Jurisdictional Framework in Trademark & Copyright Law: Analysing Statutes And Challenges in India

INTRODUCTION:

Jurisdiction plays a vital role in resolving commercial intellectual property (IP) disputes, in the context of trademark and copyright infringement cases in India. Jurisdiction in intellectual property cases is a complex question of law that involves an interplay of the facts and the relevant statutes. The Rightful IP Owners are time and again baffled about the appropriate forum to try the suit.

This Article aims to offer valuable insights into nuances of trademark and copyright jurisdiction aided with relevant statutes, and sections of Indian Trademark and copyright Law.

Understanding Indian Jurisdictional Prototype in Trademark Law:

As we ought to be aware that as per the Trademarks Act, 1999, the Jurisdiction in trademark infringement suits is primarily determined by the location of the defendant, the place of business, or where the cause of action arises. However, with respect to Copyright Infringement The Copyright Act establishes the jurisdiction of courts in copyright matters.

Let us take a look at various provisions governing jurisdiction in commercial trademark and Copyright disputes:

1. Section 20 of the Code of Civil Procedure, 1908: Section 20 provides the foundational basis for determining jurisdiction in all civil cases, including trademark disputes. It states that a suit can be filed in the court within whose local jurisdiction the defendant resides or carries on business, or where the cause of action arises, wholly or in part. This section serves as a guiding principle for determining the appropriate forum for initiating trademark infringement actions.
2. Section 134 of the Trademarks Act, 1999: Section 134 of the Trademarks Act further refines the jurisdictional framework as laid down in Section 20 of the Code of Civil Procedure, 1908. It allows the plaintiff to file a trademark infringement suit in the District Court or the High Court within whose local jurisdiction the defendant resides or carries on business, or where the cause of action arises, wholly or in part. This provision grants flexibility to the plaintiff in selecting the forum that best suits their interests.

The legal precedents in the case of Sabmiller India Ltd vs M.P. Beer Products Pvt. Ltd (MANU/MH/0177/2014) reaffirm the significance of the jurisdictional framework:

The Bombay High Court in the case of Sabmiller India Ltd. elucidated that a trademark right is considered a form of property, making a suit for trademark infringement a civil matter. The court held that if the infringement occurs within the territorial limits of Greater Bombay or District Bombay, the High Court, as the principal civil court of original jurisdiction, assumes the status of the district court. Consequently, the High Court is deemed to be the district court for the purpose of Section 105 of the Trade and Merchandise Marks Act, 1958 (equivalent to Section 134 of the Trade Marks Act, 1999). This means that suits related to trademark infringement, regardless of their pecuniary valuation, should be filed in the High Court.

3. Section 62 of the Copyright Act, 1957: Section 62 of the Copyright Act establishes the jurisdiction of courts in copyright matters. According to this provision, the district court having jurisdiction over the plaintiff’s place of residence or principal place of business shall have the authority to entertain copyright infringement suits.
4. Artistic Work Infringement – In cases of copyright infringement with respect to an artistic work, the suit can also be filed at the place where the work was first published.
5. Section 63 of the Copyright Act – Section 63 confers jurisdiction on the district court to grant temporary injunctions in copyright infringement cases, thereby providing interim relief to the aggrieved party. These provisions ensure that copyright owners can seek legal remedies in an appropriate jurisdiction within India.

Significance of Commercial Courts Act, 2015 – Importance and Impact

The Commercial Courts Act, 2015, introduced commercial divisions within the High Courts to expedite the resolution of commercial disputes, especially IP infringement cases. It enhances the jurisdictional framework by offering specialized courts with expertise in handling complex IP matters.

Key provisions of the Commercial Courts Act include:

1. Section 4 of the Commercial Courts Act, 2015: Section 4 establishes commercial divisions within the High Courts to deal with commercial disputes exceeding a specified value. The presence of these specialized divisions ensures the efficient adjudication of trademark infringement cases by judges well-versed in trademark law and its nuances.
2. Section 12 of the Commercial Courts Act, 2015: Section 12 mandates the disposal of commercial cases, including trademark and copyright disputes, within a specific time frame. This provision promotes expeditious resolution, reducing delays and ensuring swift justice for Rightful IP Holders.

