01 October 2018

Territorial jurisdiction of court - Trademark s.134 and Copyright s.62 are not in exclusion to s.20 of CPC

Delhi High Court has held that territorial jurisdiction of a Court in a trademark action could be invoked where there is use ‘upon’ or ‘in relation’ to goods. It noted that the phrase ‘in relation to’ includes advertising, promotion, etc.

The court was of the view that today in the age of e-commerce and online businesses, the defendants’ conduct of seeking franchise queries in Delhi would itself confer jurisdiction of this Court under Section 20 of the CPC. It observed that a test to hold that unless and until an outlet is set up there would be no jurisdiction, would be too stringent.

The Single Judge thus held that in addition to actual sale of goods and providing services, if a person advertises his or her business under the mark in a territory, promotes his or her business under the mark in a territory or invites franchisee queries from a particular territory, sources goods from a particular territory, manufactures goods in a particular territory, assembles goods in a particular territory, undertakes printing of packaging in a particular territory, exports goods from a particular territory, it would constitute ‘use of a mark’.

The court in the case of Burger King v. Techchand also noted that Section 134 of the Trademark Act and Section 62 of the Copyright Act are in addition to and not in exclusion of Section 20 of the Civil Procedure Code, and if the plaintiff can make out a cause of action within the territorial jurisdiction of the Court under Section 20 of CPC, then no reference needs to be made to Section 134.

The Supreme Court judgment in the case of IPRS v. Sanjay Dalia and Delhi High Court’s Order in Ultra Home Construction Pvt. Ltd. v. Purshottam Kumar Chaubey, were relied upon.

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