Tuesday, 27 September 2022

Issues of Jurisdiction in IP laws

Intellectual property law is the rising sun of India. Churping of birds attract the human attention in morning, like wise, issue of Jurisdiction in IP cases attract the attention of legal fraternity.The issue of Jurisdiction is Venus in the galaxy called 'IP laws'.
Let me discuss the issue of Jurisdiction in IP laws in accordance with the respective Acts.
1) TRADEMARKS ACT,1999.
(A) Suit for Infringement of Trademark 
 Illustration
Mr. A is a registered proprietor of a Trademark 'X' for goods 'Y' in Ahmedabad.  The case of Mr. A is that Mr. B carrying on business in Mumbai, is using identical and/or deceptively similar Trademark for the identical goods  and thereby Mr. B is infringing the statutory rights of Mr. A.
Mr. A is willing to file a suit for infringement of Trademark.  Which court has jurisdiction to entertain and adjudicate the case of Mr. A. ?
Answer of this question is district court of Ahmedabad has jurisdiction to entertain and adjudicate the suit for infringement of Trademark as the words " the person/s  instituting the suit,actually  and voluntarily resides or carries on businesd or personalky works for gain " are used   the provisions of section 134 (2) of the Trademarks Act,1999. Further, section 134(2) begins with the words " For the purpose of clauses (a) and (b) of sub- section (1), District Court having jurisdiction .."  Hence what section 134(1) says is  required to be seen. 
Section 134 (1) says, " No suit 
(a) for the infringement of a registered trademark ; or
(b) relating to any right in a registered trade mark ; or 
(c) for passing off arsing out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trademark ,whether registered or unregistered. shall be instituted in any court inferior to a District Court having jurisdiction to try any suit. 
Now if the provisions of 134(1) and (2) of the Act are required to be read combinedly.  Such combined reading establishes that clause (c) of section 134 (1)  is not incorporated in  the provisions of section 134(2). Only (a) and (b) of sub section 1 are incorporated. Hence section 134 is applicable only for infringement of registered trademark and not for passing off action, hence Mr. A of the above-mentioned illustration is entitled to file a suit of infringement of his registered Trademark in Ahmedabad District Court.
(B) Suit for Passing off Action
As far as passing off action is concerned, the provisions of section 134 of the Act, is not applicable.
In that case  if Mr. A of illustration is willing to take action of passing off action in Ahmedabad, he has to establish that the goods of Mr. B under the impugned trademark is being sold in Ahmedabad at the time of file of suit for passing off action. That means his action is based on the terms " where the cause of action is arisen". It means section 20 of CPC is invoked because section 134 of Trademarks Act is silent about the terms "where the cause of action arises". Hence the help of section 20 of CPC is required to be taken for filing a suit in Ahmedabad Court by Mr. A for passing off action along with infringement action. 
Suppose the goods of Mr. B is not being sold in Ahmedabad,  then ? 
Under such circumstances, Mr. A is only entitled to file a suit for infringement action in Ahmedabad Court and not for passing off action.  A suit for passing off action is to be filed in Mumbai where Mr.B resides, carries on business or works for personal gain or cause of action arises in view of section 20 of CPC. 
(C) Suit for groundless threat u/s.142 of the Trademarks Act,1999:
The plain reading of section 134 read with 142 of the Trademarks Act, does not invoke the provisions of section 134 as it is silent about the filing of suit for groundless threat as mentioned in section 142 of the Act. Meaning thereby, suit for groundless threat can not be filed on the basis of the terms " the person/s  instituting the suit,actually  and voluntarily resides or carries on businesd or personalky works for gain " as mentioned in section 134 of the Act, but it can be filed on the basis of the (1) cause of action being arisen and (2) where the defendant resides or  carry on business or works for personal gain in accordance with the provisions of section 20 of CPC. Section 142(4) only speaks about instituting the suit in District Court but it is silent about which District Court.

