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

The Bombay High Court has observed that Section 134(2) of the Trademarks Act, 1999 does not bar a plaintiff from seeking the Court's leave to combine the cause of action of 'passing off' with the suit for infringement under Clause XIV of the Letters Patent.

Bajaj Electricals Limited (the petitioner) sought the Court's leave under Clause XIV of the Letters Patent Act to combine its cause of action for passing off with its claim of trademark infringement against the respondents. Bajaj operates its business in Mumbai, while the respondents conduct their business outside of Mumbai, leading to no cause of action for passing off arising within the jurisdiction of the High Court.

Bajaj contended that since the High Court has jurisdiction regarding the infringement, it can combine the claim for passing off under Clause XIV of the Letters Patent to avoid multiplicity of proceedings. Conversely, the respondents argued that the cause of action for passing off outside the Court's jurisdiction cannot be joined under Clause XIV of the Letters Patent, as it would violate the provisions of the Trademarks Act. They asserted that the legal fiction under Section 134(2) of the Trademarks Act does not extend to cases of passing off.

For context, Section 134(2) of the Trademarks Act enables the plaintiff to file a suit in the jurisdiction where they "actually and voluntarily reside, carry on business, or personally work for gain," instead of the jurisdiction where the defendant resides or where the cause of action has arisen. However, this provision is restricted to infringement of trademarks or relating to any right in a registered trademark. The respondents contended that Section 134(2) cannot include cases of passing off.

Justice R.I. Chagla noted that Clause XIV of the Letters Patent empowers the court to join causes of action, even when it has jurisdiction only over one such cause. He observed, "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."

The Court held that Section 134(2) of the Trademarks Act is an enabling provision that allows the plaintiff to file a suit in a court other than one having jurisdiction under Section 20 of the Code of Civil Procedure (CPC), which pertains to suits being instituted where the defendant normally resides or carries out business, read with Clause XII of the Letters Patent.

It ruled that Section 134(2) does not bar the plaintiff from filing a petition to join the cause of action under Clause XIV of the Letters Patent, which empowers the court to hear certain suits outside its original territorial jurisdiction.

The Court observed that if the legislature intended for Clause XIV not to be applicable during the enactment of the Trademarks Act, it would have included a specific provision to that effect in Section 134. Consequently, the Court concluded that the causes of action for 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 that 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 that does not fall within Section 134(2) of the Act, leave under Clause XIV of the Letters Patent would ordinarily be granted by this Court to join that cause of action with the cause of action of infringement over which it has jurisdiction, in order to prevent multiplicity of proceedings.”

The Court noted that the defendants would not face hardships by defending both the infringement and passing off claims. It remarked that the issues to be considered in infringement, such as whether the mark is deceptively similar and whether it is causing confusion, would also be relevant in the case of passing off.

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