit No. 178 of 2022)