2) THE COPYRIGHT ACT,1957
(A) Suit for infringement of Copyright:
Example
Mr. A is an author and owner of a book, residing in Ahmedabad. Mr. B, a resident of Mumbai makes a substantial and material reproduction of the book of Mr. A for sale of it in Mumbai and thereby infringes the Copyright of Mr. A. Which District Court has jurisdiction,  Ahmedabad Court or Mumbai Court ? 
The wordings of the provisions of section 134 of Trademarks Act, 1999 are similar to that of the provisions of Section 62 of the Copyright Act,1957. Meaning thereby, whenever there is infringement of Copyright, suit is filed in the court where plaintiff resides or carries on business or works for personal gain. Hence, the answer is Ahmedabad District court has jurisdiction as per section 62 of Copyright Act, of course, Mumbai Court has also jurisdiction to entertain and adjudicate the suit on the basis of ' cause of action being arisen' as per section 20 of CPC.
(B) Suit for groundless threat:
Section 60 of the Cooyright Act,1957 talks about the legal proceedings for groundless threats. The question is arisen that  whether the term " or the infringement of any other right " as mentioned in section 62(1) includes the right to file a suit for groundless threat? If yes, then ,as per  section 62 (2), the suit for groundless threat can be filed where the plaintiff of that suit actually or voluntarily resides or carries on business or personally works for gain. The proceeding of groundless threat is considered as civil proceeding arising under chapter 12 I.e. civil remedies of the Copyright Act.

3) The Designs Act, 2000
A) Suit for infringement of Copyright in Design:
Illustration:
Mr. A, being situated in Ahmedabad, is a registered proprietor of a design of an article and has copyright in design of that article.  The design of that article  is infringed by B who is situated in Kolkatta. 
Which court has jurisdiction to entertain and adjudicate the suit for infringement of registered design in this case ? 
Answering this question, let the second proviso of provisions of section 22 (2) of the Designs Act,2000 be referred. This second proviso says that suit seeking relief under S. 22(2) shall be insituted in the court of District Judge. This provision is client about the institution of the suit of which court, either the court where plaintiff is situated or the court where the defendant is situated or the court where the cause of action is arisen. Section 22 of the Act has no such wordings as  "the person/s  instituting the suit,actually  and voluntarily resides or carries on businesd or personalky works for gain "  which are provided in section 134 of the Trademarks Act,1999 and in section 62 of the Copyright Act, 1957. 
Hence, it is established that the intention of legislature is very clear that suit for infringement of design is not filed in the District Court where the plaintiff is situated or is residing or carrying on businesd or is working for personal gain, otherwise the above mentioned terms should have been mentioned in section 22 of the Designs Act. 
Under such circumstances, the person, who is registered proprietor of a design, has two options for  instituting a suit for infringement of registered design against the defendant in the District Court  (1) where a defendant resides or carries on business or personally works for gain or (2) where the cause of action arises in view of provisions of section 20 of CPC.
(B) Suit for groundless threat:
Section 23 of The Designs Act,2000 is related to the issue of groundless threat. This provision is based on the provision of section 106 of the Patents Act, 1970 as per the provisions of secrion 23 itself.  Further, section 23 is silent for issue of instituting the suit for groundless threat in respect of jurisdiction. In other words, which District court has jurisdiction for filing suit of groundless threat is not mentioned in the entire Act.  As section 23 is based on section 106 of the Patents Act, it is required to be read with section 104 of the Patents Act, for issue of jurisdiction which says that District Court has jurisdiction for  a suit for declaration under section 105 or for any relief under section 106 or for infringement of a patent. Further, here in this provision of 104, the word 'district court' is used, hence we need to reply upon the definition of 'district court' defined in section 2(e) of the Patents Act. This definition says, " district court has the meaning assigned to that expression by the Code of Civil Procedure, 1908." Meaning thereby the provisison of CPC which enlightens the definition of district court is required to be seen. It is provided in definition clause  section 2(4 )of CPC. I.e. "district" means the local limits of the jurisdiction of a principal Civil Court of original jurisdiction (hereinafter called a "District Court"), and includes the local limits of the ordinary original civil jurisdiction of a High Court.

4) The Patents Act, 1970
(A) Suit for infringement of Patent:
The Patents Act is silent about filing of a suit of infringement of Patent either in a court where pantee is situated or in a court where the defendant is situated. Section 104 of the Patents Act only speaks that suits for declaration or for infringement of Patent shall be insituted in District Court. Hence, such suit can be filed with the help of the provisions of CPC as the special statute is silent about the fact that which District Court has jurisdiction to entertain and adjudicate the suit for infringement of Patent.
(B) Suit for groundless threat:
Section 106 of the Patent Act is invoked for instituting the suit for groundless threat. This section is to be read with section 104 of the Act for issue of Jurisdiction as the provision of section 104 is for Jurisdiction as discussed in earlier paragraph.
So neither the designs Act or the Patents Act says about the intitution the suit likewise the provisions of section 134 of the Trademarks Act or the provisions of 62 of the Copyright Act.  In otherwords, both the designs Act and patents Act are silent about such terms which have been provided in s.134 (2) of the Trademarks Act and S.62(2) of the Copyright Act. 
5) The Geographical Indications of Goods (Registration and Protection) Act, 1999:
(A) Suit for infringement and Passing Off Action:
The provisions of Section 66 of this Act is as equal as the provisions of Section 134 of the Trademarks Act,1999. Hence the same rule of jurisdiction  is applicable what has been stated earlier for infringement of trademarks and for passing off action. 
(B) Suit for Groundless threat: 
Section 73 of the Act deals the the provisions of groundless. S. 73(4) says that a suit for groundless threat is insituted in District Court. Hence S.73(4) is read with the definition of district court defined in S.2(d) of the Act. We find approximately the same wordings of definition clause as are provided in S. 2(e) of the Patents Act.
6) The Protection of Plat Varieties and Farmers' Rights Act, 2001: 
Infringement of a registered variety:
Section 65(2)  of this Act clearly establishes that suit for infringement a variety registered under this Act is insituted in a District Court within the local limits of whose jurisdiction the cause of action arises. In this section there is omission  of the term the person/s  instituting the suit,actually  and voluntarily resides or carries on businesd or personalky works for gain "  or  "where the defendant resides or carries on business or personally works for gain". 
It is found that this section gives important to the cause of action being arisen, irrespective of place of plaintiff or defendant.  The term ' passing off action ' is not mentioned in the Act.
7) The Semiconductor Integrated Circuits Layout-Design Act,2000
There is no civil remedy available under this Act. A complaint in writing by registered proprietor or the registered user of a layout design for infringement is filed in competent criminal court. Section 56 read with S.18 of the Act.
8) The Biological Diversity Act, 2002:
There is no role of civil court  as no civil remedy is available in this Act. 
9) OTHER ISSUES PERTAINING TO JURISDICTION IN IP LAWS: 

a) Whether a jurisdiction of a court can be invoked on the basis of accessibility of website ? 
The asnwer of such question is in negative. Because internet can be accessed from any corner of the world, so the plaintiff can not invoke the jurisdiction of any court, provided that substantial sale transaction of infringing goods is being sold through website. For answering this issue i am quoting  the following paragraph.
"Para no. 58 of the judgement of Hon'ble Delhi High Court (DB) in the case of Banyan Tree Holding (P) Ltd. Vs. A. Murali Krishna Reddy & Anr. Question (i): For the purposes of a passing off action, or an infringement action where the Plaintiff is not carrying on business within the jurisdiction of a court, in what circumstances can it be said that the hosting of a universally accessible website by the Defendants lends jurisdiction to such Court where such suit is filed ("the forum court")?

Answer: For the purposes of a passing off action, or an infringement action where the Plaintiff is not carrying on business within the jurisdiction of a court, and in the absence of a long-arm statute, in order to satisfy the forum court that it has jurisdiction to entertain the suit, the Plaintiff would have to show that the Defendant "purposefully availed" itself of the jurisdiction of the forum court. For this it would have to be prima facie shown that the nature of the activity indulged in by the Defendant by the use of the website was with an intention to conclude a commercial transaction with the website user and that the specific targeting of the forum state by the Defendant resulted in an injury or harm to the Plaintiff within the forum state."
b) Whether a court has jurisdiction on the basis of establishment of  Trademark Registry ?
If the TM Registery is situated in Ahmedabad, and the defendant has applied his trademark before Ahmedabad TM Registey, can the jurisdiction of Ahmedabad Dist Court invoke on the basis of establishment of TM Registey in Ahmedabad ? 
The answer is in negative. There is no such provision available in IP Acts. 
c) Whether jurisdiction of Court can be invoked on the basis of IP lawyer is practising in particular court ?
The answer is in negative. 
d) Whether Court has jurisdiction for composite suit ?
Yes composite suit is maintainable if all cause of action occure at one place. 
e) Whether both the parties to the suit are situated in Ahmedabad, can the jurisdiction of Delhi Court be invoked by the plaintiff in that suit ? 
The answer is in negative, provided that goods of the defendant ought to be sold in substantial and material form in Delhi for invoking the jurisdiction of Delhi Court.
f) Whether a court, having jurisdiction for infringement of Trademark can have jurisdiction for passing off action? 
Yes. 
g) Whether the provisions of Order 7 Rule 11 of CPC are applicable to  IP statutes? 
Yes they can be. For adjudication of an application u/O7.R.11, only averments made in the plaint are required to be considered. 

Chirag Bhatt
Advocate 

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