2008] Dabur India Ltd. v. K.R.

Industries 0215
(S.B. Sinha, J.)
word, a hybrid between the name of the city Tokyo and the name of the
a company of origin Shibaura.
It is also in my opinion beyond dispute that the mark “TOSIBA” is so
similar to the mark “TOSHIBA” as to give the Appellant an indisputable
right to call upon the Respondent to cease to use that mark in relation
to goods for which the Appellant is registered, in case such registration
can be maintained by the Appellant on the register.
b
56. There was delay on the part of the Respondent in filing the application
under Section 46 of the Act. The delay, if any, on the part of the Appellant did
not cause any harm to the Respondent. It had been using the word “TOSIBA”
for such a long time without in any way being obstructed to do so by reason
of an Order of the Court or otherwise.
c
57. In the matter of The Trade Mark No. 70,078 of Wright, Crossley, and Co.
[1898) 15 RPC 131], it was stated:
I think, notwithstanding what was said in that case, and has been said
in other cases dealing with Trade Marks, that an Applicant in order to
show that he is a person aggrieved, must show that in some possible
d way he may be damaged or injured if the Trade Mark is allowed to stand;
and by “possible” I mean possible in a practical sense, and not merely
in a fantastic view.
58. It is this aspect of the matter which has been missed by the learned
Single Judge and the Division Bench of the Calcutta High Court.
e 59. We, therefore, are of the opinion that on this short ground, the impugned
Judgment cannot be sustained. It is set aside accordingly. We would, however,
request the Delhi High Court to consider the desirability of disposing of the
suit filed by the Appellant against the Respondent as expeditiously as possible.
The appeal is allowed. No costs.
f

MIPR 2008(2) 0215*

IN THE SUPREME COURT OF INDIA
Dabur India Ltd.
g
v.
K.R. Industries

CIVIL APPEAL NO. 3637 OF 2008 (ARISING OUT OF SLP (C) NO. 20941 OF
2006)
h DECIDED ON: 16.05.2008
Judges
S.B. Sinha and Lokeshwar Singh Panta, JJ.
Intellectual Property Rights — Jurisdiction — Composite suit —
Maintainability — Infringement of Copy Right — Passing off — Section
i 25C, 55(1), 62(2) of the Copyright Act, 1957 — Trade Marks Act, 1958 —
Order VII Rule 7 of the Code of Civil Procedure, 1908 — — Appellant filed
* MANU/SC/2244/2008
0216 Manupatra Intellectual Property Reports (MIPR) [Vol. 2

