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Section 134 of the Trademark Act with section 20 of the Civil Procedure Code


Authored by Yukti Kohli


Keywords: Trademark infringement, Use of the mark, use of the mark concerning goods, Placing off, Jurisdiction, Exclusion, derogation.


Abstract

This article briefs about the territorial jurisdiction for filing a suit against infringement of trademark or placing off under section 134 of the Trademark Act, 1999, and section 20 of Civil Procedure Code, 1908. This article specifically tells about the four different situations and where the suit can be instituted for trademark infringement. Under this article, the meaning of use of mark and use of the mark concerning good is also defined. Some case laws are also provided under this article for better understanding.

Introduction

Earlier provision as to trademark- Infringement before the Trademark Act, 1999 the suit concerning trademark infringement and passing off were covered under section 20 of civil procedure code 1908.

Under section 20 of the Civil Procedure Code, the suit can be instituted under any within whose jurisdiction the defendant resides or carries out business or work for gain or where the cause of action arises. This provision continues to date.

Additional forum for convenience

By the introduction of the Trademark Act, 1999 an additional forum was introduced where suits concerning trademark infringement can be instituted. Section 134 of the Trademark Act allows the plaintiff to institute a suit for trademark infringement in a where the plaintiff resides or carries out business or where the defendant resides but the jurisdiction for filing a passing off suit would still be instituted under section 20 of the Civil Procedure Code, where the defendant resides or carries out business or at the place with the cause of action arose.

Difference between Section 134 of Trademark Act, 1999, and Section 20 of the Civil Procedure Code.


By invoking Section 134 of the Trademark Act the plaintiff can file a suit for trademark infringement at any place where the plaintive resides or carries his business or where the defendant resides or carries on business or where the cause of action has arisen. Whereas under section 20, the plaintiff can file a suit where the defendant actually or voluntarily resides or carries on business or work for gain or where the cause of action has arisen.

Section 134 of the Trademark Act, 1999 states that a suit for trademark infringement can be filed before the court,

· where the plaintiff resides or carry on his business.

· where are the defendant resides or carries on business or

· where the cause of action arises

Section 20 of the Civil Procedure Code, 1908 states that a suit can be instituted before the court,

· where are the defendant resides or carries on business or

· where the cause of action arises

Case Laws

In the Burger King Corporation case[1] the Plaintiff filed the suit against infringement of trademark, passing off, and damages in respect of trademark of Burger King and Hungry Jacks.


The defendant resides in Mumbai and the plaintiff is a US-based company and the plaintiff filed the suit before the Delhi High Court under section 134 of the Trademarks Act and section 20 of Civil Procedure Code, 1980 as the various contract had been entered within the territory of Delhi, concerning launch Burger King franchisee outlet in New Delhi. The defendant pleaded that the Delhi High Court does not have jurisdiction to entertain the suit filed by the plaintiff under section 134 (2) of the Trademark Act as the cause of action does not arise in Delhi and the defendant actually and voluntarily resides in Mumbai and not in Delhi.


The Delhi High Court held in the case that in a trademark infringement suit, the jurisdiction of the court can be invoked under section 20 of Civil Procedure code, 1920 in addition to section 134 under the Trademarks Act 1999. Further, the judges added that a suit for trademark infringement or passing off can be brought before the following courts

· where are the plaintiff resides or carries on business or

· where are the defendant resides or carries on business or

· where the cause of action arises

The court concluded that either section 20 of the Civil Procedure Code, 1908 or section 134 of Trademark Act, 1999 can be invoked in the cases of trademark infringement and therefore the court held that the provisions of section 134 of the Trademark Act are in addition to section 20 of Civil Procedure Code and is not in exclusion. If a case is filed under section 20 of the Civil Procedure Code then there is no need to refer to section 134 of the Trademark Act, 1999.


The court also declared that under such cases, what constitutes the course of action is the use of marks, constituting an infringement or passing off action. The court also defined the term used as it is the use of the mark or use of the mark concerning goods, which can be in physical form or any other form. This includes advertising, promotion, publicity, etc.

