Jurisdiction for Trademark Infringement in India

Overview

In India, the jurisdiction for filing a suit for trademark infringement is primarily determined by the location of the trademark registration and where the cause of action arises. The relevant legal provisions are found in the Trade Marks Act, 1999, particularly Section 134, and the Code of Civil Procedure, 1908.

Key Points

1. Jurisdiction Based on Trademark Registration

• A suit for infringement of a registered trademark can be filed in:
• The court where the trademark is registered.
• The court where the alleged infringement took place AMRUTANJAN LTD. VS ASHWIN FINE CHEMICALS AND PHARMACEUTICALS - Madras (1990).

2. Cause of Action

• The court must have jurisdiction where a part of the cause of action arises. This includes:
• The location of the plaintiff''s business.
• The location where the infringing activities occurred Kalpataru Properties Private Limited VS Kalpataruvu Chits (India) Private Limited - Bombay (2017)Coca-Cola Company VS Bisleri International Pvt. Ltd. - Delhi (2009).

3. Specific Cases

• Madras Court Jurisdiction: In a case involving the trademark ''AMRUTANJAN'', the Madras Court had jurisdiction because the trademark was registered there, and the plaintiff was manufacturing and marketing products from Madras, despite the alleged infringement occurring in Madhya Pradesh AMRUTANJAN LTD. VS ASHWIN FINE CHEMICALS AND PHARMACEUTICALS - Madras (1990).
• Delhi Court Jurisdiction: In another instance, the Delhi High Court held jurisdiction based on the plaintiff''s trademark registration in Delhi and the defendant''s intention to sell goods in Delhi S. OLIVER BERND FREIER GMBH AND CO. VS KARNI ENTERPRISES - Delhi (2006).

4. Territorial Jurisdiction

• The court''s territorial jurisdiction is determined by:
• The place where the cause of action arose.
• The defendant''s activities related to the trademark in question Shakthi Fashion VS Burberry Limited - Delhi (2022)Ultra Home Construction Pvt. Ltd. VS Purushottam Kumar Chaubey - Delhi (2015).

5. Limitations and Exceptions

• If the plaintiff cannot establish that any part of the cause of action arose within the court''s jurisdiction, the court may dismiss the suit for lack of jurisdiction RSPL LTD VS MUKESH SHARMA - Delhi (2016)SURENDRA KUMAR MAINGI VS DODHA HOUSE - Allahabad (1997).
• The mere registration of a trademark in a particular jurisdiction does not automatically confer jurisdiction to that court if no cause of action arises there Matrumal Dhannalal Oil Mill vs Abhishek Enterprises - Delhi (2010).

Conclusion

In summary, the jurisdiction for trademark infringement cases in India is determined by the location of the trademark registration and where the cause of action arises. Courts have consistently held that both the situs of the trademark and the activities of the parties involved play crucial roles in establishing jurisdiction. It is essential for plaintiffs to substantiate their claims of jurisdiction with clear evidence of where the infringement occurred or where the trademark is registered.

Recommendations

• Ensure that the suit is filed in the appropriate jurisdiction based on the registration of the trademark and the location of the alleged infringement.
• Gather evidence to support claims of jurisdiction, particularly if the defendant operates in multiple jurisdictions.
• Consider potential counterarguments regarding jurisdiction and prepare to address them effectively in court.

References: - AMRUTANJAN LTD. VS ASHWIN FINE CHEMICALS AND PHARMACEUTICALS - Madras (1990) - Kalpataru Properties Private Limited VS Kalpataruvu Chits (India) Private Limited - Bombay (2017) - Coca-Cola Company VS Bisleri International Pvt. Ltd. - Delhi (2009) - S. OLIVER BERND FREIER GMBH AND CO. VS KARNI ENTERPRISES - Delhi (2006) - Shakthi Fashion VS Burberry Limited - Delhi (2022) - Ultra Home Construction Pvt. Ltd. VS Purushottam Kumar Chaubey - Delhi (2015) - RSPL LTD VS MUKESH SHARMA - Delhi (2016) - SURENDRA KUMAR MAINGI VS DODHA HOUSE - Allahabad (1997) - Matrumal Dhannalal Oil Mill vs Abhishek Enterprises - Delhi (2010)]