India: Institution of Infringement Suit - Plaintiff’s Place of Business Redefined

Last Updated: 27 June 2005
Article by Manisha Singh

In a significant move, the new Indian Trade Marks Act, 1999 recognized the right of the aggrieved party, which is a foreign body, to institute a suit into District Court or to High court, as it may be applicable, within the local limits of which it has its offices for gain or profit. This is a substantial moving ahead from the situation under the old Trade Marks Act, 1958 wherein a suit could be instituted only where the infringer had its principle place of business or offices for gain or profits or where the infringing activities had taken place. This statutory provision recently came up for consideration before the Chennai High Court wherein Officine Lovato S.p.a., a foreign entity – the party aggrieved by infringement – got a leave under Clause 12 of the Letters Patent to file an infringement suit.

In its request seeking permission to institute infringement proceedings within the jurisdiction of the Chennai Court, Officine relied on the fact that it has its liaison office in India at Chennai and as they are carrying on business at Chennai within the jurisdiction of this Court, under section 134(2) of the Trade Marks Act, 1999 and under section 62(2) of the Copy Right Act, 1957, a suit could be instituted where the plaintiff actually or voluntarily resides or carries on business. Officine is located at and carries on business at Chennai within the jurisdiction of this Court and therefore is entitled to file the suit before the Chennai Court. Also Officine’s trade mark is registered at the Trade Marks Registry at Chennai with Chennai as the appropriate office of jurisdiction; thus, the situs of its property in the trade mark is situated in Chennai and the infringement of the trade mark having arisen within the jurisdiction of this Court, the material part of cause of action has arisen at Chennai.

The alleged infringers, represented by one, Mr. Ajay Kumar Aggarwal, filed a counter application to revoke the permission granted. The contentions raised by the defendant were primarily based on the ground that their business is situated outside the territorial jurisdiction of this Court and that their goods were not being sold within the territorial jurisdiction of the said Court. Furthermore, the defendant also relied on the fact that Officine’s liaison office is permitted to act as a communication channel between the head office in Italy and various parties in India and that such activities would not amount to its actually or voluntarily residing or carrying on business or personally working for gain at the said liaison office and such stand taken by Officine is in violation of the provisions of the Foreign Exchange Management Act.

The Defendant also placed reliance on the fact that as the Trade Marks Registry is situated at Mumbai and the Register of Trade Marks is available only there; therefore the registered trade mark is deemed to be situated only at Mumbai and as such the suit can be filed only there. Further Officine being foreign company it has to comply with sections 592 to 597 of the Companies Act.

It is significant to note here that under section 105 of the Trade Marks Act, 1958, a suit for infringement of a registered trade mark could not be instituted in any court inferior to a District Court having jurisdiction to try the suit. The 1958 Act stands repealed by the Trade Marks Act, 1999. Therefore the new Act alone governs the situation. Section 105 in the old Act stands re-drafted as section 134(1) of the new Act. Sub-section (2) of section 134 is a new provision. Under that sub-section, for the purposes of clauses (a) and (b) of sub-section (1), a "District Court having jurisdiction" is stated to mean notwithstanding anything contained in the Code of Civil Procedure or any other law for the time being in force, to include a District Court within the local limits of whose jurisdiction, at the time of institution of the suit or other proceedings, person instituting the suit or proceeding 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. Therefore under section 134(2) of the new Act, notwithstanding anything contained in the Code of Civil Procedure or any other law for the time being in force, the plaintiff can move the District Court within whose jurisdiction he actually and voluntarily resides or carries on business. In other words, under sub-section (2) of section 134 of the new Act, the plaintiff has option either to go before the court within whose jurisdiction he is carrying on business - that being the sole cause of action or before any other court, where the cause of action has arisen. Such an option was not available under section 105 of the old Act.