Supreme Court Reaffirms The Significance Of The Jurisdictional Framework Of IP Suits In the case of Indian Performing Rights Society Ltd. vs. Sanjay Dalia and Ors

In the case of Indian Performing Rights Society Ltd. vs. Sanjay Dalia and Ors[1]. (01.07.2015 – SC), The court examined the provisions of Section 62 of the Copyright Act and Section 134 of the Trade Marks Act, emphasizing the purpose behind including an additional forum, specifically a District Court, for the Plaintiff to file a suit based on their actual place of residence, business, or employment. The court clarified that the objective of these provisions was to enable the Plaintiff to initiate legal proceedings in a convenient jurisdiction, where they resided or conducted business, rather than allowing them to compel the Defendant to appear in a distant court, as was being attempted in the present cases.

It was further clarified that the phrase “notwithstanding anything contained in the Code of Civil Procedure” did not eliminate the applicability of Section 20 of the Code of Civil Procedure. Section 20 of the Code of Civil Procedure grants the Plaintiff the option to file a suit in the jurisdiction where the Defendant resides or where the cause of action arises. Section 20(a) and Section 20(b) typically determine the venue based on the Defendant’s residence, business, or employment. Section 20(c) allows the Plaintiff to initiate a suit where the cause of action, wholly or in part, arises. The Explanation to Section 20 of the Code of Civil Procedure clarifies that a corporation can be sued in a jurisdiction where it has its sole or principal office, or where a subordinate office exists, and the cause of action arises there.

Therefore, it can be inferred that the intention behind the provisions is to offer the Plaintiff an additional choice of venue, based on their place of residence, business, or employment. The inclusion of the District Court in the Copyright Act and Trade Marks Act does not exclude the application of Section 20 of the Code of Civil Procedure. Instead, it provides an alternative forum for the Plaintiff to seek redress, while Section 20 of the Code of Civil Procedure continues to offer its own provisions regarding jurisdiction based on the Defendant’s residence or the place where the cause of action arises.

This interpretation highlights the legislative intent to provide flexibility to the Plaintiff in choosing an appropriate jurisdiction for filing a suit, ensuring convenience and access to justice. The court’s elucidation clarifies the interplay between the Copyright Act, Trade Marks Act, and the Code of Civil Procedure, and emphasizes the significance of considering both statutory provisions in determining the jurisdiction for copyright and trademark disputes.

Challenges of the Existing Jurisdictional Prototype:

While the existing jurisdictional framework in India adequately addresses trademark infringement disputes, certain concerns and challenges persist. Let us take a look:

Forum Shopping: Undermining Consistency and Predictability

One of the significant concerns in commercial IP suits is forum shopping. Parties sometimes strategically select a court that is perceived to interpret IP laws favorably, aiming to gain a favorable outcome. This practice undermines the consistency and predictability of results in various IP infringement litigation especially with respect to Trademark infringement matters. Forum shopping can lead to conflicting decisions and create an environment of uncertainty, which is detrimental to the effective enforcement and protection of IP  rights.

Inconsistencies in Interpretation and Application

Another challenge that arises in trademark disputes is the inconsistencies in the interpretation and application of laws by different courts. The diversity of interpretations can result in conflicting judgments, which adds to the uncertainty surrounding litigations. This issue emphasizes the need for specialized training for judges handling trademark disputes, ensuring a coherent approach and uniformity in decision-making across various Indian courts The Change in Paradigm to Address the Challenges is the Need of the Hour!

Training and Specialization

To overcome the concerns of forum shopping and inconsistencies in the IP litigations, it is crucial to focus on the training and specialization of judges. Specialized training programs can enhance the understanding of IP laws, the intricacies of IP disputes, and the evolving nature of commercial practices. By equipping judges with comprehensive knowledge and expertise in trademark and Copyright law, the consistency and predictability of outcomes in IP infringement cases can be improved significantly.

Uniformity in Decision-Making: Establishing Precedents

Another approach to tackle the issue of inconsistent judgments is the establishment of precedents. When courts consistently follow and refer to earlier decisions, it creates a body of case law that provides guidance and clarity to parties involved in IP  disputes. Precedents help reduce ambiguity and ensure uniformity in decision-making, promoting consistency and predictability in the IP litigations.

