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