22 July 2015

Trademark & copyright – Jurisdiction for filing suit against infringement

The Supreme Court of India has 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 (in whole or in part) arises, in the case where the plaintiff instituting the suit has an office in that jurisdiction. In Indian Performing Rights Society v. Sanjay Dalia & Anr, Civil Appeal Nos. 10643-10644 of 2010, decided on 1-7-2015, the appellant argued that since its branch office was in Delhi, the suit could be instituted in Delhi though cause of action arose at Mumbai, the appellant’s principal office was in Mumbai and defendant also had a place of business there.


Impediment in Civil Procedure Code as regards place of instituting suit

It was contended that the relevant provisions in trademarks and copyright statutes contain a non-obstante clause ‘‘notwithstanding anything contained in Section 20 of CPC’ and this meant that the plaintiff could choose the place of instituting the suit.The Supreme Court observed that the provisions of Section 62 of the Copyright Act and Section 134 of the Trade Marks Act were never intended to operate in the field where the plaintiff is having its principal place of business at a particular place and the cause of action has also arisen at that place so as to enable it to file a suit at a distant place where its subordinate office is situated though at such place no cause of action has arisen. In its opinion, the clause seeks to remove the impediment that the plaintiff has to file the suit where defendant ordinarily resides or works for gain. It only provides an additional forum and does not entitle 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 cause of action has arisen.


Place where cause of action arises

According to the Apex Court, if the plaintiff is residing or carrying on business etc. at a place where cause of action, wholly or in part, has also arisen, he has to file a suit the district court having jurisdiction. The Court discussed a number of decisions including Peoples’ Insurance Co. v. Benoy Bhushan [AIR1943 Cal. 190] wherein it was held 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.
The Supreme Court was of the view that plaintiff can also institute a suit at a place where he is residing, carrying on business or personally works for gain de hors the fact that the cause of action has not arisen at a place where he is residing, carries on business or personally works for gain. However the plaintiff cannot ignore the place of cause of action because he is carrying on business at other far flung places also and inconvenience the defendant. While very intendment of the insertion of provision in the Copyright Act and Trade Marks Act is 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 abusing the provisions.


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