In a recent case, the Indian Apex Court has rendered an authoritative Judgment while defining the parameters of jurisdiction in Trademark and Copyright related cases in India. The Court essentially delved into the issue of harassment witnessed by the Defendants at the hands of the Plaintiffs while instituting a suit based on territorial jurisdiction and the Court has held that the Plaintiff cannot drag the Defendant to far flung areas to harass them.
In this appeal before the Supreme Court, the primary issue arose as to the interpretation of law as outlined under Section 62 of the Copyright Act, 1957 and Section 134(2) of the Trademark Act, 1999.
The general rule with respect to institution of a suit has been enumerated under Section 20 of the Code of Civil Procedure (CPC), according to which a suit can be instituted in a Court within whose territorial jurisdiction the Defendant resides or carries on business or personally works for gain or where the cause of action arose.
However, an exception to the aforesaid rule has been provided under Section 134 of Trade Marks Act, 1999 and Section 62 of Copyright Act, 1957. The law as entailed under the statutory provisions provides that ‘District court having jurisdiction’ shall notwithstanding anything contained in the CPC or any other law for time being in force, include a district court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding (i.e the Plaintiff) actually and voluntary resides or carries on business or personally works for gain.
Plaintiffs’ submission- The Plaintiffs contended that under Section 62 of the Copyright Act and Section 134 of the Trade Marks Act, the party instituting the suit has the right to file a suit for infringement of a copyright or a registered trade mark in any Court within whose territorial jurisdiction the filing party (owner of the copyright/registered proprietor/ registered user) carries on its business. The Plaintiffs contended that by virtue of having their regional/branch offices in Delhi, the Court at Delhi was entitled to hear, try and adjudicate the suits.
Defendant’s reply- The Defendants refuted Plaintiffs’ contention stating that this would be an abuse of the provisions under the impugned statutory provisions and same cannot be permitted at the hands of the multinational corporations to harass the Defendants. The Defendants/ Respondents relied on Haydon’s rule of mischief.
The said rule directs that the courts must adopt the construction which “shall suppress the mischief and the advance remedy”. In other words, while interpreting a statue, the problem or mischief that the statue was designed to remedy should first be identified and then a construction that suppresses the problem and advances the remedy should be adopted.
The Court observed that intention of Legislature was that the Plaintiff should not go to far flung places than that of residence or where he carries on business or works for gain in order to deprive Defendant a remedy and harass him by dragging to a distant place.
If such an interpretation is permitted, as rightly submitted on behalf of the Defendants/Respondents, the abuse of the provision will take place as corporations and big conglomerates might be having several subordinate offices throughout the country.
The avoidance of the counter mischief of the Defendant is also necessary while giving remedy to the Plaintiff under the provisions in question. After discussing the Parliamentary Debate with respect to the provisions in question. The Hon’ble Supreme Court held that the right to remedy given is not unbridled and is subject to the prevention of abuse of the aforesaid provisions, as discusses above. Parliament never intended that the subject provisions to be abused by the Plaintiff by instituting suits in wholly unconnected jurisdiction.”
The Hon’ble Supreme Court also held in the case 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. The Plaintiff need not travel to file a suit to a place where the Defendant is residing or cause of action wholly/partly arises. However, if the Plaintiff carries on business or has his principle place of business or works for gain at a place where cause of action also arose, the Plaintiff has to file the suit at that place and not at its branch office in a different location.
The Supreme Court has in the present case defined the boundaries while instituting a suit arising out of copyright and trademark infringement. Through the present Judgment the Court has sent out a clear message, thereby settling the issue regarding jurisdiction in IP related cases. The decision of the Apex Court is also expected to curb the practice of forum shopping where only a few High Courts were burdened with IP matters. Further it will speed up and take IP awareness to different areas/cities in India.
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