a suit before the Delhi High Court against the Respondent for
infringement of Copyright and for Passing off — Appellant alleged that a
Respondent adopted identically similar colour scheme, arrangement of
features and get up — Respondent filed an application under Order VII
Rule 7 of the CPC contending that the Delhi High Court does not have
jurisdiction as Respondent resides in Andhra Pradesh — Single Judge
allowed the application of the Respondent — Intra Court appeal dismissed
by the Division Bench — Hence, the present appeal — Appellant b
contended that High Court failed to take into consideration effect of
consolidated, suit under the Copyright Act of 1957 as also the Trade
Mark Act of 1958 — Respondent contended that cause of action for
infringement were distinct and separate under both the act — Whether
the Appellant can combine the two causes of action one under the c
Copyright Act and the Trade Marks Act in a situation where the Court
has the jurisdiction in so far as cause of action under Copyright Act but
has no territorial jurisdiction to entertain the cause of action relating
to Act of 1958 — Held, Court may grant an order of injunction even in a
passing off action — Where the Court has the jurisdiction/power to
adjudicate, it will necessarily have the incidental power therefor — Power d
conferred by law within the meaning of Section 55(1) 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 the jurisdiction
of the Court — For exercising such jurisdiction, the provisions of the e
Code would be applicable — Court 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 — By virtue of Order II, Rule 3
a composite suit would not entitle a Court to entertain a suit in respect
whereof it has no jurisdiction, territorial or otherwise — A composite f
suit within the provisions of the 1957 Act would mean the suit which is
founded on infringement of a copyright and wherein the incidental power
of the Court is required to be invoked — Two suits having different
causes of actions cannot be clubbed together as a composite suit —
Costs imposed — Appeal dismissed
g
Facts
The Respondent is said to have infringed the copyright of the Plaintiffs by using
an identical colour scheme lay out, arrangement of features and get up as that
of the Appellant. A suit was filed by the Appellant against the Respondent in the
Delhi High Court. Respondent filed an application under Order 7, Rule 11 of the h
Code of Civil Procedure, 1908 contending that as the Defendant is resident of
Andhra Pradesh, the Delhi High Court had no jurisdiction. A learned Single
Judge of the High Court accepted the contention of the Respondent. Division
Bench dismissed the Intra Court appeal. Hence, the present appeal.
Held i
[1] 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,
 2008] Dabur India Ltd. v. K.R. Industries 0217
(S.B. Sinha, J.)
damages, accounts and otherwise as are or may be conferred by law for the
a 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
b 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
c 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 supplemental proceeding e.g. Section 94 of the
Code. [p. 0225, para 23 i]
[2] Thus, whereas an incidental power is inherent in the Court, a
supplemental power may also be exercised, keeping in view the ultimate relief
d
which may be granted by it. [p. 0226, para 24 d]
[3] 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
e determine 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.[p. 0226, para 25 e]
[4] 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
f 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. [p. 0227, para 28 d]
[5] 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
g 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
h 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. [p. 0227, para 29 g]
Cases referred to
Dhodha House v. S.K. Maingi MANU/SC/2524/2005: (2006) 9 SCC 41: AIR
i 2006 SC 730: 2006 (1) ALD 138 (SC): 2006 (1) AWC 864 (SC): 2006 (1) BLJR
29: JT 2006 (1) SC 123: (2006) 1 MLJ 36 (SC): 2006 (32) PTC1 (SC): RLW
2006 (1) SC 543 (discussed) [p. 0220, para 8 f]
0218 Manupatra Intellectual Property Reports (MIPR) [Vol. 2

Exphar Sa and Anr. v. Eupharma Laboratories Ltd. and Anr. MANU/SC/0148/

2004: (2004) 3 SCC 688: AIR 2004 SC 1682: 2004 (2) AWC 1515 (SC): 2004 a
(73) DRJ 663: JT 2004 (3) SC 1: (2004) 2 MLJ 156 (SC): 2004 (28) PTC 251
(SC): 2004 (2) SCALE 589 (distinguished) [p. 0222, para 10 b]
Hindustan Lever Ltd. v. Ashok Vishnu Kate MANU/SC/0077/1996: (1995) 6
SCC 326: AIR 1996 SC 285: [1995 (71) FLR 1040]: JT 1995 (6) SC 625: 1995
LablC 2714: (1996) I LLJ 899 SC: 1995 (5) SCALE 400: [1995] Supp 3 SCR
b
702 (discussed) [p. 0226, para 24 d]
P.M. Diesels Ltd. v. M/s. Patel Field Marshal MANU/DE/0423/1998: AIR 1998
Delhi 225: 1998 (45) DRJ 255 (discussed) [p. 0224, para 19 i]
Sakiri Vasu v. State of U.P. and Ors. MANU/SC/8179/2007: (2008) 2 SCC
409: AIR 2008 SC 907: 2008 (1) KLT 724 (SC): 2008 (1) MPHT429 (SC): 2008
(1) OLR (SC) 105: RLW 2007 (1) SC 136 (discussed) [p. 0226, para 24 c] c
State of Punjab and Anr. v. Devans Modern Brewaries Ltd. and Anr. MANU/
SC/0961/2003: (2004) 11 SCC 26: JT 2003 (10) SC 485: 2003 (10) SCALE
202 (mentioned) [p. 0226, para 23 c]
Surendra Kumar Maingi v. M/s. Dodha House MANU/UP/0472/1997: AIR 1998
Allahabad 43: 1998 (1) ArbLR 174 (All) (mentioned) [p. 0224, para 19 i] d
Legislations referred to
Code of Civil Procedure, 1908
Order II, Rule 2 [p. 0224, para 16 e]
Order II, Rule 3 [p. 0222, para 12 d]
Order VII, Rule 7 [p. 0226, para 23 a]
e
Order 7, Rule 11 [p. 0220, para 6 d]
Section 20 [p. 0227, para 26 a]
Section 94 [p. 226, para 23 b]
Code of Criminal Procedure, 1973
Section 125 [p. 0226, para 24 d]
Copyright Act, 1957 f
Section 25C [p. 0219, para 4 g]
Section 55 [p. 0222, para 10 b]
Section 55(1) [p. 0222, para 13 e]
Section 62(1) [p. 0221, para 9 c]
Section 62(2) [p. 0221, para 9 b] g
Trade and Merchandise Marks Act, 1958
Section 27(2) [p. 0222, para 13 h]
Section 106(2) [p. 0223, para 13 a]
Section 134 [p. 0222, para 12 d]
Section 134(2) [p. 0221, para 9 h] h
Trade Marks Act, 1999
Section 134 [p. 0223, para 14 g]
Section 134(1)(a) and (b) [p. 0223, para 14 i]
Section 135(1) [p. 0224, para 14 b]
i
Ratio Decidendi
“A composite suit would not entitle a Court to entertain a suit in respect
whereof it has no jurisdiction, territorial or otherwise.”
 2008] Dabur India Ltd. v. K.R. Industries 0219
(S.B. Sinha, J.)
“A composite suit within the provisions of the 1957 Act would mean the
a suit which is founded on infringement of a copyright and wherein the
incidental power of the Court is required to be invoked.”

