India: Registration Of Trademarks: Important For Ascertining Jurisdcition

Last Updated: 5 August 2007
Article by Manisha Singh Nair

The procedural aspects of any suit are as important as the substantive side and amid that, to assert on the subject of the competent jurisdiction of the court has always been controversial. The instant judgment in the First Appeal from Order in Dharampal Premchand Ltd versus Golden Tobacco Products 2007 (34) PTC 633 (Del.) (DB) discusses the territorial jurisdiction in a composite suit for infringement of trademark, copyright and passing off.

Briefly stated the facts of the case are that the Plaintiff/Appellant, Dharampal Premchand Ltd. had filed a suit for the infringement of its trademark "Baba", for breach of its copyright, and for passing off. The Defendant/Respondent, Golden Tobacco Products has adopted the mark "Babu" which according to him is distinct from "Baba", and is incapable of causing any confusion in the minds of any prospective purchasers.

The learned Single Judge came to the conclusion that the Court would not have jurisdiction in respect of the relief of passing-off, and thus rejected the plaint. The Appellant/ Plaintiff preferred an appeal while acknowledging and submitting that that relief of passing off would be taken up in the court of competent jurisdiction. And accordingly, the Appellant/Plaintiff applied for the Court’s leave to amend the plaint particularly to remove the relief of passing off from the prayer. However, the Appellant/Plaintiff further submitted that so far as the prayer pertaining to the infringement of the Plaintiff’s trademark and copyright is concerned, Courts in Delhi undoubtedly possess territorial jurisdiction by virtue of Section 134 (2) of the Trademarks Act, 1999 as also Section 62 (2) of the Copyright Act, 1957 and the impugned Order be set aside as the Court has not dealt with the Plaintiff’s application for amendment of the plaint on merits.

Section 134 (2) of the Trademarks Act, 1999 and Section 62 (2) of the Copyright Act, 1957 confers territorial jurisdiction in the courts to try suit for infringement of trademarks and copyright, respectively, within the local limits of whose jurisdiction the plaintiff resides or carries on business or personally works for gain, at the time of institution of the suit or other proceedings. However, the provisions of Section 134 (2) of the Trademarks Act, 1999 applies only in the case of infringement of a registered trademark and have no application for the relief of passing off for unregistered trademarks. A passing off action for unregistered trademark can only be instituted in a court within the local limits of whose jurisdiction the defendant resides or carries on business or personally works for gain or the place where the cause of action or any part thereof arises.

The Respondent relied on a number of judgments and the matter stood concluded that where a plaint is filed in a court not having jurisdiction to try all the different causes of action set out in the plaint, then the Court ought to retain the cause of action having territorial jurisdiction and remove from the plaint, the part which is beyond its jurisdiction. In other words, the Court can entertain the prayer for infringement of trademark and copyright, segregating the relief of passing off.

The Appeal was thus allowed and the impugned Order was set aside to the extent that it rejects the plaint with regard to the relief of infringement. It was also discussed that retaining the lis and striking off from the plaint that part which the court holds beyond its jurisdiction does not enable the court to gain jurisdiction where initially there was none.

The recent judgment of the Supreme Court of India in Dodha House v S K Maingi, 2006 (32) PTC 1 (SC), the Supreme Court did not allow causes of action arising from infringement of a registered trade mark to be joined with passing off action regarding the same product against the same defendant because the lower court was found to have jurisdiction only regarding infringement proceedings, and not for passing off. The Court held that a civil court would not have jurisdiction to grant relief against acts of passing off as well as infringement if the suit was instituted in a jurisdiction where neither the defendant was carrying on business nor the infringing goods were sold in a genuine commercial sense. The Dodha House judgment now means that securing registration of trademarks in India is even more important, as it might now be inconvenient to rely on common law rights for brand protection in India.

© Lex Orbis 2007

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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