Wednesday, 19 August 2015

Jurisdiction to File Infringement Suits

Jurisdiction to File Infringement Suits[1]
Under the Code of Civil Procedure (Section 20), a suit can be instituted in a Court within whose territorial jurisdiction the Defendant resides or carries on business or personally worked for gain or where the cause of action arose. However, deviation from the normal rule is provided under the Section 134, Trade Marks Act, 1999 and Section 62 of the Copyright Act, 1957. It says that notwithstanding anything contained in the CPC, 1908 or any other law for the time being in force, the district court within the local limits of whose jurisdiction, the person instituting the suit or proceeding actually and voluntarily resides or carries on business or personally works for gain, at the time of instituting the suit, shall have jurisdiction. Court analyzed the interaction between the aforementioned sections while addressing the issue of misuse of the jurisdiction clause in the Trade Marks and Copyright Act.

Facts
The Plaintiff/Appellant had filed a suit praying for relief against Defendant No. 1 so as to prevent infringement of the rights of the Plaintiff without obtaining the license. The Defendant owns cinema halls in Maharashtra and Mumbai where infringement is alleged and the entire cause of action, as alleged in the plaint, has arisen in Mumbai, Maharashtra. The Branch Office of the Plaintiff is situated at Delhi and the Plaintiff is carrying on the business at Delhi. The Plaintiff's Head Office is situated at Mumbai. The objection was raised by the Defendant with regard to the territorial jurisdiction of the court at Delhi. The single Bench and the Division Bench of the High Court upheld the objection and held that the suit should have been filed in the facts of the case, in the court at Mumbai. Hence, the impugned order has been questioned in the appeals.

Issues
In the appeals, the question arising for consideration is as to the interpretation of Section 62 of the Copyright Act, 1957 and Section 134(2) of the Trade Marks Act, 1999 with regard to the place where a suit can be instituted by the Plaintiff and its interaction with Section 20 of the Civil Procedure Code, 1908. Court examined whether a special right has been conferred Under Section 62(2) of the Copyright Act and Section 134 of the Trade Marks Act containing non-obstante clause to the applicability of the Code of Civil Procedure or any other law for the time being in force, and the Plaintiff has been conferred a right to file a suit where it carries on its business. The applicability of the Heydon's mischief rule (i.e. When the material words are capable of bearing two or more constructions the most firmly established rule for construction of such words "of all statutes in general (be they penal or beneficial, restrictive or enlarging of the common law), it suggests that The rule then directs that the courts must adopt that construction which "shall suppress the mischief and advance the remedy") to the facts was also considered.

 Decision of the Court
·         The court opined that, 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 gain.
·      
          Words used in Section 62 of the Copyright Act and Section 134 of the Trade Marks Act, 'notwithstanding anything contained in Code of Civil Procedure or any other law for the time being in force', emphasise that the requirement of Section 20 of the Code of Civil Procedure would not have to be complied with by the Plaintiff if he resides or carries on business in the local limits of the court where he has filed the suit but, at the same time, as the provision providing for an additional forum, cannot be interpreted in the manner that it has authorised the Plaintiff to institute a suit at a different place other than the place where he is ordinarily residing or having principal office and incidentally where the cause of action wholly or in part has also arisen. As per Court’s view, the additional forum and fundamental basis of conferring the right and advantage to the authors of the Copyright Act and the Trade Marks Act provided under the aforesaid provisions is not taken away.
·      
        The Supreme Court came to the submission that vires of Section 62 has not been questioned. However, the question is that of interpretation and not that of vires of the provisions which has been considered by the court. There will be no violence to Section 62 of Copyright Act and Section 134 of Trade Marks Act by the interpretation adopted by the court and the right of the Plaintiff which has been conferred under the provisions also remains intact. There is no question of giving disadvantage to the Plaintiff vis-a-vis the Defendant but both will stand to gain by proper interpretation.
·      
    In the opinion of the Supreme Court, 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 the Supreme Court, for the aforesaid reasons mentioned by the court in the judgment, the Supreme Court is not inclined to interfere with the orders passed by the High Court. So, the appeals were dismissed. No costs.

Conclusion
Hence, a reasonable inference can be drawn from the aforementioned decision that, 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. The decision was aimed at ending the injustice meted out to Defendants, by dragging them to distant places as big companies may have subordinate offices at several places. Thus, it leans towards ending forum shopping.



[1] Indian Performing Rights Society Ltd.vs. Sanjay Dalia and ors. 015(7)scale574

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