MISCHIEF IN JURISDICTION: TRADEMARK

In case of Indian Performing Rights Society Ltd. Vs. Sanjay Dalia & Anr. (Civil Appeal Nos.10643-10644 OF 2010), a peculiar submission was submitted with regard to jurisdiction before the supreme court:

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  1. It was also submitted that as the bulk of litigation of such a nature is filed at Delhi and lawyers available at Delhi are having expertise in the matter, as such it would be convenient to the parties to contest the suit at Delhi. Such aspects are irrelevant for deciding the territorial jurisdiction. It is not the convenience of the lawyers or their expertise which makes out the territorial jurisdiction. Thus, the submission is unhesitatingly rejected.

        

It appears tendency of Delhi based lawyer to drag the IPR cases to Delhi  Court jurisdiction by creating various type of artificial jurisdiction is still not over:

  1. Multinationals executing Power of Attorney (POA) through (a chain of POA, sometime) in the name of Delhi based person, who is not even related to it either by employment or carrying out any business in the Plaintiff’s name. (World Wrestling Entertainment Inc. vs M/S Reshma Collection & Ors, CS(OS) 1801/2013 and I.A. Nos.14958-59/2013, Para 3)
  2. Lawyer acting in dual capacity of being that of a constituted attorney of the party as well as an advocate in the same matter. (Baker Oil Tools(India) Pvt. Ltd. Vs. Baker Hughes Ltd.& Anr, RFA No. 583/2004, Para 3)
  3. Alleging marketing of infringed product or service in Delhi through web site of Defendant. (Banyan Tree Holding (P) Limited Vs. A. Murali Krishna Reddy & Anr., CS (OS) No.894/2008, Para 5)
  4. Multinationals not having registered office in India files infringement case on the basis of “permitted user of trademark under License” located in Delhi. (P. K. Sen vs Exxon Mobile Corporation And Anr, FAO (OS) No.290/2016 & CM No.37465/2016, Para 2)
  5. The plaintiff institutes the suit in Delhi and not at the place of its ordinary residence or principal place of business (Gurgaon), which is also the place where the cause of action has arisen. (Pepsico Inc & Anr. vs M/S. Sagarnil Enterprise & Ors, CS (COMM) 960/2016, Para 20).
  6. The plaintiff has no place of business in India nor has the plaintiff any exclusive distributor of its products within the jurisdiction of this Court i.e. Delhi It has also been contended that the defendants reside and carry on business and work for gain outside the jurisdiction of this Court. The defendants do not have a branch office at Delhi nor do they have any distributor at Delhi nor are the goods of the defendants bearing the infringed trademark ‘ARCHIES’ available within territory of Delhi. (Archie Comic Publications, Inc. vs Purple Creations Pvt. Ltd., I.A.No. 238/2006 and 5271/2006 in CS (OS) No.- 1420/2005, Para 4).
  7. The goods of the defendants are not available for sale within Delhi i.e. within the jurisdiction of the Court, it cannot be said that the ordinary person is likely to buy the goods of the defendants believing that they are buying the goods of the plaintiff. (Indovax Pvt. Ltd vs Merck Animal Health and Ors, CS(OS) 2047/2013 & I.A. 17022/2013, penultimate para).
  8. The simple averment by the plaintiff that plaintiff as well as the defendant carries on business in Delhi is not sufficient, however no material has been placed on record by the plaintiff even to prima facie substantiate the said claim. Neither the address of the plaintiff is of Delhi nor has the plaintiff anywhere claimed having any subordinate or corporate office or any agent in Delhi, the jurisdiction cannot be claimed on the basis of section 134 (2) of the Trademarks Act, 1999 but on the basis of section 20 of the CPC,1908 only. (Lakhan Pal Shaym Kumar vs Ram Prasad Gupta & Anr, CS(OS) 2208/2006, Para 10 and 11).
  9. The plaintiff could maintain a suit at either of these places for registered trademark, namely, (i) where its head office/ principal place of business is situated and (ii) where he resides or works for gain, and also at (iii) the place where the plaintiff may have subordinate office and a part of cause of action has arisen. The Plaintiff cannot claim jurisdiction of Delhi Court on the basis of caveats filed in different district courts of Delhi by the defendant. (Rspl Ltd. vs Mukesh Sharma & Anr,A. No.11034/2015 in C.S. (OS) No.124/2015, Paragraph 64).
  10. Two suits having different causes of actions i.e. under the Trademarks Act and Copyright Act cannot be clubbed together as a composite suit to claim jurisdiction on the basis of incidental power of the court under the Copyright Act for infringement under Trade Marks Act. (Dabur India Ltd. Versus K.R. Industries, C.A. No. 3637 of 2008, Para 29).

The jurisdiction of the court in infringement of trademark is no longer Res Integra still the large number of cases is being filed before various Delhi Court without honouring the res judicata state of jurisdiction given by the Hon’ble Delhi High Court and Supreme Court on different issue.

Rajni Sinha

Advocate High Court,

Mobile No. 7738080174

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