There has been a prolonged debate on which court's territorial jurisdiction is
to be invoked when it comes to the disputes under the Trade Marks Act, 1999.
This article showcases the jurisdictional dispute of section 20 of the Code of
Civil Procedure, 1908 with section 134 of the Trade Marks Act, 1999 and section
62 of the Copyright Act, 1957.
A series of judicial precedents and interpretations by the Hon'ble Supreme Court
and Hon'ble High Courts have been cited to understand the issue and discuss the
various aspects of law relating to Trademark and copyright litigation.
Code Of Civil Procedure, 1908
Every court has its powers and limitations over cases which it can entertain.
The District Courts, High Courts and the Supreme Court have their boundaries in
exercising their territorial jurisdictions. Matters relating to Intellectual
Property Rights are admissible in Commercial Courts. In all of the above cases,
territorial jurisdiction is determined in accordance with section 20 of the Code
of Civil Procedure, 1908, which lays the jurisdiction for filing suits:
- Place where the defendant resides.
- Place where the defendant carries out business or works for gain.
- Place where at least a portion of the cause of action arises.
Thus, ordinarily the defendant has the advantage to select the court for filing
the suit. However this provision act as a deterrent for the plaintiff if he does
not reside within the defendant's jurisdiction.
Trade Marks Act, 1999
According to section 134 of the Trade Marks Act, 1999, all the disputes
pertaining to Trademark and Copyright have to be instituted before a District
Court and sub-section (2) of the Act expressly gives the plaintiff the authority
to institute a case where he resides or carries on business or personal works
for gain. It reads as under:
“For the purposes 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.”
Copyright Act, 1957
When it comes to the Copyright Act, 1957, section 62 states that:
“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
It is important to understand that both sections 134 and 62 are pari materia or
categorical in nature. Their very 'inclusive' nature can be inferred from the
fact that they are not prejudicial towards any of the parties.
If the plaintiff is to take recourse under section 20 of the Code of Civil
Procedure, 1908, he does not lose the right to institute a suit in the place
where he resides or conducts business for profit.
When sections 134 and 62 are read with section 20, the plaintiff is not barred
from instituting suit at place where cause of action has arisen wholly or in
part or at a court having jurisdiction where the defendant resides or works for
gain even if the plaintiff does not reside or work in the same area.
Here are a few judicial pronouncements to establish that sections 134 and 62 are
not in derogation with section 20, but in coherence.
In the case of Exphar SA and Ors. v. Eupharma Laboratories Ltd. And Ors
., the Hon'ble Supreme Court considered section 62 of the Copyright Act to be wider
than that under the Code of Civil Procedure, 1908. It opined that Section 62
cannot be read as limiting the jurisdiction to the persons who reside at a place
or work there for gain, but it prescribes an additional ground for attracting
the jurisdiction of a court above the 'normal' grounds laid down in section 20
of the Code of Civil Procedure, 1908, which means it is not derogatory to
In the famous case of Indian Performing Rights Society Ltd. v. Sanjay Dalia
., the respondents contented Heydon's Rule of Mischief
section 134 of the Trade Marks Act, 1999 and section 62 of Copyright Act, 1957.
It was contended that both these sections confer power to the plaintiffs to
institute a suit in any of their branch offices in the country, even if the
cause of action has arisen at some other place, which was opposed by the
defendants. In the instant case the place of business of the plaintiffs was in
Mumbai, their residence was also Mumbai but they initiated proceedings in
The Hon'ble Supreme Court opined that the provisions of law never intended to be
oppressive towards the defendant. The plaintiffs had branch offices at
Kanyakumari and Port Blair too, but that does not give them the right to
initiate proceedings in those courts, which would amount to abuse of law.
Therefore, the Hon'ble Supreme Court read down the explanation of sections 134
and 62 and deduced that the plaintiff corporation shall carry on business at a
place where its sole or principal office is situated or any subordinate office
in the place where the cause of action has arisen.
The dictum of the Hon'ble Supreme Court in the above case was relied upon by the
Hon'ble Delhi High Court in the case of Ultra Home Construction Pvt.Ltd. v.
Purushottam Kumar Chaubey and Ors. and it held that although the term “carries
is present in all the three provisions (being sections 134, 62 and
20 of their respective acts), the explanation provided in section 20 of the Code
of Civil Procedure, 1908 has not been expressly provided in the other two
provisions. In the same case the Hon'ble Delhi High Court laid down an
explanation of the applicable jurisdiction that may arise in different cases.
In a very recent judgment of Burger King Corporation v. Techchand Shewakramani
, the Hon'ble Delhi High Court has opined regarding what constitutes
cause of action in a trademark dispute. The plaintiff who was a U.S.A
based company had alleged the defendants who were Mumbai based, of infringing
its registered trademark which is Burger King
. The plaintiff filed the suit
under section 134 (2) of the Trade Marks Act, 1999 and section 20(c) of the Code
of Civil Procedure, 1908. The plaintiff averred that the defendant's cause of
action was Delhi hence the territorial jurisdiction has to be Delhi.
The Court held that the act of promoting, seeking franchise requests,
entertaining franchise inquiries, expressing intention to expand in Delhi,
allowing franchisees to apply through website would constitute use of the mark
in Delhi and hence Delhi High Court has jurisdiction to entertain the suit.
The Court rightly held that both sections 134 of Trade Marks Act, 1999 and 62 of
the Copyright Act, 1957 are inclusive of section 20 of the Code of Civil
Procedure, 1908 and not exclusive or derogatory. If the plaintiff places
reliance upon the jurisdiction under section 20 then he shall not be required to
refer to section 134 for jurisdiction.
To conclude it is important to understand that the intention of the legislature
in drafted section 20 of the Code of Civil Procedure, 1908, is to provide a
recourse to the plaintiff to express his grievance against the defendant in
whose jurisdiction the cause of action has arisen. If a person chooses to come
under section 134, he need not chose the recourse of section 20. Both sections
134 and 62 of their respective acts are inclusive of section 20 and not