It is clear from the above that the change brought about under section 134(2) of the new Act is only giving an additional option to the party complaining of infringement of trademark to go before a court within those jurisdiction he carries on business and such a change do not affect the existing rights available under the old Act namely, under section 105 of the old Act, which is imparie materia with section 134(1) of the new Act. Accordingly the Chennai High Court held that the situs of the trade mark (stated to be infringed), being situated in the appropriate office of the Trade Marks Registry at Chennai, would give a cause of action for the plaintiff to come before this Court.

The other ground for revocation of the leave granted was that as the head office of the Trade Marks Registry is situated at Mumbai, suits, if any, can be filed only there. It is pertinent to note here that Officine is mainly relying upon the situs of the trademark as giving him a cause of action to move this Court. Section 5 of the Trade Marks Act, 1999, provides for a Trade Marks Registry and there is no dispute that the head office of the Trade Marks Registry, as specified by the Central Government, for the purpose of facilitating the registration of trade marks, is at Mumbai and there are various branch offices of the Trade Marks Registry. Under section 6 of the "1999 Act", a record called the Register of Trade Marks shall be kept at the head office of the Trade Marks Registry, wherein all the details relating to the registered trade mark shall be entered. Under sub-section (6) of section 6 of the "1999 Act", a copy of the register and such of the other documents mentioned in section 148 of the Act shall be kept in each branch office. Under Rule 4(a)(ii) of the Trade Marks Rules, 2002, the appropriate office of the Trade Marks Registry for the purpose of making an application for registration of a trade mark under section 18, or for other purposes mentioned in Rule 4, shall be where there is no entry in the register as to the principal place of business in India of the registered proprietor at the place mentioned in the address for service in India as entered in the register. In other words, the address for service of the registered proprietor, if there is no entry in the register as to it's principal place of business in India, then the branch office of the Trade Marks Registry within which such address for service is situated would be the appropriate office. It is not in dispute that the address for service of the plaintiff, when it moved for it's registration of trade mark, is within the jurisdiction of the trade marks branch office at Chennai and therefore it would be the appropriate office. Therefore, though the trade mark is registered and reflected in the register maintained in the head office of the Trade Marks Registry at Mumbai, yet the Trade Marks Registry's branch office at Chennai would be the appropriate office for the purpose of section 18 of the Trade Marks Act. As already stated, section 18 deals with an application for registration of a trade mark. Reading sections 5 and 6 of the "1999 Act" with Rule 4 of the Rules, there is no difficulty at all in concluding that the situs of the trade mark involved in this case is at Chennai.

A registered trade mark is a proprietary right and therefore it is property; though the head office is at Bombay, the branch office, including the one at Madras have independent territorial jurisdiction regarding the powers conferred under the Act; therefore there can be no doubt that in respect of the trade mark registered at the Madras office, the situs of the property in the mark is at Madras and therefore there can be a little doubt that the alleged infringement is not only at a place where the defendant markets his goods but also where the plaintiffs property itself is situated [1977-1-MX. J. 286] in S.B.S. Jayam & Co v. Krishnamoorthi as higher Court [Division Bench].

Also in [A.I.R. 1991 Madras 277] Amrutanjan Limited v. Ashwin Fine Chemicals & Pharmaceuticals it was held that "the registration of the trade mark being at Madras office, the situs of the property in the registered trade mark is deemed to be at Madras".

The above referred to case laws make it abundantly clear that the situs of the trade mark would give a cause of action for the party complaining infringement of the said trade mark to go before the court within whose jurisdiction the said situs is situated.

In the instant case, the plaintiff was not before this Court claiming for any relief on a contract, dealing or transaction against the defendants. But on the other hand, the plaintiff is only complaining about the infringement of its trade mark.

The Chennai Court confirmed the Leave in favor of Officine, to institute infringement proceedings against the Defendant within the jurisdiction of the Chennai Court and held that the Court had rightly granted Leave and that there was no need to revoke the same on any of the grounds raised by the Defendant as none of them could stand ground in relation to the spirit of the New Trade Marks Laws.

© Lex Orbis 2005

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions