The Delhi High Court recently reiterated that jurisdiction under Trademark infringement cases could be invoked under section 20 of code of Civil Procedure (CPC), 1908 in addition to section 134 under the Trademarks Act, 1999.

Justice Paratibha had clearly gave its grounds for jurisdiction and they are as follows-

  • Where the plaintiff resides or carries on the business.
  • Where the Defendant resides or carries on the business.
  • Where the cause of action has been arisen.

The observation was prompted within the suit of Trademark passing off and infringement of its registered trademarks “Burger King” and “Hungry Jacks” which is a US based corporation.

Plaintiff company as represented by Managing Partner of Anand and Anand, Mr. Pravin Anand and Defendants were represented by Advocates Amarjit Singh, Mahendra Rana and Pranav Sarthi.

In this case Defendants questioned the jurisdiction of the High Court to entertain the suit according to section 134 (2) of the Trademarks Act, 1999.

Section 134(2) of the TM Act states that the suit for trademark infringement can be brought before the court where the plaintiff resides or carries on his business.

However, Plaintiff also invoked section 20 of CPC which states that suit can be initiated where defendant resides or carries on a business or where cause of action has arisen.

After examining various precedents on the difficulty , the court concluded that either section 20 or 134(2) are often invoked when it involves deciding the shape for initiating a trademark infringement suit. Similarly when a copyright infringement suit is decided then CPC provision can be invoked for its initiation.

As noted in the judgment

“Thus the provisions of section 134 of the TM Act and section 62 of the Copyright Act are in addition to and not in exclusion of section 20 of CPC. if the plaintiff can figure out a explanation for action within the territorial jurisdiction of this court under section 20, no reference must be made to section 134.”

In this case the court noted that there was sufficient material on record to point that alleged trademark infringement had taken place within the jurisdictional limits of Delhi supreme court . Which includes things like the defendant has done promotion of the mark Burger King in Delhi, open and public declaration by the defendants of their intention to expand across the country, including Delhi, advertising administered in reference to such expansion etc.

The could further also emphasised that trademark infringement would arise not only for unauthorised physical use of the mark but also for unauthorise reference to such marks.

According to section 2(2) of the TM Act, which defines “Use” for the purpose of Trademarks, the court noted that-

“This provision stipulates that use of a mark in reference to goods might be either in any physical or in the other relation whatsoever to such goods. Thus, Jurisdiction of a court in a trademark action, could be invoked where there is sue upon or in relation to goods.”

With these observations the court rejected the application made to reject Burger King ‘s suit.

Indiscriminate denial of documents the Bane of Civil Adjudication

Before partying with the case, the judge has made the stern observation regarding the oft resorted practice of indiscriminately denying an opposing party’s documents, which she termed as bane of adjudication in civil suits.

The judge observed that admission denial of documents in this case has not been performed. It is further observed that in intellectual property suits a number of documents are subject to public records. In such cases the court pointed out that blind denial of public documents does not serve any purpose apart from wasting judicial time.

The court finally decided that:

“The practice adopted by the parties to deny in general all the documents of the opposite side has been the bane of adjudication of civil suit.”

The court gave final opportunity to parties to file their affidavit for admission/denial with respect to commercial courts act. The same was directed to be filed within two weeks. The court also made it clear that, “any unjustified denial would be susceptible to be addressed as per the provisions of economic court act and Delhi supreme court (Original) Rules, 2018”.

Contact BIAT Legal LLP for Trademark infringement and passing off cases.

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