• Dr. Mohan Dewan assisted by Adv. Aboli Kherde

A Court can exercise its power within a territorial/ geographical limit. For example, a District Court can exercise its power within the territorial limits of a district, a High Court can exercise its power within a state that comprises a plurality of districts and the Supreme Court can exercise its power within the whole country. This territorial limitation is referred to as the territorial jurisdiction of a Court. There is also another hierarchy of Courts based on the value of the claim made in a case. This is called its pecuniary jurisdiction. Still further, recently, the Commercial Courts were introduced. These Courts exercise jurisdiction when the case relates to commercial matters, such as IPR matters. There are other Courts that take up specialised matters. For instance, Family Courts which exercise jurisdiction in matrimonial matters and maritime Courts that act in Maritime matter. In all these cases, the territorial jurisdiction is determined in accordance with Section 20 of the Code of Civil Procedure, 1908. Under the general law, territorial jurisdiction is determined on the basis of the following:

• The place where the defendant resides;

• The place where the defendant carries out business; or works for gain; or

• The place where atleast a portion of the cause of action arises.

Therefore, ordinarily, barring cause of action, the plaintiff is required to select a Court which is convenient to the defendant. Particularly if the Plaintiff does not reside or work for gain in the Defendant’s jurisdiction, this provision of the law, may act as a deterrent on the Plaintiff in taking legal action.

Trademarks are a form of intellectual property and a proprietor of a trademark applies it to his/ her goods or services, so that consumers can distinguish the proprietor’s goods or services from those of other proprietors. At the same time, different trademarks can also be used by the same owner to distinguish one of its products from another. For instance, HUL uses the mark ‘Lux’ for one type of soap and ‘Lifebuoy’ for another type of soap. An owner can protect the trademark by trademark registration under the Trade Marks Act, 1999. Violation of a registered trademark by someone else goes by the technical term infringement and if a trademark is registered the owner enjoys some special benefits. Convenience of jurisdiction is one such special benefit. The Trade Mark Act specifically provides that an infringement action, whatever may be the value claimed, must be filed only in a District Court. Therefore, the pecuniary jurisdiction of the Court, is not taken into consideration in a trademark matter. Another, special privilege given to the proprietor of a registered trademark is that in the case of infringement of his/ her trademark, Section 134 (2) of the Act, gives the registered proprietor, the right to file an infringement case, within the territorial limits of the Court, in which the trademark proprietor resides or works for gain. In the case of a company, this generally means the location of its registered office or its principal place of business. Of course, the normal territorial jurisdiction laid down under Section 20 of CPC, is also available.

In a recent case at the Delhi High Court , Hindustan Times (“HT”), a leading national news broadcasting agency, found an entity in New York infringing upon its trademark rights by using the domain name www.hindustan.com which HT had already registered as a trademark in India. The Court exercised extra-territorial jurisdiction over the defendant based in New York and granted injunction against its use of the domain name www.hindustan.com. The defendant had filed a declaration suit in New York. However, the Delhi High Court stated that since the trademarks were registered in India, the New York District Court did not have jurisdiction over the matter, and also granted an anti-suit injunction against the defendant from pursuing the suit in New York.

In another case2 , HT sued a domain registrant at the Delhi High Court for violating its copyright by using its content on the infringing website without giving due credit to HT. It was difficult to identify or track the registrant of this infringing website as it was located outside India. However, the Delhi High Court passed an order of injunction directing the servers hosting the website to block its access. These cases clearly show us that intellectual property protection cannot be restricted to a particular area or geographical limit. Moreover, violation can take place at multiple locations at the same time. Thus, the burden is upon the rightful proprietors of trademarks to sue them at different locations all over the world.

The Supreme Court of India in Indian Performing Rights Society Limited v Sanjay Dalia , 3and the Delhi High Court in Burger King Corporation v Techchand Shewakramani4 , explained that the provisions of Section 134 of the Trade Marks Act are in addition to Section 20 of the Civil Procedure Code.

As a final word of caution, Section 134 can also be used, as a weapon by a registered trademark proprietor to drag a Defendant to a location which may be inconvenient to the Defendant. However, the Courts in their wisdom, have always decided to prevent such an abuse of the law.

1 CS(COMM) 119/2020 IAs 3767-3771/2020

2HT Media Limited & Anr. v. WWW.THEWORLDNEWS.NET & ORS. CS (COMM) 321/2019

3CIVIL APPEAL NOS.10643-10644 OF 2010

4 CS (COMM) 919/2016 & CC(COMM) 122/2017


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