Madras High Court on Territorial Jurisdiction Under Section 134 of Trade Marks Act, 1999
In a recent decision dated September 15, 2015, the Division Bench of the Hon’ble Madras High Court in the appeal titled as “M/s. Micro Labs Limited vs. M/s. Eric Life Sciences Pvt. Ltd.”, while dealing with the issue of territorial jurisdiction in trade mark infringement & passing off suits, held that Section 134 of the Trade Marks Act, 1999 does not oust the applicability of Section 20 of the Code of Civil Procedure, 1908, which is to be decided on a bundle of facts. In fact, Section 134 provides for an additional remedy to the Plaintiff.
Facts of the Case:
The Plaintiff is a company engaged in the manufacture of medicinal and pharmaceutical products.
That in May, 2011 the marketing agents of the Plaintiff found that the Defendant was also selling their goods being the same pharmaceutical preparations under the trade mark ‘OLMIN’, thereby causing confusion in the market.
The Plaintiff Company in 2011, filed a suit for decree of permanent injunction for infringement and passing off against the Defendant for use of deceptively similar trade mark/name ‘OLMIN’ to that of the Plaintiff’s registered trade mark ‘OLAMIN’.
The Plaintiff contended that the Defendant Company’s business was in the same field and that the Defendant had copied and is thereby infringing the Plaintiff’s registered trade mark ‘OLAMIN’.
Pursuant to the filing of aforesaid suit by Plaintiff, the Defendant filed an application to reject the Plaintiff’s aforesaid plaint on the ground that there was no cause of action for filing the suit within the territorial jurisdiction of Hon’ble Madras High Court.
That since the Plaintiff does not have its office in Chennai, the suit was not maintainable.
That the sale of the product bearing the impugned trade mark within the jurisdiction of the Madras High Court, was not a sufficient cause to file the suit for infringement of trade mark in this Court.
Plaintiff’s Reply to Application:
The Plaintiff resisted the application by contending that for the present suit to be maintainable it was sufficient if the trade mark was registered within the jurisdiction of the said Court. That the products bearing the infringing mark were being sold extensively within the jurisdiction of the Hon’ble Madras High Court and therefore the Plaintiff had cause of action to file the suit before the said Court.
Decision of Single Judge:
The Learned Single Judge after taking note of the facts and Section 134 of the Trademark Act, 1999, held that to entertain the suit, the Plaintiff should have business activity within the territorial jurisdiction of the said Court, failing which the provisions of Section 134 will not come into force. Thus, the suit of the Plaintiff was rejected on grounds of lack of jurisdiction.
The Plaintiff aggrieved by the aforesaid order filed the present appeal.
Plaintiff’s Ground For Appeal:
That Section 134(2) of the Act, 1999 provides an inclusive definition for “District Court” and further provides for an additional forum of suing for the Plaintiff in cases of infringement, to the jurisdiction available under Section 20 of the CPC and not in derogation thereof.
The Plaintiff further contended that in the present suit, the infringement took place within the territorial jurisdiction of the Madras High Court, and the Plaintiff had produced a purchase bill to prove the same.
Further, the finding of the Learned Single Judge that the Plaintiff should carry on business within the territorial jurisdiction of the Court where the suit is filed is against the law and misinterpretation of the law.
Defendant’s Reply To Appeal:
That in the absence of substantial cause of action and in view of the fact that neither the Plaintiff nor the Defendant were carrying on business in the jurisdiction of the Court, the suit is was not maintainable.
The Counsel for the Defendant in support of its contention also relied on the recent decision of the Supreme Court in the case of Indian Performing Rights Society Ltd., vs. Sanjay Dalia & Anr., (CDJ 2015 SC 522).
Issue For Consideration
Whether the suit for infringement and passing off filed by the Plaintiff is maintainable before the Madras High Court in the light of Section 134 of the Trade Marks Act, 1999?
Decision of the Division Bench:
The Division Bench of the Madras High Court discussed the aforesaid recent judgment of the Hon’ble Supreme Court in Indian Performing Rights Society Ltd. (supra). However, the Division Bench was of the view that the decision did not support the contentions of the Defendant, on the facts of the present case. In fact that decision held that the very language of Section 62 of the Copyright Act and Section 134 of the Trade Marks Act, provides for an additional forum by including a District Court within whose limits the plaintiff actually and voluntarily resides or carries on business or personally works for gain and that the object of the provisions was to enable the plaintiff to institute a suit at a place where he or they resided or carried on business, not to enable them to drag defendant further away from such a place. Further it was pointed out that the same does not oust the applicability of Section 20 of Code of Civil Procedure as Section 20 enables the Plaintiff to file a suit where the defendant resides, carries on business or where the cause of action wholly or partly arises.
The Court further held that the interpretation of the Single Judge in the instant case that no suit for infringement of a registered trade mark could be filed in the Court within whose Jurisdiction the Plaintiff does not carry on business, was incorrect.
The Division Bench was of view that if the aforesaid decision of the Hon’ble Supreme Court is applied to the facts of the present case, the irresistible conclusion would be that the suit is maintainable before this Court.
The Division Bench in the light of the above, decision allowed the appeal of the Plaintiff, the impugned order of the Single Judge was set aside and the suit of the Plaintiff was restored.
The decision of the Division Bench of the Hon’ble Madras High Court in following the Hon’ble Supreme Court’s decision in Indian Performing Rights Society Ltd. (supra) has accepted that the Plaintiff has the jurisdiction to sue the Defendant for infringement of its registered trade mark in the Court within whose jurisdiction the Defendant is selling the infringing goods, in addition to the right to sue in the Court within whose jurisdiction the Plaintiff works for gain or resides.