Jurisdiction to File Infringement Suits[1]
Under the Code of Civil Procedure (Section 20), a suit can be
instituted in a Court within whose territorial jurisdiction the Defendant
resides or carries on business or personally worked for gain or where the cause
of action arose. However, deviation from the normal rule is provided under the
Section 134, Trade Marks Act, 1999 and Section 62 of the Copyright Act, 1957.
It says that notwithstanding anything contained in the CPC, 1908 or any other
law for the time being in force, the district court within the local limits of
whose jurisdiction, the person instituting the suit or proceeding actually and
voluntarily resides or carries on business or personally works for gain, at the
time of instituting the suit, shall have jurisdiction. Court analyzed the
interaction between the aforementioned sections while addressing the issue of
misuse of the jurisdiction clause in the Trade Marks and Copyright Act.
instituted in a Court within whose territorial jurisdiction the Defendant
resides or carries on business or personally worked for gain or where the cause
of action arose. However, deviation from the normal rule is provided under the
Section 134, Trade Marks Act, 1999 and Section 62 of the Copyright Act, 1957.
It says that notwithstanding anything contained in the CPC, 1908 or any other
law for the time being in force, the district court within the local limits of
whose jurisdiction, the person instituting the suit or proceeding actually and
voluntarily resides or carries on business or personally works for gain, at the
time of instituting the suit, shall have jurisdiction. Court analyzed the
interaction between the aforementioned sections while addressing the issue of
misuse of the jurisdiction clause in the Trade Marks and Copyright Act.
Facts
The Plaintiff/Appellant had filed a suit praying for relief
against Defendant No. 1 so as to prevent infringement of the rights of the
Plaintiff without obtaining the license. The Defendant owns cinema halls in
Maharashtra and Mumbai where infringement is alleged and the entire cause of
action, as alleged in the plaint, has arisen in Mumbai, Maharashtra. The Branch
Office of the Plaintiff is situated at Delhi and the Plaintiff is carrying on
the business at Delhi. The Plaintiff’s Head Office is situated at Mumbai. The
objection was raised by the Defendant with regard to the territorial
jurisdiction of the court at Delhi. The single Bench and the Division Bench of
the High Court upheld the objection and held that the suit should have been
filed in the facts of the case, in the court at Mumbai. Hence, the impugned
order has been questioned in the appeals.
against Defendant No. 1 so as to prevent infringement of the rights of the
Plaintiff without obtaining the license. The Defendant owns cinema halls in
Maharashtra and Mumbai where infringement is alleged and the entire cause of
action, as alleged in the plaint, has arisen in Mumbai, Maharashtra. The Branch
Office of the Plaintiff is situated at Delhi and the Plaintiff is carrying on
the business at Delhi. The Plaintiff’s Head Office is situated at Mumbai. The
objection was raised by the Defendant with regard to the territorial
jurisdiction of the court at Delhi. The single Bench and the Division Bench of
the High Court upheld the objection and held that the suit should have been
filed in the facts of the case, in the court at Mumbai. Hence, the impugned
order has been questioned in the appeals.
Issues
In the appeals, the question
arising for consideration is as to the interpretation of Section 62 of the
Copyright Act, 1957 and Section 134(2) of the Trade Marks Act, 1999 with regard
to the place where a suit can be instituted by the Plaintiff and its
interaction with Section 20 of the Civil Procedure Code, 1908. Court examined whether a special right has
been conferred Under Section 62(2) of the Copyright Act and Section 134 of the
Trade Marks Act containing non-obstante clause to the applicability of the Code
of Civil Procedure or any other law for the time being in force, and the
Plaintiff has been conferred a right to file a suit where it carries on its
business. The applicability of the Heydon’s mischief rule (i.e. When the
material words are capable of bearing two or more constructions the most firmly
established rule for construction of such words “of all statutes in
general (be they penal or beneficial, restrictive or enlarging of the common
law), it suggests that The rule then directs that the courts must adopt that
construction which “shall suppress the mischief and advance the
remedy”) to the facts was also considered.
arising for consideration is as to the interpretation of Section 62 of the
Copyright Act, 1957 and Section 134(2) of the Trade Marks Act, 1999 with regard
to the place where a suit can be instituted by the Plaintiff and its
interaction with Section 20 of the Civil Procedure Code, 1908. Court examined whether a special right has
been conferred Under Section 62(2) of the Copyright Act and Section 134 of the
Trade Marks Act containing non-obstante clause to the applicability of the Code
of Civil Procedure or any other law for the time being in force, and the
Plaintiff has been conferred a right to file a suit where it carries on its
business. The applicability of the Heydon’s mischief rule (i.e. When the
material words are capable of bearing two or more constructions the most firmly
established rule for construction of such words “of all statutes in
general (be they penal or beneficial, restrictive or enlarging of the common
law), it suggests that The rule then directs that the courts must adopt that
construction which “shall suppress the mischief and advance the
remedy”) to the facts was also considered.
