The Weekly Obiter

COURT JURISDICTION FOR TRADEMARK INFRINGEMENT CAN BE INVOKED UNDER CPC OR TRADE MARKS ACT: DELHI HC: AUGUST 27, 2018

September 21, 2018

The Hon’ble High Court of Delhi in CS (Comm) 919/2016 titled as “Burger Kind Corporation Versus Techchand Shewakramani & Ors” reiterated that in trademark infringement suits, the jurisdiction of the Court can be invoked under Section 20 of the Code of Civil Procedure (CPC), 1908 in addition to Section 134 under the Trade Marks (TM) Act, 1999.
The Hon’ble Judge thereby clarified that a suit for trademark infringement or passing off can be brought before a court having jurisdiction;

 where the plaintiff resides/carries on business or
 where the defendant resides/carries on business or
 where the cause of action arises
The observation was prompted in a suit brought by the US-based Burger King Corporation alleging passing off and infringement of its registered trademarks “Burger King” and “Hungry Jacks”.
Among other grounds, the Defendants had contested the maintainability of Burger King’s plaint contending that the Delhi High Court did not have the jurisdiction to entertain the suit, given Section 134 (2) of the TM Act. Section 134 (2) lays down that a suit for trademark infringement etc. can be brought before the Court where the plaintiff resides or carries on his business. However, in this case the plaintiff i.e. Burger King had also invoked Section 20 of the CPC to file their suit before the Delhi High Court. Section 20 allows for the initiation of suits where the defendant resides/carries on business or where the cause of action arises. On examining various precedents on the issue, the court has concluded that either Section 20, CPC or Section 134 can be invoked when it comes to deciding the form for initiating a trademark infringement suit. Similarly, the CPC provision can also be invoked for initiating copyright infringement suits. 

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