Collaboration and Harmonization

Efforts to achieve collaboration and harmonization among courts and judicial forums can also contribute to addressing the challenges in the IP jurisdictions. Regular communication and sharing of best practices between courts can help align interpretations, reduce discrepancies, and establish a cohesive approach towards the infringement cases. Additionally, promoting dialogue between the judiciary, legal professionals, and stakeholders can lead to the development of guidelines and standards that further enhance consistency in trademark litigation.

Travel Food Services Private Limited vs. Aroon Food Services Private Limited[2]

This case law analysis pertains to the jurisdictional issue raised in the matter between Travel Food Services Private Limited (Plaintiff) and Aroon Food Services Private Limited (Defendant) in a Commercial IP Suit before the High Court of Judicature at Bombay. The key question before the court was whether the suit filed by the plaintiff was maintainable in the Bombay High Court or if it should be returned for filing before the competent court in Delhi.

Background:

The defendant, in their application for return of plaint, argued that since the plaintiff carries on business in Delhi and the cause of action has arisen in Delhi, the competent court in Delhi should have jurisdiction to entertain the suit. They relied on the interpretation of Section 134 of the Trade Marks Act, 1999, Section 62 of the Copyright Act, 1957, and relevant provisions of the Code of Civil Procedure, 1908 (CPC) to support their contention.

Legal Arguments:

The defendant’s counsel contended that the concept of forum convenience should be considered, and based on the judgments of the Supreme Court in Indian Performing Rights Society Limited v/s. Sanjay Dalia and another (2015) 10 SCC OnLine 161 and the Division Bench judgment of Delhi High Court in Indian Performing Rights Society Limited v/s. Sanjay Dalia and another (2008) 155 DLT 164 (DB), the plaintiff should not be allowed to maintain the suit before the Bombay High Court solely based on the location of their registered office in Mumbai. They argued that the cause of action being in Delhi and the plaintiff carrying on business in Delhi, the suit should be filed before the competent court in Delhi to avoid inconvenience and harassment to the defendant.

The plaintiff’s counsel, on the other hand, relied on the judgment of the Supreme Court in Indian Performing Rights Society Limited v/s. Sanjay Dalia and another and the subsequent interpretation of the same in the judgment of the Bombay High Court in Manugraph India Limited v/s. Simarq Technologies Pvt. Ltd. and others[3] (2016 SCC OnLine Bom 5334). They argued that the plaintiff, having its registered office in Mumbai, can maintain the suit in the Bombay High Court, irrespective of the fact that the cause of action has not arisen within the court’s jurisdiction. They contended that the previous judgments of the Bombay High Court clarified the position of law and that the defendant failed to establish a case for returning the plaint.

Court’s Analysis:

The court examined the relevant provisions of the Trade Marks Act, Copyright Act, and CPC, along with the judgments cited by both parties. The court noted that the judgment in Manugraph India Limited v/s. Simarq Technologies Pvt. Ltd. and others extensively analyzed the Supreme Court’s decision in Indian Performing Rights Society Limited v/s. Sanjay Dalia and another and properly interpreted the provisions of the Copyright Act and Trade Marks Act as a whole. The court expressed regret in deviating from the Division Bench’s decision of the Delhi High Court in IPRS (supra) and agreed with the interpretation given by the learned Single Judge of the Delhi High Court in RSPL Limited v/s. Mukesh Sharma [(2016) 229 DLT 651].

Decision:

Based on its analysis of the relevant provisions and judgments, the court held that the suit filed by the plaintiff was maintainable before the Bombay High Court. The court found that the defendant failed to establish sufficient grounds for returning the plaint, and therefore, the application for return of the plaint was dismissed.

Conclusion:

In the case between Travel Food Services Private Limited (Plaintiff) and Aroon Food Services Private Limited (Defendant), concerning the jurisdictional dispute in a Commercial IP Suit before the High Court of Judicature at Bombay, the court held that the suit filed by the plaintiff was maintainable in the Bombay High Court. The court emphasized that the plaintiff’s registered office in Mumbai allowed them to choose the Bombay High Court as the forum for the suit, despite the cause of action arising in Delhi. The court’s decision reaffirms the importance of the registered office in determining jurisdiction and sets a precedent for similar cases.

