In Indian Performing Rights Society Limited v Dalia and Advance
Magazine Publishers Inc v Just Lifestyle Pvt Ltd (CA Nos
10643-10644/2010 with CA No 4912/2015 @ SLP (C) No 8253/2013), the
Supreme Court, on 1 July 2015 has dismissed the appeals filed by
the Indian Performing Rights Society Limited (IPRS) and Advance
Magazine Publishers Inc (Advance Magazine) against orders of the
High Court of Delhi, and held that if a plaintiff is residing or
carrying on business at a place where the cause of action has also
arisen, either wholly or in part, it has to file suit at that
place. Both cases concerned the place of institution of the suit -
the IPRS case is related to Section 62 of the Copyright Act 1957
(Copyright Act), while the Advance Magazine case is related to
Section 134 of the Trade Marks Act 1999 (TM Act).
IPRS and Advance Magazine (collectively referred to as the
plaintiffs) had filed suits for copyright infringement and
trademark infringement, respectively, in the High Court of Delhi on
the ground that they had a branch office in Delhi. In both matters,
the Division Bench of the High Court of Delhi upheld the
defendants' objection that the suits could not be filed in the
High Court of Delhi based merely on the fact that the
plaintiffs' branch office was located in Delhi, without the
cause of action also arising there.
In the appeals before the Supreme Court, the plaintiffs
submitted that, under the provisions of Section 62(2) of the
Copyright Act and Section 134 of the TM Act, they had a
'special right' to file suit where they carried on their
business. To support this argument, the plaintiffs referred to the
'non-obstante clause' to the applicability of the Code of
Civil Procedure 1908 (CPC) (which contains provisions relating to
the institution of suits where the defendant resides or a cause of
action arises) contained in the aforementioned sections of the
Copyright Act and the TM Act, and submitted that the accrual of a
cause of action (wholly or in part) as mentioned in Section 20 of
Code of Civil Procedure 1908 was unnecessary.
On the other hand, the defendants contended that the abuse of
those sections of the Copyright Act and TM Act by multi-national
companies, in order to harass and inconvenience defendants, could
not be permitted.
After considering the submissions of the parties, the Supreme
Court dismissed the appeals, holding as follows:
A plaintiff's 'special
right' under the Copyright Act and the TM Act is subject to the
rider that, where the plaintiff resides or is carrying on business
at a place where the cause of action has also arisen, wholly or in
part, the suit should be filed at that place, and not at other
places where the plaintiff has a branch office; and
As explained in Heydon's Case [76
ER 637], the interpretation of the provisions "has to be such
which prevents mischief". Similarly, avoidance of
counter-mischief by the defendant is also necessary, while
providing a remedy to the plaintiff (referring to the
plaintiff's 'special right').
Does the 'special right' entitle the plaintiff to file
an infringement action at a location of their head office
irrespective of the fact that the cause of action has not arisen at
the location of the head office? Or if the plaintiff also carries
on business at the location of the defendant's location, the
plaintiff has to file the infringement action at such
defendant's location irrespective of the location of the
plaintiff's head office? Whether having branch offices across
India proves to be an advantage or a disadvantage in order to rely
on that 'special right' would need to be seen from future
Nevertheless, this decision has already opened up a new defence
for the defendants in on-going matters. The impact can
already be felt especially in the High Court of Delhi which is
known to grant ex parte orders more readily than other
jurisdictions in India. Over the years the said readiness has
prompted large companies to utilise (whether rightly or wrongly)
their 'special right' under Section 62(2) of the Copyright
Act and Section 134 of the TM Act to institute suits in Delhi.
The decision also has significance under the Indian litigation
procedures which are complex with CPC itself having its own
amendments for various Indian states. More so, the complexities
increase in case of chartered courts like the Bombay High
If convenience of either parties (whether the plaintiffs or
defendants) is to be fairly considered, special IP courts with
uniform procedures is the need of the hour. Until then, issues such
as jurisdiction are likely to be raised.
"This article first appeared on WTR Daily, part of
World Trademark Review, in (July/2015). For further
information, please go to www.worldtrademarkreview.com."
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This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
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