JUDGMENT
S.B. Sinha, J.
b 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.
c 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
d the conical shape and white cap for their product which is described
hereinbelow:—
—On one column has the words “RED TOOTH POWDER” within a yellow
blurb.
—Immediately below the blurb is an oval shaped picture of a family with
a yellow background.
e
—Above these two features there is a legend within a blurb mentioning
the fact that this is a new pack.
—The column immediately next to it contain the same features in the
Devnagri script.
—A third column sets out the details including composition, weight,
f MRP and manufacturers name etc.
—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
g the meaning of Section 25C of the Copyright Act, 1957 (the 1957 Act).
Respondent is said to have been using an identical colour scheme lay out,
arrangement of features and get up as that of the Plaintiffs, the essential
features whereof are:—
—One column has the words “RED TOOTH POWDER” within a yellow
h blurb.
—A column which contains the representation of a family in an oval
shape picture.
—There is a similar representation in the Devnagri script in another
column.
i —The details of the product are set out in another column.
—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.
0220 Manupatra Intellectual Property Reports (MIPR) [Vol. 2

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 a
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
b
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, their
servants and agents, representatives, dealers and all others acting for c
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
d
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.
e
7. By reason of the impugned Judgment and Order dated, 22 nd May, 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 1 [(2006) 9 SCC 41]. It f
was stated:
The learned Single Judge has also held, that so far as the aforesaid
relief relating to passing off is 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 g
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 h
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.

i
1 Ed.: MANU/SC/2524/2005: AIR 2006 SC 730: 2006 (1) ALD 138 (SC): 2006 (1)
AWC 864 (SC): 2006 (1) BLJR 29: JT 2006 (1) SC 123: (2006) 1 MLJ 36 (SC): 2006
(32) PTC1 (SC): RLW 2006 (1) SC 543
0222 Manupatra Intellectual Property Reports (MIPR) [Vol. 2