If any person advertises his or her business in a territory and promotes his business under the trademark, like invite franchisee qualities, manufacture goods, assemble goods, export goods, undertakes printing of goods in a particular territory it will constitute to use of marks.

In this case, the court also observed that trademark infringement would arise on the unauthorized physical use of Mark and also on unauthorized reference to such marks.

In Ultra Home Construction v Purushottam Kumar Choubey and Ors,[2] the appellant filed the appeal against the judgment of a single judge dismissing the appeal and suit for trademark infringement for lack of territorial jurisdiction. The appellant believed that as its principal office was in Delhi therefore, the Delhi High Court had the territorial jurisdiction under section 134 of the Trademark Act to look into the matter. But the court held that as the appellant carries on business both in Jharkhand and Delhi and the cause of action has arisen in Jharkhand therefore the Delhi High Court does not have territorial jurisdiction to look into the matter.

The Delhi High Court in 2015 laid the rules concerning geographical jurisdiction for instituting a suit for trademark infringement or passing off in four different scenarios.

Scenario1. If the plaintiff has a sole office and the cause of action arose at a different place, then the suit can be instituted in any court having jurisdiction over the sole office.

Scenario 2. If the plaintiff has a principal office at one place and a subordinate office at another place and the cause of action arose at a place of principal office then the suit can be instituted in any court having jurisdiction over the principal office.

Scenario3. If the plaintiff has a principal office at one place and the cause of action arose at the place of subordinate office then the suit can be instituted in any court within whose jurisdiction the subordinate office lies.

Scenario4. If the cause of action arose at a place other than the principal office or the subordinate office then the suit can be instituted at a place of the principal office.

In all the scenarios a suit for passing off can be instituted either where is the cause of action has arisen or where the defendant resides or carries out business under section 20 of the Civil Procedure Code.

In M/S Micro Labs Ltd V. M/S Eris Life Science Pvt Ltd, the honorable Madras High Court held that under section 134 of the Trademark Act is not in derogation of section 20 the of the Civil Procedure Code.

In Indian Performing Rights Society, Limited v. Sanjay Dahlia[3] plaintiff filed a suit so that he can prevent the infringement of its trademark and copyright in the Delhi High Court as the branch office was situated in Delhi and the business was also carried out in Delhi. The defendant, cinema hall pleaded that the cause of action arose in Mumbai and the defendants reside in Mumbai therefore the plaintiff cannot file a suit in Delhi. The court held that under section 134 of the Trademark Act, the intention was never to enable the plaintiff to file a suit at a distinct place or where its subordinate office is situated when the plaintiff’s principal office is elsewhere and the cause of action has arisen in there.

The interplay between section 134 of the Trademark Act and section 20 of the Civil Procedure Code was observed. The court held that for a company, its principal office or principal place of business would be considered as a place where he ordinarily carries out business and therefore a suit can be instituted within such jurisdiction.

Conclusion

Under section 134 of the Trademark, Act jurisdiction is available to the District Court to entertain the suit of trademark infringement of the registered trademark or relating to any right in a registered trademark or passing off any trademark.

The jurisdiction of the court can be invoked under section 20 of the Civil Procedure code, 1920 in addition to section 134 under the Trademarks Act 1999.

If a case is filed under section 20 of the Civil Procedure Code then there is no need to refer to section 134 of the Trademark Act, 1999.

Reference

· https://www.barandbench.com/news/jurisdiction-trademark-infringement-cpc-tm-act-delhi-hc

· lexology.com/library/detail.aspx?g=8b614356-444a-4ede-9be7-e5751606c84e

· https://www.khuranaandkhurana.com/2016/06/14/analyzing-the-applicable-jurisdiction-for-trademark-and-copyright-disputes/

Footnotes

1. [CS (COMM) 919/2016].

2. 227 (2016) DLT 320.

3. Civil Appeal Nos.10643-10644/2010.

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