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Years 2015 and 2016 have been very important in terms of what they have offered to bring clarity on the jurisdiction where suits/ civil proceedings related to Trademark and Copyright can be instituted. IIPRD has written one article discussing some of these cases. Intent of the instant article is not to discuss facts of those cases again but to understand the latest position on the applicable jurisdiction for Trademark and Copyright disputes.
Section 62 of the Copyright Act, 1957 (hereinafter referred to as section 62), Section 134 of the Trademark Act, 1999 (hereinafter referred to as section 134) and section 20 of Code of Civil Procedure (CPC), (hereinafter referred to as section 20) 1908 govern the applicable jurisdiction.
These sections have been discussed below:
Jurisdiction of court over matters arising under this Chapter. —
(1) Every suit or other civil proceeding arising under this Chapter in respect of the infringement of copyright in any work or the infringement of any other right conferred by this Act shall be instituted in the district court having jurisdiction.
(2) For the purpose of sub-section (1), a “district 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 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 resides or carries on business or personally works for gain.
P.S. – (Emphasis added)
Suit for infringement, etc., to be instituted before District 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 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 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 whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there 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.
P.S. – (Emphasis added)
For both Copyright and Trademark:
Other suits to be instituted where defendants reside or cause of action arises. – Subject to the limitations aforesaid, every suit shall be instituted in a Court within the local limits of whose jurisdiction—
(a) The defendant, or each of the defendants where there are more than one, at the time of the commencement of the Suit, actually and voluntarily resides, or carries on business, or personally works for gain; or
(b) any of the defendants, where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain, provided that in such case either the leave of the Court is given, or the defendants who do not reside, or carry on business, or personally work for gain, as aforesaid, acquiesce in such institution; or
(c) the cause of action, wholly or in part, arises.
Explanation: A corporation shall be deemed to carry on business at its sole or principal office in India or, in respect of any cause of action arising at any place where it has also a subordinate office, at such place.
Section 62 and Section 134 are pari materia. It is important to note that both of these sections are ‘inclusive’ in nature. They are categorical in nature. The inclusive nature of these sections can be inferred from the word ‘include’.
To better understand the intent and effect of section 62 and section 134, let’s understand what recourse plaintiff would have in absence of these sections and what recourses they have now with these sections.
In absence of Section 62 and Section 134, having resort to section 20, plaintiff may be able to file the suit of infringement against the defendant only at the district court (in case of copyright) or at a court that is not inferior to the district court (in case of trademark) within local limits of which cause of action wholly or in part arises, or where defendant resides, carries on business or personally works for gain. But when we read Section 62 and Section 134 with section 20, plaintiff can also file suit for infringement at a place where he resides or carries on business or personally works for gain. Plaintiff is not barred to file suits at courts having jurisdictions where cause of action has arisen wholly or in part or at court having jurisdiction where defendant resides or carries on business or personally works for gain even if plaintiff is not residing or carrying on business or personally working for gain in any of those jurisdictions.
Section 62 and section 134 are not in derogation of section 20, instead they just provide an additional forum for the suing to the plaintiff. Such interpretation of section 62 and section 134 has been confirmed by division bench of Hon’ble Madras High Court in M/S. MICRO LABS LIMITED, REP., BY ITS COMPANY SECRETARY V/S M/S. ERIS LIFE SCIENCES PVT. LTD., decided on Tuesday, September 15, 2015.
After INDIAN PERFORMING RIGHTS SOCIETY LTD. Versus. SANJAY DALIA AND ORS: (2015) 10 SCC 161 decided on July 01, 2015 by Hon’ble Supreme Court and ULTRA HOMES CONSTRUCTION PVT. LTD Versus PURUSHOTTAM KUMAR CHAUBEY & ORS FAO (OS) 494/2015 & CM 17816/2015 decided on January 20, 2016 by Hon’ble division bench of Delhi High court, plaintiff being a corporation (which includes a company), can sue at places as discussed below:
By drawing analogy from the case laws read with section 134, section 62 and section 20, below is produced a table that discusses the applicable jurisdiction that may arise in different cases.
About the Author: Swapnil Patil, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: email@example.com.