Decision
of the Court
of the Court
·
The court
opined that, in a case where cause of action has arisen at a place where the
Plaintiff is residing or where there are more than one such persons, any of
them actually or voluntarily resides or carries on business or personally works
for gain would oust the jurisdiction of other place where the cause of action
has not arisen though at such a place, by virtue of having
subordinate office, the Plaintiff instituting a suit or other proceedings might
be carrying on business or personally works for gain.
The court
opined that, in a case where cause of action has arisen at a place where the
Plaintiff is residing or where there are more than one such persons, any of
them actually or voluntarily resides or carries on business or personally works
for gain would oust the jurisdiction of other place where the cause of action
has not arisen though at such a place, by virtue of having
subordinate office, the Plaintiff instituting a suit or other proceedings might
be carrying on business or personally works for gain.
·
Words used
in Section 62 of the Copyright Act and Section 134 of the Trade Marks Act,
‘notwithstanding anything contained in Code of Civil Procedure or any other law
for the time being in force’, emphasise that the requirement of Section 20 of
the Code of Civil Procedure would not have to be complied with by the Plaintiff
if he resides or carries on business in the local limits of the court where he
has filed the suit but, at the same time, as the provision providing for an
additional forum, cannot be interpreted in the manner that it has authorised
the Plaintiff to institute a suit at a different place other than the place
where he is ordinarily residing or having principal office and incidentally
where the cause of action wholly or in part has also arisen. As per Court’s
view, the additional forum and fundamental basis of conferring the right and
advantage to the authors of the Copyright Act and the Trade Marks Act provided
under the aforesaid provisions is not taken away.
in Section 62 of the Copyright Act and Section 134 of the Trade Marks Act,
‘notwithstanding anything contained in Code of Civil Procedure or any other law
for the time being in force’, emphasise that the requirement of Section 20 of
the Code of Civil Procedure would not have to be complied with by the Plaintiff
if he resides or carries on business in the local limits of the court where he
has filed the suit but, at the same time, as the provision providing for an
additional forum, cannot be interpreted in the manner that it has authorised
the Plaintiff to institute a suit at a different place other than the place
where he is ordinarily residing or having principal office and incidentally
where the cause of action wholly or in part has also arisen. As per Court’s
view, the additional forum and fundamental basis of conferring the right and
advantage to the authors of the Copyright Act and the Trade Marks Act provided
under the aforesaid provisions is not taken away.
·
The Supreme Court came to
the submission that vires of Section 62 has not been questioned. However, the
question is that of interpretation and not that of vires of the provisions
which has been considered by the court. There will be no violence to Section 62
of Copyright Act and Section 134 of Trade Marks Act by the interpretation
adopted by the court and the right of the Plaintiff which has been conferred
under the provisions also remains intact. There is no question of giving
disadvantage to the Plaintiff vis-a-vis the Defendant but both will stand to
gain by proper interpretation.
the submission that vires of Section 62 has not been questioned. However, the
question is that of interpretation and not that of vires of the provisions
which has been considered by the court. There will be no violence to Section 62
of Copyright Act and Section 134 of Trade Marks Act by the interpretation
adopted by the court and the right of the Plaintiff which has been conferred
under the provisions also remains intact. There is no question of giving
disadvantage to the Plaintiff vis-a-vis the Defendant but both will stand to
gain by proper interpretation.
·
In the opinion of the Supreme Court, the
provisions of Section 62 of the Copyright Act and Section 134 of the Trade
Marks Act have to be interpreted in the purposive manner. No doubt about it
that a suit can be filed by the Plaintiff at a place where he is residing or
carrying on business or personally works for gain. He need not travel to file a
suit to a place where Defendant is residing or cause of action wholly or in
part arises. However, 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 at that place, as discussed above.
provisions of Section 62 of the Copyright Act and Section 134 of the Trade
Marks Act have to be interpreted in the purposive manner. No doubt about it
that a suit can be filed by the Plaintiff at a place where he is residing or
carrying on business or personally works for gain. He need not travel to file a
suit to a place where Defendant is residing or cause of action wholly or in
part arises. However, 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 at that place, as discussed above.
·
Thus the Supreme Court, for
the aforesaid reasons mentioned by the court in the judgment, the Supreme Court
is not inclined to interfere with the orders passed by the High Court. So, the
appeals were dismissed. No costs.
the aforesaid reasons mentioned by the court in the judgment, the Supreme Court
is not inclined to interfere with the orders passed by the High Court. So, the
appeals were dismissed. No costs.
Conclusion
Hence, a reasonable
inference can be drawn from the aforementioned decision that, 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 at that place. The
decision was aimed at ending the injustice meted out to Defendants, by dragging
them to distant places as big companies may have subordinate offices at several
places. Thus, it leans towards ending forum shopping.
inference can be drawn from the aforementioned decision that, 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 at that place. The
decision was aimed at ending the injustice meted out to Defendants, by dragging
them to distant places as big companies may have subordinate offices at several
places. Thus, it leans towards ending forum shopping.
