JURISDICTION IN TRADEMARKS AND COPYRIGHT CASES IN INDIA

JURISDICTION IN TRADEMARKS AND COPYRIGHT?CASES IN INDIA

A trademark is any word, symbol, sign, a phrase that helps to distinguish a product or service from others of the same kind. A trademark reflects the source and symbolizes a mark for quality and rust among the general public.

When a mark identical or similar to a? registered trademark on goods or services for which the mark is Registered, is used by an unauthorized person to create confusion and deception among the general public then it is a case of trademark infringement. So, whenever a registered trademark gets infringed, the company tries to obtain an order for injunction against the use of the impugned mark so as to keep the company’s goodwill and reputation from being tarnished by the sale of similar or deceptive goods/services with the same trademark.

Jurisdiction :-

According to section 20 of the code of civil procedure, 1908, every suit shall be instituted in Court within the local limits of whose jurisdiction- a) the defendant at the time of the commencement of the suit, actually or voluntarily resides or carries on business, or personally works for gain, or b) any of the defendants at the time of the commencement of the suit, actually and voluntarily resides or carries on business, or personally works for gain or the cause of action, wholly or in part, arises.

This means that the plaintiff can institute a case of trademark infringement in a District Court within whose local limits the defendant resides or carries his business and/or where the cause of action occurred, whether wholly or partly.?

Aside from section 20 of the CPC, section 134 of the Trademarks Act of 1999, and section 64 of the Copyrights Act of 1957 states the jurisdiction of the Court for suits for infringement.? Focusing on trademark, as per section 134 of the Act, in case of infringement of a registered trademark; or relating to any right in a registered trademark; or for passing off arising out of the use by the defendant of any trademark which is identical with or deceptively similar to the plaintiff’s trademark whether registered or unregistered, the suit should not be instituted in any court inferior to that of District Court having jurisdiction to try the suit. Sub-section 2 of the section states that the District Court for the purpose of sub-section (1) includes District Court within the local limits of whose jurisdiction the person instituting the suit or proceeding, or, where there is more than one such person any of them, actually and voluntarily resides or carries on business or personally works for gains.?

In the case of Indian Performing Rights Society v. Sanjay Dalia & Anr[1], the Supreme Court of India had held that suits against infringement of trademark and copyright can be instituted only in the District Court that exercises jurisdiction over the place where the cause of action arises, in the case where the plaintiff instituting the suit has an office in the jurisdiction.

The Supreme Court observed that the provisions of section 134 of the Trademarks Act and section 64 of the Copyright Act give the plaintiff an additional forum to institute a suit and not enable the plaintiff to file a suit at a different place though he ordinarily resides in the place or has the principal office in the place where the cause of action has arisen. In the Court’s opinion, the above-mentioned clauses seek to remove the obstruction that the plaintiff has to institute the suit where the defendant resides or works for gain.

The court discussed various decisions including People’s Insurance Co. v. Benoy Bhushan[2], where it was observed that a company may have subordinate or branch offices in fifty different jurisdictions and it may be sued in any one of such jurisdictions in respect of a cause of action arising there.

According to the Apex Court, the plaintiff can also institute a suit at a place where he is residing, carrying on his business, or works for gains not including the place where the cause of action occurred which did not arise at his place of residing or carrying on his business. But it has also alluded that the plaintiff should not ignore the place of cause of action and cause inconvenience to the defendant. In short, the insertion of the provisions of the Copyright Act and the Trademarks Act is at the convenience of the plaintiff who should not be discouraged from enforcing his rights only because the defendant resides at a far-off place, the defendant also should not be inconvenienced by abuse of the provisions by the Plaintiff.??

Justice Prathiba M. Singh of Delhi High Court in 2018 gave a judgment for Burger King Corporation v. Techchand Shewakramani & Ors.[3], rejecting the application by the defendants to dismiss for want of territorial jurisdiction at the threshold itself vide her order.? The suit was filed in Delhi seeking permanent injunction restraining infringement, passing off, damages, and related relief in respect of the plaintiff’s trademark ‘Burger King’. The territorial jurisdiction was challenged in front of the court by the defendants on the ground that the plaint fails to aver the Mumbai-based Defendants as residing or working for gain in Delhi or as operating a single outlet under the ‘Burger King’ brand in Delhi. Justice Pratibha Singh thereby clarified that a suit for a trademark infringement or passing off can be brought before a court having jurisdiction a) where the plaintiff resides/ carries on business, b) where the defendant resides/carries on business; or c) where the cause of action arises.??

In this case, the plaintiff had invoked section 20 of the CPC to file their suit before the Delhi High Court. Whereas, the defendants had contested the maintainability of Burger King’s plaint contending that the Delhi High Court did not have the jurisdiction to entrain the suit, given Section 134(2) of the Trademarks Act. On examining the various precedents on the issue, the Court had concluded that either Section 20 of CPC or Section 134 can be invoked when it comes to deciding the form for initiating a trademark infringement suit.??

As noted in the judgment, “thus, the provisions of Section 134 of the Trademarks Act and Section 62 of the Copyright Act are in addition to and not in exclusion of Section 20 of the CPC. If the plaintiff can make out a cause of action within the territorial jurisdiction of this Court under Section 20, no reference needs to be made to Section 134.”

[1] Civil Appeal Nos. 10643-10644 of 2010

[2] AIR 1943 Cal. 190

[3] CS (COMM) 122/2017 in CS (COMM) 919/2016

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[1] 2009 SCC OnLine Del 3275