Ratio of the case:

The court held that a plaintiff’s choice of forum based on the location of its registered office is valid even if the cause of action does not arise within the chosen court’s jurisdiction, clarifying the significance of the registered office for jurisdictional purposes in commercial IP suits.

Comments:

The Division Bench of the Delhi High Court in Sanjay Dalia incorrectly concluded that the deeming provision of Section 20, specifically the explanation, had been ‘read into’ Sections 134(2) and 62(2) of the Trade Marks Act and Copyright Act, respectively. However, it is essential to note that the issue before the Supreme Court did not pertain to the interpretation of these sections. The structure of Section 20, when viewed as a three-tier framework, clearly sets Sections 134(2) and 62(2) of the Trade Marks Act and Copyright Act apart. This perspective aligns with the recognized interpretation in Sanjay Dalia, which does not disturb this structure or curtail the provisions of Sections 134(2) or 62(2) of the Trade Marks Act and Copyright Act.

Another significant judgment, RSPL Limited v. Mukesh Sharma, delivered by learned Single Judge Mr. Justice Sanghi of the Delhi High Court, reinforces the position elucidated in Sanjay Dalia. In this case, Justice Sanghi presents a thorough analysis of Sanjay Dalia and concurs with its conclusions. Notably, the Supreme Court recognized the provision of an additional forum under Section 62(2) and Section 134(2) of the Copyright Act and Trade Marks Act, respectively, by including the District Court within whose limits the plaintiff resides, carries on business, or personally works for gain.

Furthermore, Justice Sanghi emphasizes that the plaintiff’s right to institute a suit under Section 20 of the Code of Civil Procedure (CPC) is not impeded by the provisions of Section 134(2) or Section 62(2). Both sections provide an additional forum for plaintiffs alleging trademark or copyright infringement. Consequently, the plaintiff can choose to file a suit at the place of their voluntary residence, place of business, or place of gainful employment under Section 62 of the Copyright Act and Section 134 of the Trade Marks Act. Alternatively, the plaintiff can avail themselves of the provisions outlined in Section 20 of the CPC, which allow for the institution of a suit where the defendant resides, works, or where the cause of action arises.

However, it is important to note that the privilege or advantage conferred by Sections 134(2) and 62(2) is tied to the registered office or principal place of work. This privilege should not be exploited by abandoning the registered office or the Section 20 options and attempting to file a suit in a distant location where neither the cause of action nor any of the defendants exist. This misuse was the precise abuse addressed by the Supreme Court in the Sanjay Dalia case.

Indian Jurisdictional Prototype and future frontward:

In conclusion, the jurisdictional framework in trademark and copyright law in India plays a crucial role in resolving commercial intellectual property disputes. The statutes and provisions, such as Section 20 of the Code of Civil Procedure, 1908, Section 134 of the Trademarks Act, 1999, and Section 62 of the Copyright Act, 1957, provide the necessary guidelines for determining the appropriate forum for initiating trademark infringement actions.

However, challenges such as forum shopping and inconsistencies in the interpretation and application of trademark laws persist. To address these challenges, it is essential to focus on specialized training for judges handling IP disputes, promoting uniformity in decision-making through the establishment of precedents, and encouraging collaboration and harmonization among courts and judicial forums.

Recent case law, such as the Sabmiller India Ltd. vs. M.P. Beer Products Pvt. Ltd. and Indian Performing Rights Society Ltd. vs. Sanjay Dalia and Ors., provides valuable insights into the jurisdictional aspects of trademark infringement suits and emphasizes the interplay between statutory provisions.

Moreover, the significance of the Commercial Courts Act, of 2015, in expediting the resolution of commercial disputes, including trademark infringement cases, cannot be overlooked. The establishment of commercial divisions within the High Courts and the mandated time frame for case disposal under Section 4 and Section 12 of the Commercial Courts Act, respectively, contribute to an efficient jurisdictional framework.

Overall, by addressing the challenges and ensuring comprehensive training, uniformity in decision-making, and collaboration, India’s jurisdictional framework in trademark and copyright law can further enhance the effective enforcement and protection of intellectual property rights in commercial settings.

[1] MANU/SC/0716/2015; Neutral Citation: 2015/INSC/443, 2015/INSC/452.

[2] COMMERCIAL IP SUIT NO. 323 OF 2022; Order Dated:3rd APRIL, 2023

[3] AIR2016Bom217