Trademark/ Copyright and Patents Suits/ Civil Proceedings: Why Non-uniformity in Jurisdictions Available to Plaintiffs?

17th June, 2016 - 12:20 pm Categories: Copyright Copyright Infringement India News & Updates Patents Trademark 0 Comments

Section 62 of the Copyright Act, 1957, Section 134 of the Trademark Act, 1999, Section 104 of the Patents Act, 1970 and section 20 of Code of Civil Procedure (CPC), 1908 govern the applicable jurisdiction to file suits/ civil proceedings in case of Copyright, Trademark and Patent disputes.

These sections have been reproduced below:

For Copyright:

Section 62 of the Copyright Act, 1957:  

Jurisdiction of court over matters arising under this Chapter.—

(1) Every suit or other civil proceeding arising under this Chapter in respect of the infringement of copyright in any work or the infringement of any other right conferred by this Act shall be instituted in the district court having jurisdiction.

(2) For the purpose of sub-section (1), a “district court having jurisdiction” shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908), or any other law for the time being in force, include a district court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or other proceeding or, where there are more than one such persons, any of them actually and voluntarily resides or carries on business or personally works for gain.

P.S. – (Emphasis added)

For Trademark:

Section 134 of the Trademark Act, 1999:

Suit for infringement, etc., to be instituted before District Court.—

(1) No suit—

(a) for the infringement of a registered trade mark; or

(b) relating to any right in a registered trade mark; or

(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff’s trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.

(2) For the purpose of clauses (a) and (b) of sub-section (1), a “District Court having jurisdiction” shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain. Explanation —For the purposes of sub-section (2), “person” includes the registered proprietor and the registered user.

P.S. – (Emphasis added)

For Patent:

Section 104 of the Patents Act, 1970:

No suit for a declaration under section 105 or for any relief under section 106 or for infringement of a patent shall be instituted in any court inferior to a district court having jurisdiction to try the suit: Provided that where a counter-claim for revocation of the patent is made by the defendant, the suit, along with the counter-claim, shall be transferred to the High Court for decision.

For Copyright, Trademark and Patent:

Section 20 of CPC:

Other suits to be instituted where defendants reside or cause of action arises.- Subject to the limitations aforesaid, every suit shall be instituted in a Court within the local limits of whose jurisdiction—

(a) The defendant, or each of the defendants where there are more than one, at the time of the commencement of the Suit, actually and voluntarily resides, or carries on business, or personally works for gain; or

(b) any of the defendants, where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain, provided that in such case either the leave of the Court is given, or the defendants who do not reside, or carry on business, or personally work for gain, as aforesaid, acquiesce in such institution; or

(c) the cause of action, wholly or in part, arises.

Explanation: A corporation shall be deemed to carry on business at its sole or principal office in India or, in respect of any cause of action arising at any place where it has also a subordinate office, at such place.

Analysis:

Section 20 of CPC provide for filing of suit at the court within local limits of which cause of action arises wholly or in part or at the court within local limits of which defendant resides, or carries on business, or personally works for gain. In the absence of any other specific section of the law currently in force, plaintiff cannot choose to file suit at the court within local limits of which he resides, or carries on business, or personally works for gain. Fortunately in case of Trademark and Copyright, section 134 of the Trademark Act, 1999 and section 62 of the Copyright Act, 1957 respectively provide for filing of suit also at the court within local limits of which plaintiff resides, or carries on business, or personally works for gain. Unfortunately Section 104 of the Patents Act, 1970 for patents does not provide such convenience. Section 104 of the Patents Act, 1970 only provides that infringement suits can be instituted at any court not inferior to a district court. As section 104 of the Patents Act, 1970 does not provide the details of the territorial jurisdiction of district/ high court where suits for patent disputes are to be filed, jurisdiction is to be decided in accordance with section 20 of CPC.

Below given table compares the convenience of plaintiffs being a corporation (which includes a company) in case of trademark/copyright and patent suits.

In the times to come when patent infringement suits will be on the rise, plaintiff should not be driven to file suits at the location where infringement took place or location where defendant resides, or carries on business, or personally works for gain. Change in law to bring the section 104 of the Patents Act, 1970 in lines with section 62 of the Copyright Act, 1957 and section 134 of the Trademark Act, 1999 is required to stop the inconvenience being caused to plaintiffs in case of patent suits.

About the Author: Swapnil Patil, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: swapnil@khuranaandkhurana.com.