India: The Apex Court On Jurisdiction In IP Intrusion Cases

Last Updated: 27 May 2008
Article by Manisha Singh

The Supreme Court of India in its recent Judgment1 dismissed the appeal of Dabur Industries on grounds of lack of territorial jurisdiction to entertain the matter.

The said claim by Dabur Industries was first filed in High Court of Delhi in the year 2002 seeking permanent injunction against the defendant, K.R.Industries on two grounds:

Firstly to restrain them to reproduce any of the artistic feature of the plaintiff's Dabur Red tooth Powder including colour combination, get up, lay out, arrangement or packaging which shall amount to infringement of a copyright as the work was claimed to fall within the meaning of "artistic work" as defined by Section 2(v) (c)2 of the Copyright Act, 1957.

Secondly to manufacture and sell or offer to sell tooth powder which is an imitation or substantial reproduction of the plaintiff's Dabur Red Tooth Powder that shall amount to passing off3.

The respondent's application for rejecting the plaint u/Order 7 Rule 11, Code of Civil Procedure, 1908 was accepted by the single judge of high court on grounds of lack of jurisdiction, the respondent company being a resident of Andhra Pradesh.

An intra court appeal was dismissed thereby relying upon Dhodha House Judgment4. (Fact that the plaintiff resided within the jurisdiction of the court would not empower the court to undertake the proceeding unless cause of action arose there) The plaintiff also failed to prove that defendants carried out business in Delhi.


While dismissing the appeal it was also mentioned that a suit for infringement of copyright and passing off cannot lie in the same forum, since Section 62 Copyright Act, 1957 provides for an additional forum which is not the case with passing off5.

Section 62(1) of the Copyright Act, 1957 defines a "district court having jurisdiction" to include the district court where the plaintiff resides, whereas the Trademark Act doesn't confer any such jurisdiction. The question that came into consideration in the Dhodha Case was that whether the said district will have jurisdiction, the cause of action being both in terms of the Copyright and the Trademark Act.

Division Bench of the High Court held that whereas the HC shall have jurisdiction to determine the matter based on the copyright infringement, the plaintiff is entitled to file for a fresh suit or passing off.

This Hon'ble Court has concurred with the aforesaid view holding that it stood clear after reading the said provisions of the Copyright and Trademark Act that an additional forum i.e. district court within the jurisdiction of which the plaintiff resides, was provided for, only in the case of copyright infringement6 or a registered trademark7 but not for passing off8.

It has been made explicit after the Dhodha House9 judgment that an order passed by the Court having no territorial jurisdiction shall be a nullity.


In the Patel Field caseo10, it was observed by the Court that when there are two cause of action, under the Code of Civil Procedure, the forum, which has the jurisdiction to entertain both the cause of actions, should be approached.

In the Dhodha Judgment11 the Court observed that a composite suit based on infringement of trade mark, copyright, passing off and for rendition of accounts of profits as also injunction having been filed, the Delhi High Court had the territorial jurisdiction to entertain the suit.

This would imply that where a copyright is infringed the Court shall have the incidental power to invoke jurisdiction. The judgment cannot, however, be taken to mean that two suits having different causes of action be club together as a composite suit.

The language of Order II Rule 3 of the Civil Procedure Code makes it clear that a composite suit cannot entitle a court to entertain a suit in respect of which it has no jurisdiction.


While considering Section 6212 and Section 13413, the Court has observed that when the latter was framed the legislature was aware of the provisions of an additional forum in the former and thus it was the intent of the legislature not to include the same in the latter. The exclusion in case of passing off was a result of conscious effort by the legislature, which shall not be overlooked. The Court has followed a literal manner of interpretation of the text which is apt according to the present matter.

For interpretation of Section 5514 of the Copyright Act, 1957 the Court has undertaken a narrow interpretation which at the same time seems appropriate, whereby it was concluded that the phrase "as are or may be conferred by law for the infringement of a right" cannot be taken to mean as any other law, which, when violated, may give rise to a separate cause of action.

However, at the same time, the Court consented that it may grant incidental relief where it has the power to adjudicate and not otherwise.

In the said matter, the Court had the power to adjudicate by virtue of Section 62(2) of the Copyright Act, 1957 whereas the primary ground of violation was present in the Trademark Act, 1958. Thus, the provisions of the former could not be invoked merely to grant the jurisdiction to adjudicate. It could also not be established that the defendant carried out business in Delhi or goods manufactured by them were sold or were available in the market of Delhi, which if proved would have conferred the jurisdiction on the court through Section 20 of the Civil Procedure Code. Thus considering the aforesaid reasons the appeal was dismissed.


1 Dabur India Ltd. v. K.R.Industries; CIVIL APPEAL NO. 3637 OF 2008; Supreme Court of India

2 Section 2 (v)(c) "artistic work" means-

(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a

photograph, whether or not any such work possesses artistic quality;

(ii) work of architecture; and

(iii) any other work of artistic craftsmanship;

3 Common Law Tort to enforce an unregistered trademark.

4 Dhodha House v. S.K. Maingi (2006) 9 SCC 41

5 Under Section 134 of the Trademark Act, 1999 for the purpose of an unregistered trademark, "District Court having Jurisdiction" does not include where the plaintiff resides.

6 Section 62, Copyright Act, 1957.

7 Section 134, Trademarks Act, 1999

8 Section 134, Trademarks Act, 1999

9 Dhodha House v. S.K. Maingi (2006) 9 SCC 41

10 P.M. Diesels Ltd. v. M/s. Patel Field Marshal AIR 1998 Delhi 225

11 Dhodha House v. S.K. Maingi (2006) 9 SCC 41

12 Copyright Act, 1957

13 Trademarks Act, 1999

14 55.Civil remedies for infringement of copyright - (1) Where copyright is any work has been infringed, the owner of the copyright shall, except as otherwise provided by this Act, be entitled to all such remedies by way of injunction, damages, accounts and otherwise as are or may be conferred by law for the infringement of a right.

© Lex Orbis 2008

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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