ULTRATECH CEMENT LIMITED Vs. DALMIA CEMENT BHARAT LIMITED

JUDGEMENT

(1.) The Defendant has filed the present Notice of Motion asserting that the Plaint is liable to be rejected as "barred by law'' under Order VII Rule 11 (2) of the Code of Civil Procedure, 1908 (''Code'').

(2.) It is submitted on behalf of the Defendant that the present Suit is for infringement and passing off. Leave under Clause XIV of the Letters Patent has not been granted till date. Hence, in law, there is presently no action for passing off. The action before this Court is for infringement alone. It is submitted that jurisdiction for the action for infringement has not been invoked with reference to the 'cause of action'. In fact, it is an admitted position that no part of the cause of action (infringement or passing off) has arisen within the jurisdiction of this Court. The Plaintiffs have sought to sustain jurisdiction, in so far as the plea of infringement is concerned, solely by relying upon Section 134 of the Trademarks Act, 1999 ("the Act"). If this requirement is not met, the action must forthwith fail.

(3.) It is further submitted on behalf of the Defendant that admittedly it is the Plaintiff No. 2 who is the owner of the marks which are allegedly infringed by the Defendant and that the Plaintiff No.1 is a licensee/licensed user of the marks. Relying on Sections 28, 52 and 53 of the Act, it is submitted that the said Sections make it absolutely clear that only a registered proprietor or a registered user can institute/maintain an action for infringement. It is submitted that Section 53 of the Act in fact prohibits a permitted user (example Licensee) from instituting a suit for infringement. It is submitted that therefore the expression ''person instituting the suit'' means and must mean "a person, who under the Act, is entitled to institute a suit". The person instituting the suit must either be a registered proprietor or a registered user. It cannot include a permitted user (licensee). The Plaintiff No.1 therefore cannot be joined in this Suit. The joinder of Plaintiff No.1 is barred/prohibited in law.