are that the Plaintiff must actually and voluntarily reside to carry on
business or personally work for gain. a
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 b
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 and Anr. v. Eupharma Laboratories Ltd. and Anr. 2
[(2004) 3 SCC 688].
11. Mr. Shailen Bhatia, learned Counsel appearing on behalf of
c
the Respondent, on the other hand, would submit that this Court in
Dhondha 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 d
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 e
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
f
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) xxx xxx xxx
(2) For the purpose of Sub-section (1), a “district Court having
jurisdiction” shall, notwithstanding anything contained in the Code g
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 h
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) xxx xxx xxx
i
2 Ed.: MANU/SC/0148/2004: AIR 2004 SC 1682: 2004 (2) AWC 1515 (SC): 2004
(73) DRJ 663: JT 2004 (3) SC 1: (2004) 2 MLJ 156 (SC): 2004 (28) PTC 251 (SC):
2004 (2) SCALE 589
 2008] Dabur India Ltd. v. K.R. Industries 0223
(S.B. Sinha, J.)
(2) Nothing in this Act shall be deemed to affect rights of action against
a 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) xxx xxx xxx
b (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:
(a) where in a suit for infringement of a trade mark, the infringement
complained of is in relation to a certification trade mark; or
c (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
d 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
e (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
f
the Plaintiffs trade mark, he forthwith ceased to use the trade
mark complained of.
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
g 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
h 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
i 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
0224 Manupatra Intellectual Property Reports (MIPR) [Vol. 2

whose jurisdiction, at the time of the institution of the suit or other

proceeding, the person instituting the suit or proceeding, or, where there a
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.
Sub-section (1) of Section 135 of the 1999 Act reads: b
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-
c
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
d
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 said jurisdiction, e
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 f
matter, namely, joining of two causes of action under trade mark 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).
g
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. h
19. In Dhodha House (supra) this Court was concerned with the correctness
of Judgments of the Allahabad High Court in Surendra Kumar Maingi v. M/s.
Dodha House 3 [AIR 1998 Allahabad 43] and the decision of the Delhi High
Court in P.M. Diesels Ltd. v. M/s. Patel Field Marshal 4 [AIR 1998 Delhi 225]
i
3 Ed.: MANU/UP/0472/1997: 1998 (1) ArbLR 174 (All)
4 Ed.: MANU/DE/0423/1998: 1998 (45) DRJ 255
 2008] Dabur India Ltd. v. K.R. Industries 0225
(S.B. Sinha, J.)
20. It was clearly held, that a Judgment passed by a Court having no territorial
a 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:
b
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
c 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
d
providing for an additional forum in relation to the violation of the 1958
Act is, therefore, clear and explicit.
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
e 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
f 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
g
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.
h 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,
i 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,
0226 Manupatra Intellectual Property Reports (MIPR) [Vol. 2

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 a
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 b
that where the Court has the jurisdiction/power to adjudicate, it will necessarily
have the incidental power therefore. It may, however, be different if the Court
may have exercised a power which is not provided for as a supplemental
proceeding e.g. Section 94 of the Code. {[See State of Punjab and Anr. v. Devans
Modern Brewaries Ltd. and Anr.5 [(2004) 11 SCC 26]}. c
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
Ors. 6 [(2008) 2 SCC 409] held, that the Magistrate will have power to grant
interim maintenance, although no such provision existed in Section 125 of
d
the Code of Criminal Procedure, 1973. Similarly in Hindustan Lever Ltd. v.
Ashok Vishnu Kate 7 [(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 e
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 the jurisdiction of the Court. For exercising such f
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
g
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 h
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

5 Ed.: MANU/SC/0961/2003: JT 2003 (10) SC 485: 2003 (10) SCALE 202

6 Ed.: MANU/SC/8179/2007: AIR 2008 SC 907: 2008 (1) KLT 724 (SC): 2008 (1)
MPHT429 (SC): 2008 (1) OLR (SC) 105: RLW 2007 (1) SC 136 i
7 Ed.: MANU/SC/0077/1996: AIR 1996 SC 285: [1995 (71) FLR 1040]: JT 1995 (6)
SC 625: 1995 LablC 2714: (1996) I LLJ 899 SC: 1995 (5) SCALE 400: [1995] Supp
3 SCR 702
 2008] Dabur India Ltd. v. K.R. Industries 0227
(S.B. Sinha, J.)
their doing so. Section 62(2) cannot be read as limiting the jurisdiction
a 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.
b
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
c 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,
d 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
e
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.
51. The Plaintiff was not a resident of Delhi. It has not been able to
f 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.
g
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
h (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
i of actions can be clubbed together as a composite suit.
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.