A very important issue regarding the jurisdiction of courts to entertain suits for infringement of trademarks/ copyright arose for consideration before the Division Bench of the Hon'ble Supreme Court in the case of Indian Performing Right Society Limited vs. Sanjay Dalia and Anr., Civil Appeal nos. 10643-44 of 2010 dated July 1, 2015 where the Hon'ble Supreme Court interpreted the provisions of section 62 of the Copyright Act, 1957 ("Copyright Act") and section 134 of the Trade Marks Act, 1999 ("Trade Marks Act") in light of the provisions of section 20 of the Code of Civil Procedure, 1908 ("CPC") to determine the jurisdiction of the courts to entertain infringement suits/ proceedings.

Facts –

In appeals, the following cases were before the Hon'ble Supreme Court –

  1. In the first case, the plaintiffs/ appellants (IPRS) filed a suit before the Hon'ble Delhi High Court for infringement of their copyright by the defendants/ respondents who owned theatres in Maharashtra and Mumbai. The head office of the plaintiff was situated in Mumbai and the cause of action, as alleged in the plaint, had arisen in Mumbai, Maharashtra. The suit for infringement was filed in Delhi, which was objected to on the ground of lack of jurisdiction. The Single Judge and Division Bench upheld the objection and held that in the facts of the present case, Suit should have been filed before Court at Mumbai.
  2. The second case was filed for trademark infringement where the registered office of the plaintiff (Vogue India) is in Mumbai. The magazine is processed and published in Mumbai. The plaintiff filed a suit against the defendant in Delhi for infringement of their trade mark because the plaintiff has a branch office in Delhi, which was objected to on the ground of lack of jurisdiction. Whilst the Single Judge upheld the objection, the Division Bench set aside order of Single Judge in appeal.

Whilst, dismissing the appeals, the Hon'ble Supreme Court held as follows –

"47. In our opinion, the provisions of section 62 of the Copyright Act and section 134 of the Trade Marks Act have to be interpreted in the purposive manner. No doubt about it 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. He need not travel to file a suit to a place where defendant is residing or cause of action wholly or in part arises. However, if the Plaintiff is residing or carrying on business etc. at a place where cause of action, wholly or in part, has also arisen, he has to file a suit at that place, as discussed above. Thus, for the aforesaid reasons mentioned by us in the judgement, we are not inclined to interfere with the orders passed by the High Court. Appeals are hereby dismissed. No Costs"

Some of the relevant observations made in the said judgment leading to the aforesaid conclusion are provided below:

"18. In our opinion, in a case where cause of action has arisen at a place where the plaintiff is residing 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 would oust the jurisdiction of other place where the cause of action has not arisen though at such a place, by virtue of having subordinate office, the plaintiff instituting a suit or other proceedings might be carrying on business or personally works for gain."

"19. ...in case plaintiff resides or has its principal place of business/ carries on business or personally works for gain at a place where cause of action has also arisen, suit should be filed at that place not at other place where plaintiff is having branch offices etc."

Conclusion

Whilst the provisions of section 62 of the Copyright Act and section 134 of the Trade Marks Act enable the Plaintiff to file suit or proceedings depending upon its place of residence or business without any reference to or considering the place of cause of action, in view of the above judgment, even the place of cause of action would be required to be taken in to account for determination of jurisdiction.

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