Cases clarify jurisdiction in composite IP suits

By Abhai Pandey, Lex Orbis IP Practice
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The jurisdiction of a court to try a suit in the case of copyright or trademark infringement is an important matter. Section 20 of the Civil Procedure Code (CPC) states that the jurisdiction of a civil suit would be where each defendant or one of the defendants (when there are more than one) resides or has a place of business, or personally works for gain, or where the cause of action arises wholly or in part.

However, the Copyright Act under section 62, as well as the Trade Marks Act, 1999, under section 134, state that the suit for copyright infringement would lie in a district court where the plaintiff resides, or undertakes his/her business or personally works for gain.

This proposition has been interpreted in various judgments of the high courts and it has been established that sections 62 of the Copyright Act and 134 of the Trade Marks Act, only provide an additional forum for the institution of suit; they do not supercede the requirements of the CPC (see Exphar SA and Anr v Eupharma Laboratories Ltd and Anr [AIR 2004 SC1682], and Ford Motor Company and Anr v CR Borman and Anr [FAO (OS) 9/2008]).

Abhai Pandey Lawyer Lex Orbis IP Practice
Abhai Pandey
Lawyer
Lex Orbis IP Practice

The peculiar problem that arises in relation to jurisdiction in a composite suit is where the action involves a determination of the claims of infringement as well as passing off. Relief for passing off is a civil remedy, which has to be pursued under the CPC. If the plaintiff chooses to file a suit in a court within the limits of which he or she resides, then the court will not have jurisdiction to decide on the tort of passing off.

In Premier Distilleries Pvt Ltd v Sushi Distilleries, a division bench of the Madras High Court in a matter involving a passing off action was of the view that choosing to file the suit at the location where the plaintiff resides would not be appropriate for passing off.

The issue was discussed in Dhodha House and Patel Field Marshall Industries v SK Maingi and PM Diesal Ltd by the Supreme Court when faced with diametrically opposite views of the high courts of Allahabad and Delhi regarding jurisdiction. The case involved copyright infringement under the Copyright Act as well as trademark infringement under the Trade and Merchandise Act, 1958. The 1958 act did not include any provisions parallel to section 62 of the Copyright Act, thus leaving the jurisdiction to be decided on under the CPC.

Allowing the appeal from the decision of the Delhi High Court, the Supreme Court held that when the causes of action in a case under two pieces of legislation are overlapping, the territorial jurisdiction under the CPC shall indisputably apply to a proceeding under both acts. “For the purpose of invoking the jurisdiction of a court only because two causes of action joined in terms of the provisions of the Code of Civil Procedure, the same would not mean that thereby the jurisdiction can be conferred upon a court which had jurisdiction to try only the suit in respect of one cause of action and not the other.

Recourse to the additional forum, however, in a given case, may be taken if both the causes of action arise within the jurisdiction of the court which otherwise had the necessary jurisdiction to decide all the issues.” In view of this observation by the Supreme Court, a court may decide on particular aspects of an issue over which it has jurisdiction.

The position was further clarified in Dharampal Premchand Ltd v Golden Tobacco Products, where along with the jurisdictional issue, an amendment of plaint to remove the cause of action outside the jurisdiction was deliberated upon. The amendment of plaint was preferred to remove passing off from the remedies sought, thus segregating maintainable and non maintainable relief. It was held that the court could decide upon the trademark and copyright infringements and segregate the relief of passing off which would not result in the court gaining jurisdiction where it had none.

The court relied on the dicta in Globe Super Parts v Domestic Appliances and Anr, and Dabur India Ltd v KR Industries, maintaining that in the absence of a prayer for amendment to segregate, the plaint would have to be returned, but, in cases, where such a prayer has indeed been preferred, the court can segregate and grant the relief it is competent to.

The Delhi High Court concurred with the decision in SBI v Sanjeev Malik that when the court does not have jurisdiction over all causes of action in a plaint, it can strike off the part beyond its jurisdiction while adjudicating on the ones it has, enabling the plaintiff to file action in a proper court.

Since the introduction of section 134 in the Trade Marks Act, the conflict as to a composite suit involving trademarks and copyrights has been resolved. This judicial opinion serves as a valuable lead in interpreting the nuances of procedure to advance justice in matters of intellectual property violation.

Abhai Pandey is a lawyer with Lex Orbis IP Practice, a law firm specializing in intellectual property issues.

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