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

Last Updated: 27 June 2005
Article by Manisha Singh Nair

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.

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