• IRALR

JURISDICTION IN TRADEMARK LITIGATION

This article is authored by Gayatri Sharma a 3rd year student at GGSIPU





Preface


For a very long time, India has been known to constitute and avail every notion of goods and services amongst the group of developing nations. In other words, India has a mixed market system wherein most industries can set themselves freely. It should be noted that each one of those industries that have reached the pedestal of recognition in the market by their target consumers, have adhered to the concept of brand recognition and, as many would confer to the fact that the most beautiful form of flattery is imitation itself, India came in need of demarcating the scope of their individual brand name or value. This is where the concept of Trademark was inducted in to the country’s legislation. A trademark gives out the distinction to the product or service and acknowledges its core competency which creates a brand value in the minds of the consumers. The Trade Mark Act, 1999 is administered presently under the Trade Mark Registry which was instituted in India in 1940.[1]


Earlier Position of Jurisdiction


The Trademarks Act, 1999 was initiated to try to reduce fraudulent behavior within the companies. Trademark enforcement in every country has its complexities, and India is no different.[2] In light of statutory and judicial principles, the earlier position litigation was covered only under the provision Section 20 of the Civil Procedure Code, 1908. This provision shared precise notions about the geographical jurisdiction of the defendant’s residence and hence, only under that territory did judicial proceedings follow. It also focused on either the defendant’s residence or the area where business was ventured upon or even where the cause of action arose. Soon after, an organization came under the purview of the judicial system which was responsible for dealing with the protection of trademarks which went by the name of the Indian Patent Office administered by the Controller General of Patents, Designs and Trademarks.


Additional Legislations


In India, Trademark Infringement suits are also considered cognizable offences, which means that the Courts can charge the guilty side with a criminal proceeding along with a civil proceeding. Between the years 2015 and 2016, the Trademark Infringement jurisdictions begin to cover civil proceedings in relation with Trademarks and Copyrights.

Section 134 of the Trademark Act, 1999 gives the right to the plaintiff to file a suit before the District Court. Along with this, under Section 62 of the Copyright Act, 1957 administers the applicable jurisdiction. It is imperative to put into perspective that both the above-mentioned Sections should necessarily be read with Section 20 of Civil Procedure Code, 1908 (CPC) so that the plaintiff may avail the justifiable rights.[3]

These provisions allow the plaintiff to file the suit within his jurisdiction. In other words, the plaintiff does not have to follow the obligations of proceeding to the district court where the defendant lies or carries business. Hence, it suffices to point out the fact that Section 134 of Trademark Act, 1999 and Section 62 of the Copyright Act, 1957 does not enshrine a derogatory power towards Section 20 of Civil Procedure Code, 1908 (CPC) but instead compliments the provision to give superiority to the right of the plaintiff.


Scope of ‘Carrying on Business’


The term ‘Carrying on Business’ has varied in the sense that earlier, to file a suit, the jurisdiction would lie in the place of business where the defendant lies. But, after many cases, this provision has been amended for the jurisdiction to lie on the plaintiff itself. ‘Carrying on Business’ is the term which construed a place where the business of the infringed Trademark Company gains its profits or conducts its work affairs. The High Court of Delhi[4][5] has laid down certain rulings which demarcate the access of territorial jurisdiction and justify the laws relating to the plaintiff’s necessity under several states of affairs. These scenarios are-


1. If the Plaintiff’s sole office and the location of cause of action of infringement differ, then the territorial will be that of the plaintiff’s sole office.

2. If the Trademark owner’s principal office and the location of subordinate office differ and the cause of action of the infringement has arisen in the arena of the Trademark owner’s principal office, then the territorial jurisdiction will be that of the Trademark owner’s principal office and not the subordinate office.

3. If the Trademark owner’s principal office and the location of subordinate office differ and the cause of action of the infringement has arisen in the arena of the subordinate office, then the suit for Trademark infringement will be filed under the territorial jurisdiction of the location of the subordinate office and not that of the principal office of the Trademark owner.

4. If all the three locations differ i.e., the Trademark owner’s principal office, subordinate office and the location of cause of action of infringement, then the suit will be filed under the territorial jurisdiction of the location of the Trademark owner’s principal office.

Although the rights of the plaintiff are justifiable, in some instances, the court invokes the doctrine of forum non conveniens which is Latin for non-agreeing which further implies that the Court can use its discretionary power and refuse to take jurisdiction.


Conclusion


Intellectual Property Rights have prevailed in India as an impeccable legislation which covers the basic concern of not only the companies that are already established but also to those who want to start up and are in the initial stages of becoming entrepreneurs. Therefore, it suffices to say that the Government has provided them a scope of distinction and has given them a Unique Selling Point (USP) by way of Trademark Laws. However, with the development of Artificial Intelligence, a more convenient way to tackle the fraudulent behavior can be inducted. Therefore, as a solution, if every Company can legally distinguish their marks and officially allow the authorities to display their names upfront, it can lead to reduction of cases. This can be done with the help of new ranging technologies whereby the same mark cannot legally be used by another company. This can be understood better from the application of a distinct username provided by many applications like Gmail, Yahoo and many more platforms wherein the same tag, if used will not be accepted. This can not only reduce the number of cases but can also save a lot of time and effort which can be put to better use.

[1] http://www.ipindia.nic.in/trade-marks.htm [2] Aanchal M Nichani and N V Saisunder, India Jurisdiction Report: Picking the Right Jurisdiction, World Intellectual Property Review WIPR, (February 18, 2019), https://www.worldipreview.com/contributed-article/india-jurisdiction-report-picking-the-right-jurisdiction [3] See also Indian Performing Rights Society v. Sanjay Dalia & Anr., FAO(OS) 359/2007 & CM 12471/2007 (New Delhi.: 2008) [4] See also Ultra Home Construction Pvt. Ltd v. Purushottam Kumar Chaubey & Ors., FAO (OS) 494/2015 & CM 17816/2015 (New Dehi.: 2015) [5] See also Burger King Corporation v. Techchand Shewakramani (2015)

 
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