Justice Sandeep V. Marne, Bombay High Court
Place At Which Sale Occurred Determines 'Place Of Business' U/S.134 Of Trade Marks Act: Bombay High Court
|The Bombay High Court made such observations while considering a suit instituted by the plaintiff for infringement of its registered trademark ‘ARCEE’.
The Bombay High Court has held that while considering the issue of territorial jurisdiction, Section 134 of the Trade Marks Act provides for the filing of a Suit only at one place, i.e. the place where the Plaintiff resides or carries on business. The High Court noted that mere delivery of goods at the customer’s residence would not mean that the Plaintiff carries on business at the place of residence of the customer.
The High Court made such observations while considering a suit instituted by the plaintiff for infringement of its registered trademark ‘ARCEE’.
The Single Bench of Justice Sandeep V. Marne observed, “Therefore, the place at which the sale has occurred would determine Plaintiff’s place of business. Mere delivery of goods at customer’s residence would not mean that the Plaintiff carries on business at the place of residence of the customer. Similarly, invoice at page No.657 indicates that a mobile phone handset has been sold from Plaintiff’s Branch at Mulund Check Naka and purchased by a customer having address at Vikhroli. However, neither the said invoice makes it clear that the Plaintiff has any showroom within Mumbai city nor such claim is backed by any averment in the Plaint.”
Advocate Subhradeep Banerjee represented the Plaintiff, while Advocate Hiren Kamod represented the Respondent.
Factual Background
The Plaintiff, a partnership firm, has been engaged in the business of selling electronic goods through various showrooms it has set up. Plaintiff claimed that it is the registered proprietor of the mark ‘ARCEE’ and has 23 showrooms, one head office and 1 warehouse in Navi Mumbai and Raigad District. It was the Plaintiff’s case that the Defendants had opened a showroom by the name ‘ARCEEIKA’, adopting similar colour, font and type to steal Plaintiff’s business model since August 2024. Plaintiff claimed that the Defendants were selling electronic goods from their showrooms. It was in such circumstances that the Plaintiff brought in the present suit against the complaining infringement of its registered trademark and also for an action of passing off.
The second defendant had filed an application under Order VII Rule 10 of the Code of Civil Procedure, 1908, seeking the return of the Plaint on the ground that the High Court lacked territorial jurisdiction to try the Suit. The second Defendant contended that in the territorial jurisdiction of this Court, neither Plaintiff had a place of business nor had any cause of action arisen. It was the Plaintiff’s case that since a Leave Petition under Clause XIV of the Letters Patent (Bombay) was filed dealing with the issue of jurisdiction, Plaintiff was prepared to answer the objection of territorial jurisdiction without filing a formal reply to the Interim Application.
Reasoning
The Bench explained that under Section 20 of the Code of Civil Procedure, the suit can be instituted in a Court within whose jurisdiction part of the cause of action arises. It was further noticed that the provisions of Section 134 of the Trade Marks Act and Section 20 of the Code are not analogous. Section 134 of the Trade Marks Act does not confer jurisdiction on the principle of accrual of cause of action. It provides for filing of Suit only at one place i.e. the place where the Plaintiff resides or carries on business.
The Bench also held, “Thus, a Suit for infringement of trade mark can undoubtedly be filed within the territorial jurisdiction of the Court where part of cause of action has been arisen by having recourse to provisions of Section 20 of the Code.”
On the issue of whether any part of the cause of action had accrued for the Plaintiff within the territorial limits of jurisdiction of the Court, the Bench noted that the Plaint was silent on the aspect of jurisdiction. There was no averment in the entire body of the Plaint that any part of the cause of action had arisen within the territorial limits of the jurisdiction of the High Court. Referring to an invoice, the Bench noted that the same could not be used for demonstrating that the Defendants had committed any infringing or passing off act within the territorial limits of the Court. As per another invoice, the purchase had taken place in Navi Mumbai and therefore the cause of action would be in Navi Mumbai.
The Bench thus held, “As observed above, Plaintiff has neither pleaded nor demonstrated that any part of cause of action for filing of the present Suit has arisen within the limits of Mumbai city. In my view, therefore, present Suit does not satisfy the requirement under Section 134(2) of the Trade Marks Act or Section 20 of the Code. Neither the Plaintiff carries on business in Mumbai city nor any part of cause of action has arisen in Mumbai city. This Court lacks territorial jurisdiction to try and entertain the present Suit. Therefore, the Plaint in the Suit deserves to be returned under Order VII Rule 10 of the Code for being filed in the Court having jurisdiction.”
Allowing the interim application, the Bench ordered that the plaint in the suit would be returned to the Plaintiff under the provisions of Order VII Rule 10 of the Code for being presented in the Court having jurisdiction.
Cause Title: M/s. ARCEE Electronics v. M/s. ARCEEIKA (Neutral Citation: 2025:BHC-OS:13596)
Appearance
Plaintiff: Advocates Subhradeep Banerjee, Navin P. Sachanandani
Defendant: Advocates Hiren Kamod, Rakesh Sawant, Prem Khullar, Shamiyana H. & Rahul Patil, M/s. Arhat Legal